Opinion
No. C 02-02385 JSW.
October 13, 2004
Now before the Court is the motion of Defendant Microsoft Corporation. ("Microsoft") for summary judgment of invalidity of U.S. Patent Nos. 6,418,532 ("the '532 patent"), 6,249,863 ("the '863 patent") and 5,795,156 ("the '156 patent") pursuant to 35 U.S.C. § 112, ¶ 2. Having carefully reviewed the parties' original and supplemental papers and considered their arguments and the relevant legal authority, and good cause appearing, the Court hereby DENIES Microsoft's motion for summary judgment.
BACKGROUND
TV Interactive Data Corporation ("TVI") alleges that some of Microsoft's Windows™ operating system products infringe on four TVI patents-in-suit directed to automatically starting an application each time a storage media is inserted into the computer, or host device. Specifically, TVI alleges that the "AutoPlay" feature integrated into Microsoft's products infringes the four contested patents. The AutoPlay feature allows a computer program or application to be run automatically after storage media is inserted into the computer.
The Court held a claims construction on August 5, 2003 and construed the ten disputed claim terms in an order dated December 9, 2003. In its claim construction order, the Court addressed the construction of the disputed term "initialization file." (Order at 5-7.) TVI advanced the construction of the term to be "a file which, alone or in combination with other file(s), contains information or data used or referenced to start up or configure computer software and/or hardware." Microsoft proposed that the Court construe the disputed term to mean "an autostart driver, i.e., a device driver capable of automatically starting a process."
Both parties agreed that the term "initialization file" has an ordinary meaning known by one who is skilled in the art of computer science. Both parties agreed that, typically, an initialization file is "a file that contains startup information required to launch a program or operating system." ( Id. at 5.) The Court found that the patent makes reference to this ordinary meaning of initialization file. (Declaration of Kelly C. Hunsaker ("Hunsaker Decl."), Exh. 1 ("Specification") at Col. 22:19-23.) The Court therefore found that, considering the heavy presumption that claim terms carry their ordinary meaning as viewed by one skilled in the art, the agreed upon ordinary meaning of the disputed term "initialization file" was "a file which, alone or in combination with other file(s), contains information or data used or referenced to start up or configure software and/or hardware." (Order at 6-7.)
All of the patents at issue in this case are related, claim priority from the same patent application and have identical specifications. Therefore, the Court will cite to the specification of the '532 patent (attached as Exh. 1 to the Declaration of Kelly C. Hunsaker) when citing to the specifications of the patents in suit.
The Court recognized, however, that the construction of the term to conform with its ordinary meaning rendered some of the claims in some of the patents incomprehensible "because some of the claims describe the initialization file as an active ongoing process that facilitates media detection, file checking and starting further processes each time a compatible file is found." (Order at 7, citing for example, claims 6 and 14 of the '532 patent, Col. 52:8-13, 43-47.) The Court observed that "there appears to be a conflict in the meaning of the term within the claim language of the patents." ( Id.) The Court also observed that in conducting the claims construction, the claims containing a term with a well established ordinary meaning must be read in light of the well established ordinary meaning to determine if they are comprehensible and their scope is clear. ( Id. at 6, citing Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001).) Lastly, the Court observed that, if upon using the ordinary meaning of the term the claims become incomprehensible and their scope unclear, the Court is not at liberty to give an alternate meaning that rewrites the claims just to save them from being invalid. ( Id., citing Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002).
Microsoft now moves for summary judgment on three of the patents in suit, excepting the '307 patent. Microsoft contends that, due to an error in drafting carried over from one patent to the next, three of TVI's patents do not meet the requirements of 35 U.S.C. § 112, ¶ 2 for failing to set forth what the applicant "regards as his invention" because the claims are in direct conflict with the invention described in the specification. Specifically, Microsoft contends that TVI's claims recite the "initialization file" as having the role and operations that, in the specification, are performed by the "autostart driver."
ANALYSIS
A. Standard on 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 nonmoving 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. 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). Whether a claim recites the subject matter which the applicant regards as his invention, so as to satisfy the requirements of 35 U.S.C. § 112, ¶ 2, is a pure question of law, and its determination is appropriate for disposition at summary judgement. Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1344 (Fed. Cir. 2002).
B. Standard for Claims of Invalidity Under Section 112, Paragraph 2.
Section 112, paragraph 2 of the Patent Act provides in relevant part: "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. This section of the Act contains two requirements: "first, [the claim] must set forth what `the applicant regards as his invention,' and second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently `definite.'" Allen Eng'g, 299 F.3d at 1348. The only relevant issue between the parties is the first requirement of this provision. "Where it would be apparent to one of skill in the art, based on the specification, that the invention set forth in a claim is not what the patentee regarded as his invention, we must hold that claim invalid under § 112, paragraph 2." Id. at 1349. The Court can make a determination "from a simple comparison of the claims with the specification" whether the claims set forth what the inventor `regards as his invention." Id.
Although TVI responds to Microsoft's original motion with evidence regarding the definiteness of the claim, Microsoft has only contested the satisfaction of the first element regarding whether the claim has adequately set forth what the applicant regards as his invention. Therefore, the Court does not decide the issue of definiteness as it is not relevant to the contested issue.
In Allen Engineering, the Federal Circuit found that the claims at issue were invalid as a matter of law for failure to claim the subject matter that the applicant regarded as his invention because of an internal contradiction between the specification and the claims. Id. The claim in that case was an apparatus directed to a concrete finishing machine with a specialized steering mechanism. Id. at 1342. The disputed claims limited a steering box to pivoting its gear box only in a plane perpendicular to the biaxial plane. Id. at 1349. The specification, however, described the structure as rotating, but expressly excluded the gear box from pivoting in a plane perpendicular to the biaxial plane. Id. The court states, "[h]ere, it is apparent from a simple comparison of the claims with the specification that the inventor did not regard a trowel in which the second gear box pivoted only in a plane perpendicular to the biaxial plane to be his invention." Id. Because the court could not logically reconcile the description of the structure in the claim with the embodiment in the specification, the Federal Circuit upheld the finding of invalidity of the claim pursuant to 35 U.S.C. § 112, ¶ 2.
C. The Invention At Issue and the Court's Claim Construction.
Microsoft contends that there is a similar inconsistency in the specification and the claims which renders the claims asserted by TVI invalid pursuant to 35 U.S.C. § 112, ¶ 2. Microsoft argues that the patents in suit share a common specification that describes an "autostart driver" that automatically starts an application upon detection of the insertion of storage media, like a CD-ROM, into a peripheral of a host device, or computer. The specification teaches that the "autostart driver" can be automatically loaded into memory each time the computer is started by inserting an instruction in the CONFIG.SYS "initialization file" to install the "autostart driver." (Col. 21:66-22:6.) The specification indicates that the proposed invention follow the following sequence:
During booting, host device checks for initialization files such as startup and configuration files. On finding a valid initialization file, host device uses the initialization file during booting. Then host device goes via branch 506 to step 507 where host device installs an autostart driver (such as autostart driver 436) in main memory.
(Col. 22:19-24.)
Neither party disputes the fact that the two structures, the autostart driver and the initialization file, are two separate structures with different functions. (Col. 22:19-25; Order at 6.) The Court pointed out in its claim construction order, however, that construing the term "initialization file" to have its ordinary meaning "makes some of the claims incomprehensible because some of the claim describe the initialization file as an active ongoing process that facilitates media detection, file checking and starting further processes each time a compatible file is found. For example, claims 6 and 14 of the '532 patent state that the initialization file may start up or spawn a new process to execute instruction each time the predetermined file is found." (Order at 7, citing Col. 52:8-13, 43-47.) The Court indicated that this function appears to be inconsistent with the initialization file being a startup or configuration file, but also found that the only way the asserted claims make sense is when the ordinary meaning of the term initialization file is used. (Order at 7.)
In its motion for summary judgment, Microsoft moves to invalidate the asserted claims on the basis that the term "initialization file" has been construed in a manner which renders wholly inconsistent the claim terms with the patent specification. Microsoft contends that the initialization file cannot be both active and inactive, just as the steering mechanism in Allen Engineering could not rotate in both a perpendicular and a parallel plane. See Allen Eng'g, 299 F.3d at 1349. Indeed, the Court did recognize that claims 6 and 14 of the '532 patent have the initialization file purporting to "perform" some function while the specification indicates the file is inactive and only starts up or installs other, active structures. During the hearing on Microsoft's motion, counsel for TVI conceded that these inconsistent claims 6 and 14 of the '532 patent do indeed suffer from the problems the Court observed and that they could not be reconciled by one of ordinary skill in the art. However, TVI stated that it did not intend to pursue those two dependent claims. (Court Transcript at 8:3-9:3.) The issue of whether the inconsistent, unasserted claims somehow "infect" the asserted, independent claims became the subject of further briefing by the parties.
Upon further review, the Court is unconvinced that the inconsistent, dependent and unasserted claims infect the independent and asserted claims which use the term initialization file according to its ordinary meaning. Although it is a clear tenet of claim construction that the Court "must not interpret an independent claim in a way that is inconsistent with a claim that depends from it," this doctrine of claims construction does not necessarily affect the validity of independent terms once an inconsistency is found in the dependent claims. See Wright Medical Technology, Inc. v. Osteonics Corp., 122 F.3d 1440, 1445 (Fed. Cir. 1997). In order to find that the asserted, independent claims have somehow been infected by the inconsistency of the unasserted, dependent claims, Microsoft urges that the Court super-impose a new construction of the disputed term "initialization file" into the asserted claims in order to reconcile them with the dependent claims. The asserted claims do not indicate that the initialization file must be an active ongoing process, as would be required to make sense of the dependent claims. But, the asserted independent claims of the three patents in suit do not require, or even permit, that the initialization file "perform" any of the functions recited in the claims. Rather, the Court's construction of the term "initialization file," although rendering some of the dependent claims inconsistent and perhaps invalid, must not be super-imposed upon the valid construction and ordinary understanding of the independent, asserted claims.
According to the asserted claims of the invention, the initialization file is loaded and used during booting to configure the host device. As claimed, the programmed host device then performs a series of functions including detection of the insertion of storage media, checking for a file of a predetermined name, and starting up a process. The Court's construction and the application of that construction to the asserted claims do not render the asserted claims irreconcilably inconsistent. The ordinary meaning of the term "initialization file" as "a file which, alone or in combination with other file(s), contains information or data used or referenced to start up or configure software and/or hardware" does not render the independent asserted claims invalid under 35 U.S.C. § 112, paragraph 2. Therefore, the Court DENIES Microsoft's motion for summary judgment of invalidity of the '532 patent, the '863 patent and the '156 patent pursuant to 35 U.S.C. § 112, ¶ 2.
D. Grant TVI's Motion for Summary Judgment of Validity With Respect to Microsoft's Defenses Under 35 U.S.C. § 112, ¶ 2.
TVI, in its single motion for summary judgment, contends that Microsoft's defense pursuant to 35 U.S.C. § 112, ¶ 2 is meritless. (TVI Motion at 17.) According to the analysis set forth above, the Court agrees and GRANTS summary judgment to TVI on Microsoft's 35 U.S.C. § 112, ¶ 2 defense.
IT IS SO ORDERED.