Opinion
ORDER DENYING MICROSOFT'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY PURSUANT TO 35 U.S.C. § 102(g) (PRIORITY OF INVENTION BY MICROSOFT)
JEFFREY S. WHITE, District Judge.
Now before the Court is the motion of Defendant Microsoft Corporation. ("Microsoft") for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g) based on the priority of invention by Microsoft. Having carefully reviewed the parties' papers and considered their arguments and the relevant legal authority, and good cause appearing, the Court hereby DENIES Microsoft's motion for summary judgment.
Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Union States Gypsum Co. v. Nat'l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). The burden of demonstrating the absence of any genuine issue of material fact rests with the moving party. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1116 (Fed. Cir. 1985). In order to defeat summary judgment, the non-moving party must do "more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Rather, the non-moving party must set forth "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(2); Matsushita Elec., 475 U.S. at 587.
Section 102(g) of the Patent Act provides that "[a] person shall be entitled to a patent unless... before the applicant's invention was made in this country by another who had not abandoned, suppressed or concealed it. In determining the priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other." 35 U.S.C. § 102(g). Under this section, the priority of invention "goes to the first party to reduce the invention to practice unless the other party can show that it was first to conceive the invention and that it exercised reasonable diligence toward reduction to practice from a date just prior to the other party's conception to its reduction to practice." Mahurkar v. C.R. Bard, 79 F.2d 1572, 1578 (Fed. Cir. 1996).
To establish an actual reduction to practice, an inventor's testimony must be corroborated by independent evidence. Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998). Priority of invention is a question of law based on underlying factual determinations. Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993). Microsoft must prove invalidity pursuant to 35 U.S.C. § 102(g) by clear and convincing evidence. Environ Products, Inc. v. Furon Co., 215 F.3d 1261, 1265 (Fed. Cir. 2000). In order to defeat summary judgment, TVI need only demonstrate that there is sufficient evidence to identify a genuine issue of material fact. See Innovative Scuba Concepts, Inc. v. Feder Indus., Inc., 26 F.3d 1112, 1115 (Fed. Cir. 1994). At this stage, Microsoft cannot invalidate the asserted TVI claims under 35 U.S.C. § 102(g) unless it can establish that no reasonable juror would necessarily find by clear and convincing evidence that Microsoft reduced the invention claimed by TVI before TVI and that TVI did not conceive the invention or exercise reasonable diligence to reduce its invention to practice. See Mycogen Plant Sciences v. Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001).
The Court finds that Microsoft has failed to demonstrate by clear and convincing evidence that the facts relating to priority of invention are not in genuine dispute. At a minimum, the testimony of TVI's inventor, Donald Stern, in conjunction with allegedly contemporaneous documentation and the testimony of witnesses such as Messrs. David Ron, Paul Stuart and Yosh Matsuda, indicate that there is a genuine issue of dispute with regard to the timing of TVI's reduction to practice. See Hahn v. Wong, 892 F.2d 1028, 1032-33 (Fed. Cir. 1989) (holding that corroboration requirement may be satisfied by testimony of witnesses other than the inventor, or evidence surrounding the facts and circumstances independent of information received from the inventor.)
Although there is enough evidence raised to create a genuine dispute of material fact with regard to reduction of the invention, the Court additionally finds that there is a sufficient factual dispute regarding conception and reasonable diligence to warrant presentation of the issue to the jury. TVI presented sufficient evidence relating to its attorneys' work on similar and related patents to create a genuine issue of material fact. See Bey v. Kellonitsch, 806 F.2d 1024, 1028 (Fed. Cir. 1986) (holding that work on closely related patents constitutes diligence with respect to the invention in question).
The Court finds that Microsoft has failed to meet its high burden of demonstrating by clear and convincing evidence that Microsoft reduced the invention claimed by TVI before TVI and that TVI did not conceive the invention or exercise reasonable diligence to reduce its invention to practice. Accordingly, Microsoft's motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(g) based on priority of invention by Microsoft is DENIED.
IT IS SO ORDERED.