Opinion
ORDER DENYING MICROSOFT'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY PURSUANT TO 35 U.S.C. § 102(b) BASED ON COMMODORE CDTV
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(b) based on the Commodore CDTV prior art. 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.
Prior art anticipates the claimed invention only when it includes every single limitation of the claimed invention. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001). "Although anticipation is a question of fact, it still may be decided on summary judgment if the records reveals no genuine issue of material fact." Id. In addition, because TVI's patents survived a full patent examination process, including all potential invalidity challenges, the patents are entitled to a presumption of validity pursuant to 35 U.S.C. § 282, and Microsoft must prove its invalidity contentions by clear and convincing evidence. See, e.g., Abbott Lab. v. Geneva Pharm., Inc., 182 F.3d 1315 (Fed Cir. 1999). If there is a genuine issue of material fact regarding even one claim limitation, Microsoft's motion must be denied. See Union Carbide v. Shell Oil Co., 308 F.3d 1167, 1188-89 (Fed. Cir. 2002).
The Court finds that Microsoft has failed to demonstrate by clear and convincing evidence that the prior art of the Commodore CDTV anticipates the claimed invention by failing to demonstrate that the prior art includes every single limitation of the claimed invention. The CDTV technology reboots and re-initializes the system every time the user changes the inserted media. Microsoft's contention that this is one step that could well be included in the steps "comprising" a method for automatically starting up a process in a host device based on insertion of a storage media into a peripheral is unconvincing. Rebooting and re-initializing the entire system after every insertion of media is not simply an additional series of steps; it is more accurately a series of operations not contemplated by the construction of TVI's claims. TVI's amended claims clearly recite that its invention "detects each insertion after automatic loading of said initialization file." ( See Opposition Declaration of Niall A. MacLeod, Exh. 13, claim 1 of '156 and '863 patents.) After the claimed invention initially loads the initialization files, it can then detect every ensuing insertion of media without re-initializing the system. In addition, the language in the claim 1 of the '307 Patent, "returning to said step of automatically disabling [the interrupt]" would be rendered superfluous by Microsoft's construction.
Because the Commodore CDTV system reboots and re-initializes the system whenever a user ejects media and TVI's claimed invention it is an advance over such reboot systems which can detect each insertion of media after the loading of initialization files without re-initializing the system, and because the proposed interpretation of the claims language would render superfluous its explicit language, the Court finds that Microsoft has failed to meet its high burden of demonstrating by clear and convincing evidence that the Commodore CDTV anticipates every single limitation of TVI's claimed invention. Accordingly, Microsoft's motion for summary judgment of invalidity pursuant to 35 U.S.C. § 102(b) based on the Commodore CDTV prior art is DENIED.
IT IS SO ORDERED.