Opinion

Ca, Inc. v. Simple. Com, Inc.

780 F. Supp. 2d 196
2009 U.S. Dist. LEXIS 25242
2009 WL 7445199

Court: District Court, E.D. New York
Filed: Mar 5, 2009
Status: Published
Author: Hurley
On the bench: Hurley
Cited by: 15 cases
Authority: More cited than 64.1%

holding that computer-generated data, including metadata, is a reliable form of evidence once it has been authenticated by “the testimony of a witness with knowledge that the matter is what it is claimed to be, or evidence describing the process of how the [metadata is] produced and that [it is] accurate”

How later courts described this case

holding that computer-generated data, including metadata, is a reliable form of evidence once it has been authenticated by “the testimony of a witness with knowledge that the matter is what it is claimed to be, or evidence describing the process of how the [metadata is] produced and that [it is] accurate”
Some portions of the R&R have not been objected to or argued against by the parties As to those unless expressly stated otherwise the Court 3 review has been for clear error and, having found none, those portions are adopted ’
in the absence of objections, “the Special Master's findings of fact or legal conclusions will not be overturned unless clearly erroneous” (citing Benicorp, 447 F. Supp. 2d at 331 ; FED. R. CIV. P. 72(b))
“[t]he mere theoretical possibility that the archive CD could have been altered does not make it inadmissible”

Written by the judges who cited it.

The opinion

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MEMORANDUM & ORDER

HURLEY, Senior District Judge.

TABLE OF CONTENTS TO MEMORANDUM AND ORDER

INTRODUCTION...............................................................206

BACKGROUND................................................................206

I. The Patents at Issue........................................................206

II. The Special Master’s Recommendation.......................................207

III. The Objections In General...................................................208

APPLICABLE LAW............................................................208

I. Review of the R & R .......................................................208

II. Summary Judgment........................................................208

III. Summary of Substantive Law................................................210

A. Anticipation Under §§ 102(a) and 102(e)(2)................................210

B. Obviousness...........................................................211

DISCUSSION..................................................................212

I. Anticipation...............................................................213

A. Preliminary Objections..................................................213

1. The Special Master Identified and Applied the Correct Summary Judgment Standard...............................................213

2. Simple’s Supplemental Expert Declaration Will Be Admitted Into Evidence........................................................215

B. The Meininger Reference ...............................................217

1. Overview of the Meininger Reference .................................217

2. The Special Master’s Recommendations ...............................219

a. The Special Master Found that the Meininger Reference Was Admissible Prior Art..........................................219

b. The Special Master Found Genuine Issues of Material Fact Regarding Whether the Meininger Reference Anticipates the Patents In Suit...............................................220

3. Simple’s Objections.................................................221

4. CA’s Objections....................................................222

5. Analysis...........................................................222

a. Admissibility of the Meininger Reference as Prior Art Under Section 102(a) of the Patent Act.................................222

(1) Meininger’s Oral Testimony Is Sufficiently Corroborated Under a Rule of Reason Analysis ..............................223

(a) The Archive CD Is Admissible and Highly Corroborative.....223

(b) The Email Sent By Meininger In May of 1998 As Well As Reply Emails From Users Who Accessed the Meininger Reference Are Admissible.....................227

(2) Analyzing the

Reuter

Factors And Applying the Rule of Reason Analysis...........................................228

b. The Meininger Reference Does Not Anticipate the Patents In Suit................................................. 229

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(1) The Meininger Reference Fails to Anticipate Window Objects that Act Independently of Other Content.....................230

(a) The “What is it?” Window Element Cannot Be Restored Independently of Other Content.................230

(b) The DockTiles Cannot Be Moved Independently of Other Content.........................................231

(2) The Meininger Reference Fails to Anticipate the Solely Contained Within Requirement .............................232

(3) The Meininger Reference Satisfies the Without Refresh Requirement .....................................,.......234

6. The Court’s Rulings Regarding the Meininger Reference................235

C. The Visual DHTML Reference...........................................236

1. Overview of the Visual DHTML Reference.............................236

2. The Special Master’s Recommendations ...............................239

a. The Special Master’s Evidentiary Recommendations.................239

(1) The Testimony of Messrs. Dreyfus and Flanagan................239

(2) CA’s Documentary Evidence..................................240

b. The Special Master’s Recommendations on Anticipation..............241

3. The Parties’ Objections..............................................242

4. The Visual DHTML Reference Does Not Anticipate the Patents In Suit.............................................................243

a. The Visual DHTML Reference is Admissible Prior Art..............243

b. The Visual DHTML Reference Does Not Anticipate the Patents in Suit.......................................................243

(1) The Visual DHTML Reference Does Not Disclose Window Objects Because It Fails to Disclose Window Elements That Act Independently of Other Content....................243

(2) The Visual DHTML Reference Satisfies the Solely Contained Within Requirement.......................................244

(3) The Visual DHTML Reference Satisfies the Without Refresh Requirement .............................................246

5. The Court’s Rulings Regarding the Visual DHTML Reference............247

D. The JavaScript Bible ...................................................247

1. Overview of the JavaScript Bible .....................................248

2. The Special Master’s Recommendations ...............................248

a. The Special Master Found that the JavaScript Bible Was Eligible Prior Art....................................................248

b. The Special Master Found that there was a Genuine Issue of Material Fact as to Whether the JavaScript Bible Anticipates the Patents In Suit............................................249

3. Simple’s Objections.................................................250

4. CA’s Objections ....................................................250

5. The JavaScript Bible is Enabling Prior Art ............................250

a. Legal Standard.................................................250

b. The JavaScript Bible Clearly Enables the Scripts and Supporting Text Contained Therein........................................251

c. Source Code Listings in the JavaScript Bible May Not Be Combined For Purposes of an Anticipation Determination..........252

6. The JavaScript Bible Anticipates Some of the Claims in the '563 and '882 Patents .....................................................254

a. The JavaScript Bible Discloses a Window Object that Acts Independently of Other Content....................................254

b. Unlike Listing 19-12, Listing 19-11 of the JavaScript Bible Does Not Disclose the Solely Contained Within Requirement............257

c. The JavaScript Bible Does Not Disclose Control Sections............258

d. The JavaScript Bible Discloses the Without Refresh Requirement.....259

e. The JavaScript Bible Does Not Disclose Multiple Window Objects In One Content Manifestation Environment......................259

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f. An Analysis of Whether Listings 19-1 Through 19-8 and Listings 19-10 Through 19-12 Anticipate the Patents In Suit...............260

(1) Listing 19-1 Does Not Anticipate Any of the Independent Patent Claims At Issue.....................................260

(2) Listings 19-2 and 19-3 Do Not Anticipate Any of the Independent Patent Claims At Issue.........................261

(3) Listings 19-4 Through 19-6 Do Not Anticipate Any of the Independent Patent Claims At Issue.........................261

(4) Listings 19-7, 19-8 and 19-10 Do Not Anticipate Any of the Independent Patent Claims At Issue.........................262

(5) Anticipation Analysis of Listings 19-11 and 19-12 of the JavaScript Bible ..........................................262

(a) Listings 19-11 and 19-12 Anticipate Elements 1A, IB, 1C, 1G and II of the '493 Patent.........................262

(b) Methodology and Comparison of the Independent Claims at Issue ..............................................266

i) For the Purposes of Determining Anticipation, Elements 1A, IB and 1C of the '493 Patent are Substantively Indistinguishable from Elements 1A and IB of the '563 and '882 Patents..................266

ii) For the Purposes of Determining Anticipation, Elements ID, IE and IF of the '493 Patent are Substantively Indistinguishable from Elements 1C, ID and IE of the '563 Patent and Elements 1C Through IF of the '882 Patent...................270

iii) For the Purposes of Determining Anticipation, Elements 1G and II of the '493 Patent are Substantively Indistinguishable from Element IE of the '882 Patent.................................272

iv) For the Purposes of Determining Anticipation, Element 1H of the '493 Patent is Substantively Indistinguishable from Element IF of the '563 Patent and Element 1G of the '882 Patent............273

v) For the Purposes of Determining Anticipation, Claims 1 and 6 of the '563 Patent are Substantively Indistinguishable from Claim 1 of the '493 Patent...........................................273

vi) For the Purposes of Determining Anticipation, Claims 1 and 6 of the '882 Patent are Substantively Indistinguishable from Claim 1 of the '493 Patent...........................................276

a) The Court Will Correct a Minor Typographical Error in Claim 6 of the '882 Patent...............276

b) A Comparison of the Claims........................278

(c) Prior Art that Anticipates Claim 1 of the '493 Patent will Also Anticipate Claims 16 and 17 of the '882 Patent.....281

(d) The Claims of the '493 '563 and ' 882 Patents Cover Similar Subject Matter and Can Be Anticipated by the Same Prior Art Reference..............................282

i) The JavaScript Bible Does Not Anticipate Claim 1 of the '493 Patent or Any of Its Dependent Claims.....283

ii) The '563 Patent.....................................283

a) Independent Claim 1: the JavaScript Bible Does Not Anticipate Claim 2 of the '563 Patent but Anticipates Claim 5.............................283

b) Independent Claim 6: the JavaScript Bible Anticipates Claims 7, 8, 9,12 and 13 of the '563 Patent, but Not Claim 14 and There are Issues of Fact Regarding Claim 10......................284

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1) The JavaScript Bible Anticipates Claim 7 of the '563 Patent..............................284

2) The JavaScript Bible Anticipates Claim 8 of the '563 Patent..............................286

3) The JavaScript Bible Anticipates Claim 9 of the '563 Patent..............................286

4) There is a Question of Fact as to Whether the JavaScript Bible Anticipates Claim 10 of the '563 Patent.................................287

5) The JavaScript Bible Anticipates Claim 12 of the '563 Patent..............................289

6) The JavaScript Bible Anticipates Claim 13 of the '563 Patent..............................289

7) CA Has Not Clearly Shown that the JavaScript Bible Anticipates Claim 14 of the '563 Patent.................................289

iii) The '882 Patent.....................................290

a) Independent Claim 1: the JavaScript Bible Does Not Anticipate Claim 2 of the '882 Patent but Anticipates Claim 5.............................290

b) Independent Claim 6: the JavaScript Bible Does Not Anticipate Claims 7 through 15 of the '882 Patent........................................290

c) Independent Claims 16 and 17 are Anticipated by the JavaScript Bible ............................290

7. The Court’s Ruling on the JavaScript Bible............................291

E. The Bates Patent ......................................................291

1. Overview of the Bates Patent.........................................291

2. Embodiments of the Subject Matter Claimed by the Bates Patent.........291

3. The Special Master’s Recommendations ...............................294

4. Simple’s Objections.................................................294

5. Analysis: No Reasonable Jury Could Find that the Bates Patent Anticipates the Patents In Suit.....................................294

6. The Court’s Ruling Regarding the Bates Patent........................296

II.Obviousness...............................................................296

A. The Special Master’s Recommendations...................................296

1. CA’s Level of Proof Regarding it’s Obviousness Defense.................296

2. Reference 114......................................................298

B. Simple’s Objections.....................................................299

C. Analysis ..............................................................299

1. Obviousness........................................................299

a. The Special Master Correctly Applied a Flexible Obviousness Standard ....................................................299

b. The Special Master Appropriately Denied Simple’s Motion for Summary Judgment...........................................300

(1) A Reasonable Jury Could Find That One Skilled In the Art Would Be Able To Create the Subject Matter Claimed by the '493, '563 and '882 Patents After Combining CA’s Prior Art......................................................300

(2) The Evidence Put Forth By Simple Fails to Remove All Genuine Issues of Material Fact Regarding CA’s Obviousness Defense ......................................303

2. Reference .........................................................304

3. The Court’s Rulings.................................................305

III.General Objections.........................................................305

A. CA is Not Entitled to Summary Judgment of Invalidity on All Asserted Claims...................................................

...........305

B. CA’s Requests for Summary Adjudication on Various Issues are Granted in Part..............................................................305

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C. CA Is Entitled To Summary Judgment Regarding the Date Certain Printed References are Deemed Publicly Available............. 306

1. The Special Master’s JavaScript Bible Recommendation....... 307

2. The Court’s Analysis and Ruling............................ 307

308 CONCLUSION..........................

INTRODUCTION

Plaintiff CA Inc. (“CA”), formerly known as Computer Associates International Inc., commenced this action seeking a declaratory judgment that three patents owned by Defendants Simple.com, Inc. and Wired Solutions, LLC (collectively “Simple”) are invalid, unenforceable, and not infringed by CA. Simple has counterclaimed for infringement. Presently before the Court are the parties’ objections to the Report and Recommendation Regarding Anticipation and Obviousness (the “R & R”) (Dkt. Nos. 591 & 592) of Special .Master Gale Peterson. For the reasons set forth herein, the parties’ objections are denied in part and granted in part.

BACKGROUND

I. The Patents at Issue

A complete factual recitation regarding this matter is contained in this Court’s Claim Construction Memorandum

Order, dated March 5, 2009 (“Claim Constr. Mem.”), familiarity with which is presumed. For present purposes it suffices to state that the three patents at issue relate to computer technology, and are U.S. Patent Nos. 6,272,493, 6,434,563, and 6,535,882 (the '493, '563, and '882 Patents respectively). In general, the subject matter claimed in the '493, '563, and '882 Patents is meant to provide, what the patentee terms, a windowed content manifestation environment (“CME”). An exemplary CME is displayed below in Figure l.

(Figure 1 herein is a reproduction of Figure 2B of the '493 Patent).

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[[Image here]]

According to the patentee, this was an improvement over preexisting technology because the claimed invention lets one open, view, resize, minimize, move and otherwise use multiple window objects on the same web browser screen, without: (1) triggering a refresh;

(2) having to go back and forth from one web page to another; or (3) requiring the use of another web browser. For example, a user could open, resize, move, close or otherwise manipulate the “NEWS” and “TRAVEL” windows, shown above, without forcing the entire CME to be refreshed. Having briefly described the technology at issue, the Court will summarize the Special Master’s recommended disposition regarding anticipation and obviousness.

II. The Special Master’s Recommendation

Generally speaking, the Special Master recommended that the Court deny both CA’s motion for summary judgment of invalidity under § 102(a) of the Patent Act and Simple’s motion for summary judgment dismissing CA’s affirmative defenses of anticipation and obviousness under §§ 102 and 103 of the Patent Act. (R & R at 2, 95, 177, 205, 244, 263, 305.) The Special Master recommended denial of CA’s motion for summary judgment primarily because he found genuine issues of material fact as to whether any of the prior art references discussed therein disclosed a window object as contemplated by the patents in suit. The Special Master recommended that Simple’s motion for summary judgment be denied because he found that the record evidence created a genuine issue of material fact as to wheth

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er the '493, '563, and '882 Patents were anticipated or obvious.

III. The Objections In General

Both parties have filed objections to the R

R. In their objections, Simple maintains that the Special Master incorrectly: (1) applied the wrong summary judgment standard; (2) denied their motion for summary judgment on anticipation regarding the DHTML WindowMaker simulation (“Meininger reference” or “Meininger web page”), Visual DHTML reference, JavaScript Bible, and United States Patent No. 5,877,766 (“Bates Patent”) as there are at least two elements of each asserted claim in the '493, '563, and '882 Patents, which are not present in these references; (3) denied their motion for summary judgment on CA’s obviousness defense by ignoring “the requirement that evidence of a motivation to combine must be ‘clear and particular,’ and may not be the result of hindsight reasoning”; and (4) overlooked the fact that CA did not produce clear and convincing evidence that one of its prior art references was “disseminated to the public.” (Defs.’ Mem. In Supp. of Their Objections to the Special Master’s Report and Recommendation Regarding Anticipation and Obviousness, Dkt. No. 602. 1-2 (“Simple’s Objections”).) For its part, CA argues that: (1) the Special Master failed to recognize that its prior art references anticipate each element of the independent patent claims at issue; (2) it is entitled to a judgment of invalidity on all patent claims asserted by Simple; (3) the Court should summarily adjudicate matters found to be without material issues of fact; and (4) it should be granted summary judgment regarding the date each of the 37 printed references it offered as prior art were available to the public. (CA’s Objections to Special Master’s Report and Recommendation Regarding Anticipation and Obviousness (Dkt. No. 606), at 1-2, 25 (“CA’s Objections”).) The parties’ objections will be discussed in further detail below. First, the Court shall summarize the legal standards applicable to the case at bar.

APPLICABLE LAW

I. Review of the R & R

The Court’s Order appointing the Special Master specifically states that a “[r]e-view of and appeal from all orders and recommendations, as well as the appropriate standard of review shall be governed by Federal Rule of Civil Procedure 72 and the associated case law.” (Dkt. No. 152 at 4.) If objected to, both findings of fact and legal conclusions, including evidentiary rulings, recommended by the Special Master will be reviewed

de novo. See

Fed.R.Civ.P. 72(b);

Thomas E. Hoar v. Sara Lee Corp.,

900 F.2d 522, 525 (2d Cir.1990);

see also

Fed.R.Civ.P. 53(f)(3), (4). Otherwise, the Special Master’s findings of fact or legal conclusions will not be overturned unless clearly erroneous.

See Benicorp Ins.,

447 F.Supp.2d at 331 (citing Fed.R.Civ.P. 72(b);

Thomas v. Arn,

474 U.S. 140, 149 , 106 S.Ct. 466 , 88 L.Ed.2d 435 (1985)).

II. Summary Judgment

The standard for summary judgment in a patent case is the same as in any other case.

See Desper Prods., Inc. v. QSound Labs, Inc.,

157 F.3d 1325, 1332 (Fed.Cir.1998);

Union Carbide Corp. v. Am. Can Co.,

724 F.2d 1567, 1571 (Fed.Cir.1984). Summary judgment pursuant to Federal Rule of Civil Procedure 56 is only appropriate where admissible evidence in the form of affidavits, deposition transcripts, or other documentation demonstrates the absence of a genuine issue of material fact, and one party’s entitlement to judgment as a matter of law.

See Cooper v. Ford Motor Co.,

748 F.2d 677 , 679

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(Fed.Cir.1984). The relevant governing law in each case determines which facts are material; “only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.”

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 248 , 106 S.Ct. 2505 , 91 L.Ed.2d 202 (1986). No genuinely triable factual issue exists when the moving party demonstrates, on the basis of the pleadings and submitted evidence, and after drawing all inferences and resolving all ambiguities in favor of the nonmovant, that no rational jury could find in the nonmovant’s favor.

See Chertkova v. Conn. Gen’l Life Ins. Co.,

92 F.3d 81, 86 (2d Cir.1996) (citing Fed.R.Civ.P. 56(c)). The moving party bears the burden of “informing the district court of the basis for its motion” and identifying the matters that “it believes demonstrate the absence of a genuine issue of material fact.”

Celotex Corp. v. Catrett,

477 U.S. 317, 323 , 106 S.Ct. 2548 , 91 L.Ed.2d 265 (1986). In order to withstand a motion for summary judgment, the nonmoving party must then put forth evidence setting forth specific facts that show there is a genuine issue of material fact to be tried.

Anderson,

477 U.S. at 248 , 106 S.Ct. 2505 . “In ruling on a motion for summary judgment, ... [a court must] view the evidence presented in a light most favorable to the nonmoving party and ... draw all reasonable inferences in favor of the nonmoving party.”

C.R. Bard, Inc. v. Advanced Cardio. Sys., Inc.,

911 F.2d 670, 672 (Fed.Cir.1990).

In considering a motion for summary judgment, a court must also take into account the evidentiary standard of proof that pertains to the trial on the merits.

Anderson, 477

U.S. at 252-53, 106 S.Ct. 2505 . Since patent claims enjoy a presumption of validity under § 282 of the Patent Act, the party seeking to prove invalidity must do so by clear and convincing evidence.

Abbott Labs. v. Baxter Pharm. Prods.,

471 F.3d 1363, 1367 (Fed.Cir.2006) (citing

N. Am. Vaccine, Inc. v. Am. Cyanamid Co.,

7 F.3d 1571, 1579 (Fed.Cir.1993)). “Clear and convincing” evidence is that which gives the finder of fact “an abiding conviction that the truth of [the proponent’s] factual contentions [is] ‘highly probable.’ ”

Colorado v. New Mexico,

467 U.S. 310, 316 , 104 S.Ct. 2433 , 81 L.Ed.2d 247 (1984) (citation omitted). “[A] moving party seeking to invalidate a patent at summary judgment must submit clear and convincing evidence of invalidity so that no reasonable jury could find otherwise.”

Eli Lilly & Co. v. Barr Lab. Inc.,

251 F.3d 955 , 962 (Fed.Cir.2001). On the other hand, a party wishing to have its patent held not invalid on summary judgment, must show that no reasonable jury could find that the record contains clear and convincing evidence of invalidity.

See Med. Instrumentation & Diag. Corp. v. Elekta AB,

344 F.3d 1205, 1220-21 (Fed.Cir.2003);

Eli Lilly,

251 F.3d at 962.

“Anticipation is a question of fact and obviousness is a question of law based on underlying facts.”

Med. Instrumentation,

344 F.3d at 1220 (citations omitted);

see also KSR Int’l Co. v. Teleflex Inc.,

550 U.S. 398 , 127 S.Ct. 1727, 1745 , 167 L.Ed.2d 705 (2007) (“The ultimate judgment of obviousness is a legal determination.”) (citing

Graham v. John Deere Co.,

383 U.S. 1, 17 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966));

Beckson Marine v. NFM Inc.,

292 F.3d 718, 725 (Fed.Cir.2002) (“Obviousness is a legal conclusion based on underlying findings of fact.”). Nevertheless, a court may rule on both when a motion for summary judgment has been made.

See Telemac Cellular Corp. v. Topp Telecom., Inc.,

247 F.3d 1316, 1327 (Fed.Cir.2001) (internal citations omitted) (“Although anticipation is a question of fact, it may still be decided on summary judgment .... ”).

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A court that is presented with cross-motions for summary judgment regarding anticipation under § 102 is obviously not compelled to rule for either party. Rather, when both parties move for summary judgment, each motion must be evaluated on its own merits.

See McKay v. United States,

199 F.3d 1376, 1380 (Fed.Cir.1999); 10A Wright, Miller & Kane,

Federal Practice and Procedure: Civil 3d

§ 2720, at 335-36 (1998) (footnote omitted) (Each motion must be ruled on separately while the court determines “for each side, whether a judgment may be entered in accordance with the

Rule 56

standard.”). If both parties fail to meet their respective burdens of proof, the Court must deny both motions.

Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,

424 F.3d 1293, 1302 (Fed.Cir.2005) (quoting

Bubble Room, Inc. v. United States,

159 F.3d 553, 561 (Fed.Cir.1998)). Having summarized the relevant standards of review, the Court now turns to the general substantive legal standards for determining whether a patent is invalid under §§ 102 and 103 of the Patent Act.

III. Summary of Substantive Law

A. Anticipation Under §§ 102(a) and 102(e)(2)

A patent claim is anticipated if a single prior art reference contains each and every limitation of the claimed invention.

Rockwell Int'l Corp. v. United States,

147 F.3d 1358, 1363 (Fed.Cir.1998);

Lewmar Marine, Inc. v. Barient, Inc.,

827 F.2d 744, 747 (Fed.Cir.1987); 35 U.S.C. § 102 (a). Pursuant to § 102(a) of the Patent Act, one is entitled to a patent unless “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” 35 U.S.C. § 102 (a). The foregoing knowledge, use, description or patenting of the claimed invention are included in what is termed prior art. Moreover, although § 102(a) uses the term “invention,” anticipation inquiries proceed on a “claim-by-claim basis.”

Finisar Corp. v. DirecTV Group, Inc.,

523 F.3d 1323, 1334 (Fed.Cir.2008) (citing

Hakim v. Cannon Avent Group, PLC,

479 F.3d 1313, 1319 (Fed.Cir.2007)). Section 102(e)(2) provides that one is entitled to a patent unless “the invention was described in ... a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” 35 U.S.C. § 102 (e)(2). Notably, for a prior art reference to be anticipatory under any subparagraph of § 102, it must meet the criteria set out below.

Anticipation is a multifaceted determination. First, a court must determine whether the allegedly invalidating reference qualifies as prior art. Next, a court must determine whether every element of a patent claim is expressly or inherently disclosed in the prior art reference at issue.

See Celeritas Techs. v. Rockwell Int'l Corp.,

150 F.3d 1354, 1361 (Fed.Cir.1998). In addition, the prior art reference must: (1) contain a “disclosure of all elements of a claimed invention arranged as in the claim” and (2) enable the claimed subject matter so as to place it in the possession of the public domain.

Finisar,

523 F.3d at 1334 -35

(quoting Connell v. Sears, Roebuck & Co.,

722 F.2d 1542, 1548 (Fed.Cir.1983) (citation and emphasis omitted));

see Akzo N.V. v. U.S. Int’l Trade Comm’n,

808 F.2d 1471 , 1479 (Fed.Cir.1986).

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Having broadly summarized the anticipation standard under § 102, the Court will apply specific case law as needed in its analysis.

B. Obviousness

Section 103 of the Patent Act proscribes the issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been

obvious

at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103 (emphasis added). Obviousness “must be evaluated on a claim-by-claim basis.”

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,

464 F.3d 1356, 1372 (Fed.Cir.2006). In order to determine whether a patent is obvious, courts must conduct an objective analysis by considering both the primary and secondary considerations articulated by the Supreme Court.

See KSR,

127 S.Ct. at 1734

(discussing Graham,

383 U.S. at 17-18 , 86 S.Ct. 684 and

Hotchkiss v. Greenwood, 52

U.S. 248, 11 How. 248 , 13 L.Ed. 683 (1851)). The primary obviousness considerations entail resolving “the level of ordinary skill in the pertinent art,” determining the scope and content of the relevant prior art and comparing it to the claims at issue.

KSR,

127 S.Ct. at 1734

(quoting Graham,

383 U.S. at 17-18 , 86 S.Ct. 684 );

see also DyStar,

464 F.3d at 1360 . Although the primary factors are most important, courts must also consider secondary factors such as “commercial success, long felt but unsolved needs, failure of others, etc.”

KSR,

127 S.Ct. at 1734

(quoting Graham,

383 U.S. at 17-18 , 86 S.Ct. 684 );

see also DyStar,

464 F.3d at 1360 . Indeed, these secondary factors are used to guard against the hindsight application of the “teachings of the invention in issue” into prior art.

Graham,

383 U.S. at 36 , 86 S.Ct. 684 .

Some obviousness guidelines have been forged through years of precedent. For example, it is well established that a patent for ‘“a combination which only unites old elements!, according to familiar methods,] with no change in their respective functions’ ” or a patent for two or more elements “in combination” which would do “no more than they would in separate sequential operation” are obvious.

KSR,

127 S.Ct. at 1739

(quoting Great Atl. & Pac. Tea Co. v. Supermkt. Equip. Corp.,

340 U.S. 147, 152 , 71 S.Ct. 127 , 95 L.Ed. 162 (1950)). On the other hand, an invention which combines elements that prior art teaches against combining, or an invention which combines familiar elements but yields exceptionally unexpected results, will usually be non-obvious.

KSR,

127 S.Ct. at 1739 (citing

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,

396 U.S. 57, 60-62 , 90 S.Ct. 305 , 24 L.Ed.2d 258 (1969)). Additionally, a patent “can be proved obvious ... by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.”

KSR,

127 S.Ct. at 1742 .

Although equipped with certain bedrock principles, courts must still apply a flexible approach to obviousness determinations.

See id.

at 1739;

In re Translogic Tech., Inc.,

504 F.3d 1249, 1256-57 (Fed.Cir.2007);

see also DyStar,

464 F.3d at 1367 . For instance, “the Supreme Court suggests, [that] a flexible approach to the [teaching, suggestion, or motivation test (“TSM test”) ] prevents hindsight and focuses on evidence before the time of invention ... without unduly constraining the breadth of knowledge available to one of ordinary skill in the art during the obviousness analysis.”

Translogic,

504 F.3d at 1260 (citation omitted);

see Ortho-McNeil

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Pharm., Inc. v. Mylan Labs., Inc.,

520 F.3d 1358, 1364 (Fed.Cir.2008) (“[A] flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis.”). Under the TSM test, a patent can be proven obvious “if ‘some motivation or suggestion to combine the prior art teachings’ can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.”

KSR,

127 S.Ct. at 1734 (quoting

Al-Site Corp. v. VSI Int’l, Inc.,

174 F.3d 1308, 1323-1324 (Fed.Cir.1999)). Such a motivation to combine need not be explicit and must be analyzed under the lens of one skilled in the art.

See KSR,

127 S.Ct. at 1740-41 .

When determining obviousness, a court must also consider the analytical prowess of one skilled in the art rather than confining its analysis to explicit teachings in prior art. A “patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”

KSR,

127 S.Ct. at 1741 .

[Indeed, it will often] ... be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.

Id.

at 1740-41;

Med. Instrumentation,

344 F.3d at 1221-22 . Although they are significant, courts must not overemphasize “the importance of published articles and the explicit content of issued patents.”

KSR,

127 S.Ct. at 1741 . In fact, to find a patent obvious, a court “need not seek out precise teachings directed to the specific subject matter of the challenged claim.”

Id.

Rather, “a court can [also] take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

KSR,

127 S.Ct. at 1741 ;

see also DyStar,

464 F.3d at 1361 (quoting

Motorola, Inc. v. Interdigital Tech. Corp.,

121 F.3d 1461, 1472 (Fed.Cir.1997)) (“[T]here is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention. Rather, the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art.”).

Having broadly articulated the obviousness standard under § 103, the Court will apply specific case law as needed in its analysis.

DISCUSSION

In its analysis of the parties’ objections,' the Court will initially focus on claim 1 of the '493 Patent. Claim 1 is representative of the subject matter claimed by the patents in suit and if a prior art reference anticipates or renders claim 1 obvious, the same result will likely apply to the other independent claims of the patents in suit.

Where necessary, the Court’s analysis will directly address the other patent claims at issue. In order to assist its analysis, the Court has divided claim 1 into nine elements, shown below by the bracketed letters added by the Court.

1. A system for facilitating a windowed content manifestation environment within a web browser, comprising:

[A] a server system configured to transmit a software system and asso

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ciated content via an electronic data network; and

[B] a web browser client operating within a data processing system that is coupled to said server system via the electronic data network and having a content manifestation environment, [C] said web browser client operative to receive said software system and said associated content from said server system via the electronic data network, [D] to process said software system and said associated content to produce window objects solely contained within said content manifestation environment, [E] each window object of said window objects is associated with a set of controllable attributes and is configured to statically or dynamically manifest at least a portion of said associated content therein, [F] said controllable attributes configured to affect manifestation of said each window object by said web browser client within said content manifestation environment, [G] wherein said each window object executes within and is directly controlled by said web browser client which operates within said data processing system, [H] and said controllable attributes associated with said each window object permit said each window object to be controlled as a result of performing at least one of a moving operation, a resizing operation, a minimizing operation and a maximizing operation within said content manifestation environment and [I] without requiring said web browser client to refresh said content manifestation environment.

When necessary, the Court will refer to a certain claim element by the designation shown above rather than repeating the relevant claim language. For example, instead of stating that a prior art reference does not disclose a window object that is “... solely contained within said content manifestation environment,” the Court will state that the reference does not disclose element ID of the '493 Patent.

The Court now turns to the parties’ objections, addressing first the objections with respect to anticipation and then those related to obviousness.

I. Anticipation

A. Preliminary Objections

The heart of the parties’ objections to the Special Master’s recommendations on anticipation relate to the following contested prior art references: the Meininger reference, the Visual DHTML reference, the JavaScript Bible, and the Bates Patent. Prior to addressing those objections, the Court will address two preliminary objections raised by the parties. They are: (1) Simple’s objections to the Special Master’s standard of review; and (2) CA’s objection to the admission of a supplemental expert declaration submitted by Simple in support of their objections to the R & R.

1. The Special Master Identified and Applied the Correct Summary Judgment Standard

According to the Special Master, it would be inappropriate to grant either of the parties’ motions for summary judgment if a reasonable jury

could

rule in favor of the nonmoving party.

(See

R & R at 4 (citing

Celotex,

477 U.S. at 322-23 , 106 S.Ct. 2548 ;

Anderson,

477 U.S. at 247-48 , 106 S.Ct. 2505 ; Fed.R.Civ.P. 56(c)).)

As the following analysis will show, the Special Master applied the correct standard to the parties’ motions for summary judgment. In analyzing its motion for summary judgment on anticipation, the Special Master stated that in order for CA

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to prevail it must demonstrate that the relevant prior art references clearly and convincingly disclose each element of the relevant claims with no “genuine issue of material fact.” (R & R at 63 (stating “it is CA’s burden to prove invalidity, ... [its] evidence must meet the clear and convincing standard with respect to every limitation of the disputed claims”), 94-95, 177, 204-05, 244). For instance, in denying CA’s motion with respect to the Meininger reference, the Special Master found that “there remain unresolved genuine issues of material facts in dispute.”

(See

R & R at 95;

see also id.

at 177, 204-05, 244 (denying CA’s motion for summary judgment of anticipation regarding the Visual DHTML, JavaScript Bible and Bates Patent because there remained genuine issues of material fact as to whether certain elements of the '493 Patent were anticipated).) The Special Master also correctly stated that in order to prevail on their motion, Simple bore the burden of demonstrating that no reasonable jury could find that the record contains clear and convincing evidence of invalidity.

(See

R & R at 251-52

(applying Med. Instrumentation,

344 F.3d at 1220 );

see also id.

at 263, 272, 288, 297, 302, 304, 305.) Applying that standard, the Special Master found that, although issues of material fact precluded summary judgment in its favor, CA had put forth enough evidence such that a reasonable jury

could

find that the patents in suit were clearly and convincingly anticipated, thereby mandating denial of Simple’s motion.

Simple’s argument that they should be granted summary judgment merely because CA’s motion failed leaves the Court underwhelmed. As the following excerpt from

Eli Lilly

shows, this exact issue has been addressed by the Federal Circuit and remains far from a mystery.

[A] moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise. Alternatively,

a moving party seeking to have a patent held not invalid at summary judgment must show that the nonmoving party, who bears the burden of proof at trial, failed to produce clear and convincing evidence on an essential element of a defense upon which a reasonable jury could invalidate the patent.

In determining whether a genuine issue of material fact exists, the court views the evidence in the light most favorable to the nonmoving party and resolves all doubts in its favor.

Eli Lilly,

251 F.3d at 962;

Univ. of Rochester v. G.D. Searle & Co., Inc.,

249 F.Supp.2d at 231 (W.D.N.Y.2003);

Med. Instrumentation,

344 F.3d at 1220-21 ;

see also generally Freedman Seating Co. v. American Seating Co.,

420 F.3d 1350, 1364 (Fed.Cir.2005). In short, to defeat Simple’s motion for summary judgment in on its invalidity defense, CA need only show that a reasonable jury

could

find that it put forth clear and convincing evidence of invalidity. Indeed, Simple’s argument misconstrues the entire point of cross-motions for summary judgment.

As a subsidiary argument, Simple claims that the quality of CA’s evidence is insufficient to defeat Simple’s motion for summary judgment. According to Simple, CA’s evidence of anticipation was conelusory in nature and not sufficiently detailed to raise a genuine issue of fact.

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Putting aside for now the level of evidence in support of the Meininger, Visual DHTML, JavaScript Bible, and Bates Patent references, which will be discussed in great detail later on, the Court agrees with the Special Master’s determination that the evidence submitted in support of the remaining references is sufficient to create a material question of fact. As shown in excerpt below, the Special Master analogized the case at bar to the fact pattern in

Medical Instrumentation,

344 F.3d at 1220 , and found that the evidence submitted by CA created genuine issues of material fact as to the validity of the '493, '563, and '882 Patents. (R & R at 251-52.)

Given the large number of asserted pri- or art references, Mr. Goodman’s approach to summarizing the invalidity contentions with respect to those references is not improper, and is sufficiently particular to raise a genuine issue of material fact whether those references anticipate the claims at issue.

See Medical Instrumentation and Diagnostics Corporation v. Elekta AB,

344 F.3d 1205, 1220 (Fed.Cir.2003) (“Elekta’s expert testimony in this case is not of the type that we have found to be insufficient as a matter of law to raise a genuine issue of invalidity in the past. Rather than leaving the trial judge to ‘search through lengthy technologic documents for possible evidence,’

Biotec Biologische Naturverpackungen v. Biorcorp, Inc.,

249 F.3d 1341, 1353 (Fed.Cir.2001), Elekta’s expert quoted the particular portions of the references that were relevant for each of the claim limitations. Furthermore, the expert did not simply make a conclusory statement that, in his opinion, the claims were invalid.

See id.

(‘It is well established that conclusory statements of counsel or a witness that a patent is invalid do not raise a genuine issue of fact.’). Rather, for each claim limitation, he connected it with disclosures in the prior art that he believed taught each particular limitation.”).

(R & R at 251-52.)

The Court, like the Special Master, finds that the case at bar is analogous to

Medical Instrumentation

and, contrary to Simple’s contention, CA’s evidence of anticipation is not conclusory. In fact, CA provides hundreds of pages of analysis and numerous exhibits regarding its invalidity claims.

(See, e.g.,

Invalidity Expert Report of Danny Goodman (Dkt. No. 362) (“Goodman Invalidity Rpt.”).) Like the expert in

Medical Instrumentation,

CA’s expert, Danny Goodman, cited to specific pages, sections, and portions of prior art references and linked them to the asserted claim elements he believed they invalidated.

(See, e.g.,

Goodman Invalidity Rpt. at Ex. D (a claim chart listing the elements of the patents in suit and citing to specific pages in CA’s prior art which purportedly invalidate them).) Having reviewed Goodman’s extensive invalidity analysis, the Court, like the Special Master, finds CA’s evidence sufficient to raise a material issue of fact.

Simple’s objection to the R & R on the ground the Special Master applied the wrong summary judgment standard is denied.

2. Simple’s Supplemental Expert Declaration Will Be Admitted Into Evidence

The Court now turns to CA’s objection to Simple’s use of a supplemental expert declaration.

CA provided a supplemental expert declaration and accompanying video demonstrations by Danny Goodman together with its objections to the R & R.

(See

Decl. of Danny Goodman In Supp. Of CA International, Inc.’s Objection to the Special Master’s Report and Recommendations as to CA’s Mot. For Summ. J. of

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Anticipation (Dkt. No. 607) (“First Goodman Supp. Decl.”).) Simple followed suit and submitted a supplemental declaration and accompanying video demonstration from their own expert witness, Richard Belgard.

(See

Dkt. No. 613 (“Belgard Supp. Decl.”).) CA then submitted a second supplemental expert declaration.

(See

Dkt. No. 620 (“Second Goodman Supp. Decl.”).)

CA now argues that, while its own supplemental evidence should be considered, Simple’s supplemental expert evidence should not, because rather than “providing new support for existing opinions” Simple provides “entirely new opinions.” (CA’s Reply in Supp. of its Objections to Special Master’s Report and Recommendation Regarding Anticipation and Obviousness (Dkt. No. 619) (“CA’s Supp. Reply”), at 1-3.) According to CA, it has been unfairly “blindside[d]” by these entirely new opinions, in contravention of Federal Rule of Civil Procedure 26.

(Id.

at 2-3.)

For the reasons set forth below, CA’s objection is denied and the Court will consider Simple’s supplemental evidence.

As noted earlier, because the Special Master is acting in the place of the magistrate judge, his reports and recommendations are governed by Federal Rule of Civil Procedure 72.

(See

Dkt. No. 152 at 4.) Pursuant to Rule 72(b)(3), “a district judge may ... receive further evidence” while resolving objections to a magistrate judge’s report and recommendations. Fed.R.Civ.P. 72(b)(3);

see also

Fed.R.Evid. 802 (the hearsay rule); Gregory P. Joseph,

Internet and Email Evidence,

SM078 ALI-ABA 247, ALI-ABA Course of Study Materials, Trial Evidence in the Federal Courts: Problems and Solutions, Course Number SM078, March 2007 [hereinafter Joseph]. “An email offered for the truth of its contents is hearsay and must satisfy an applicable hearsay exception.” Joseph; Fed.R.Evid. 801(c) (defining hearsay as a “statement, other than one made by the declarant while testifying at the trial or hearing, offered in evidence to prove the truth of the matter asserted.”).

The Meininger email is not hearsay because it is not being offered for the truth of its contents. The Meininger email contains statements claiming that the Meininger web page: (1) is “a REAL use for DHTML”; (2) behaves just like “windowmaker”; (3) is “ALL done with javascript and DHTML”; and (4) is “VERY graphics intensive,” etc. (R

R at 44 (producing a copy of the Meininger email).) However, the Meininger email is not being offered to prove the veracity of the forego

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ing statements.

See United States v. Dupre,

462 F.3d 131, 136-37 (2d Cir.2006). Rather, it is offered to show that the Meininger web page was available in May of 1998 because it was disseminated to members of the public. As the email is not hearsay, it is unnecessary for the Court to consider whether the email is admissible under any exception to the hearsay rule. Simple’s objection to the admissibility of the email is denied.

The Court similarly concludes that the reply emails are not hearsay because they are not being submitted for the truth of their contents. Rather, they are being submitted to show that others accessed, used and were

aware of

the Meininger reference. Fed.R.Evid. 801(c); 5-900 Weinstein’s Federal Evidence § 801.11 (citing

Dupre,

462 F.3d at 136-37 ).

Simple’s objections to the Meininger email and reply emails are denied. What remains is for the Court to address the admissibility of the Slashdot article.

The Slashdot Article is a web page print out containing a post from an individual identified as “CmdrTaco” which reads: “Gambit 32 sent us

This link

to an excellent WindowMaker page. And I mean excellent. You need a browser that can handle it: it uses layers and JavaScript to simulate the popular WM within your browser. Complete with asclock. Very clever.” Simple does not question the authenticity of the Slashdot article but objects on the grounds that it is layered hearsay.

(See

Simple’s Objections at 8.)

As the Special Master aptly found, the Slashdot article is not hearsay because it is not being offering for the truth of the assertion therein, to wit that the Window-Maker page is “excellent” or that it “uses layers.” Instead, it is being offered to show knowledge and use of the Meininger reference in May of 1998.

See, e.g., Univ. of Kansas v. Sinks,

565 F.Supp.2d 1216, 1230-31, n. 24 (D.Kan.2008) (citing

Harvey Barnett Inc. v. Shidler,

338 F.3d 1125 , 1130 n. 4 (10th Cir.2003)). It corroborates Meininger’s testimony regarding the first use of the Meininger reference. Simple’s objection to the admissibility of the Slashdot article is denied because the Special Master correctly admitted it for the limited purpose of showing that the Meininger reference was available in May of 1998. Having ruled on Simple’s evidentiary objections regarding the Meininger reference, the Court will now determine if Meininger’s testimony is sufficiently corroborated under the rale of reason analysis.

(2) Analyzing the

Reuter

Factors And Applying the Rule of Reason Analysis

In light of the archive CD, Meininger’s email, the reply emails, and the Slashdot article, the Court is left with little doubt that the Meininger reference qualifies as prior art and that Meininger’s testimony should be given significant probative value. Indeed, this is borne out by applying the

Reuter

factors to Meininger’s testimony and by analyzing the corroborative evidence submitted by CA, under a “rule of reason” analysis.

The delay between the creation and publication of the Meininger reference in May

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of 1998, and April 20, 2004, the date of Meininger’s deposition, does not undermine the value of Meininger’s testimony or the viability of the Meininger reference as prior art because the archive CD, relevant emails and Slashdot article all provide strong memory aides.

Juicy Whip,

292 F.3d at 741 . Indeed, the crux of Meininger’s testimony entailed describing how the Meininger reference worked. This was done by accessing the Meininger reference itself over the Internet. (Meininger Dep. at 12, 15.) As such the concern over a “delay between event and” testimony does not apply in the case at bar.

The remaining

Reuter

factors all weigh in favor of attributing a high probative value to Meininger’s testimony. Meininger’s testimony is not tainted by any supposed interest in the outcome of the case at bar because he is a subpoenaed third party with no financial interest in the outcome of this litigation. In this regard, Meininger cannot be compared to the witnesses in

Juicy Whip ,

who were either involved in business dealings or friendships with the party offering their testimony as proof of invalidity. 292 F.3d at 743. Simple has put forth no evidence to impeach Meininger’s credibility, and Meininger seems to have displayed a high degree of familiarity with the Meininger reference in his deposition testimony. Moreover, the creation of the Meininger reference does not seem all that improbable in light of the state of the art in 1998 and 1999. Indeed, it is not out of the realm of possibilities for young software developers to create new applications.

See, e.g., Universal City Studios v. Corley,

273 F.3d 429, 437 (2d Cir.2001) (“In September 1999, Jon Johansen, a Norwegian teenager, collaborating with two unidentified individuals he met on the Internet, reverse-engineered a licensed DVD player” and successfully foiled a DVD encryption protocol.);

A & M Records v. Napster, Inc.,

239 F.3d 1004 (9th Cir.2001) (a college student named Sean Fanning founded Napster, a revolutionary computer based file sharing system).

Under the rule of reason test, Meininger’s testimony is highly credible as an unbiased witness whose testimony is well corroborated. In this regard, Meininger’s testimony is similar to the testimony in

Mahurkar,

79 F.3d at 1577-79 . The inventor in

Mahurkar

supplemented his testimony with the testimony of an uninterested party and letters from two other individuals contemporaneous with the date of the invention. Similarly, Meininger provided a date stamped archive CD, numerous emails from uninterested third parties sent within days of his email, and a web page posting which is still available on the Internet.

Cf. Mahurkar,

79 F.3d at 1578-79 . In fact, this level of corroboration exceeds that provided by the inventor in

Mahurkar .

To summarize, Simple’s objection to the admissibility of the Meininger reference as prior art is denied because there is an abundance of unrefuted evidence which proves that the Meininger reference was publicly known and available in the United States before January 21, 1999. Having determined that the Meininger reference qualifies as admissible prior art, the Court now turns to whether the Meininger reference invalidates the '493, '563, and '882 Patents under § 102(a) of the Patent Act.

b. The Meininger Reference Does Not Anticipate the Patents In Suit

In order to resolve the parties’ relevant objections, the Court must determine whether the Meininger reference clearly and convincingly, with no genuine issue of material fact, teaches and embodies the: (1) acts independently; (2) solely contained within; and (3) without refresh requirements of the patents in suit.

(See

CA’s

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Objections at 1-8, 14-17, 22-23; Simple’s Objections at 8-9.)

Each claim element will be discussed below.

(1) The Meininger Reference Fails to Anticipate Window Objects that Act Independently of Other Content

The parties’ dispute regarding the acts independently requirement can be summarized as whether either the “What is it?” or the square “DoekTile” window elements found in the Meininger reference’s content manifestation environment act independently of other content. In other words, can a user manipulate these elements without being constricted by other content in the same HTML document. Two issues must be resolved: (1) whether the “What is it?” window elements can be

restored

independently of other content and (2) whether the DoekTile window elements in the Meininger reference can be

moved

independently of other content.

(a) The “What is it?” Window Element Cannot Be Restored Independently of Other Content

The Meininger reference fails to teach and embody the acts independently limitation of the patents in suit because a user’s control, specifically the ability to restore, the ‘What is it?” window is restricted by the necessity to interact with a

separate

“WindowMaker” menu item.

The Court has defined “independently of other content” to mean that a window object can act “independently” so long as its actions are not constricted by other content in the HTML document. (Claim Constr. Mem. at 47-48.) However, the Court also recognized that window objects can be impacted by other content in the HTML document and remain “independent[ ]” within the context of the patents in suit. (Claim Constr. Mem. at 46-47.) Due to this functional definition, a window object can be made to pop-up and display other content while remaining “independently ]” of other content within an HTML document, because its own subsequent actions are not constricted by that other content.

For example, although actions in one window object may cause content to appear in another window object, a user can still manipulate (move, resize, minimize, restore, etc.) the window object

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which received the new content without being constricted by other content or window objects. In the Meininger reference, however, the user’s ability to restore the “What is it?” window is constricted by other content because she must click on the separate WindowMaker menu to make the “What is it?” window visible again. Consequently the Meininger reference fails to teach a window object whose actions are not restricted by other content in an HTML document.

The Court is unpersuaded by CA’s assertion that “when a window element in [the] Meininger [reference] ... opens or ‘restores,’ that act only depends on its own content — the change to its own ‘visibility’ attribute — and not on ‘other content.’ ” (CA’s Supp. Reply at 4.) While the “visibility” attribute is not other content, it is clear that the WindowMaker menu used to change it, is other content. This distinction is crystallized when one observes that: (1) the “What is it?” window is already present and merely made visible when a user activates it by clicking on the

separate

“What is it?” button on the Window-Maker menu and (2) both the Window-Maker menu and the “What is it?” window can appear simultaneously within the content manifestation environment of the Meininger reference as shown above in Figure 2,

supra

at 218, but cannot be used at the same time.

Indeed, the fact that windows in the Meininger reference turn invisible once they are minimized is further proof that they do not act independently of other content. If window elements in the Meininger reference actually did act independently of other content, a user would only be able to make them visible again by blindly guessing where the now invisible window last appeared on screen. The following illustration highlights the implausibility of CA’s contention.

If the “What is it?” window in the Meininger reference actually acted independently of other content, a user would have to click on the “What is it?” window to restore it after it was minimized. However, since the “What is it?” window would be invisible, the user would not know where to click. As such, when the user clicks on the

visible

WindowMaker menu item to restore the

invisible

“What is it?” window, she is actually using

other visible

content. Consequently, the Court finds no evidence which proves that windows in the Meininger reference, which are made invisible when minimized, can be restored independently of other content.

(b) The DockTiles Cannot Be Moved Independently of Other Content

The Court turns to Simple’s arguments regarding whether the DockTile windows in the Meininger reference are window objects as defined by the patents in suit. DockTiles are the square elements in the bottom and top right quadrants of Figure 2.

See supra

at 218.

As Simple correctly maintains, Dock-Tiles are not window objects because their movements are restricted to conform to a grid. (Simple’s Reply in Supp. of Obj. to R & R (Dkt. No. 617), at 4 (DockTiles are “square window elements [that] are each aligned with an invisible grid, thus their movement is affected by other content within the HTML document and also are not independent according to the Special Master’s construction of “acts independently.”) (“Simple’s Supp. Reply”).) As CA concedes that DockTiles are “iconic elements] whose movements are] ... partially restricted such that each tile is aligned with an invisible grid,” there is no question that DockTiles are not window objects because their movement is constricted by other content in the same HTML document. (First Goodman Supp. Deck ¶¶ 4, 7.) In sum, the Meininger refer

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ence fails to disclose windows that act independently of other content.

The Court now turns to the solely contained within requirement.

(2) The Meininger Reference Fails to Anticipate the Solely Contained Within Requirement

The Court declines to adopt the Special Master’s recommendation regarding the solely contained within requirement as it pertains to the Meininger reference. The solely contained within requirement means that “a window object cannot be moved from or displayed, in whole or in part, outside a content manifestation environment.” (Claim Constr. Mem. at 90.) Given that windows in the Meininger reference can be moved off screen, the Meininger reference fails to anticipate the solely contained within requirement of element ID of the '493 Patent and claim 16 of the '882 Patent.

(See id.)

CA’s argument that windows in the Meininger reference meet the solely contained within requirement because they do not

appear

outside of their content manifestation environment overemphasizes visual perception and contradicts the proper interpretation of the phrase. (CA’s Objections at 22.) The moment a window in the Meininger reference is removed from its content manifestation environment, it is no longer solely contained within it.

Moreover, CA’s reliance on its expert testimony is misplaced. Goodman, CA’s expert, loaded the Meininger reference and dragged the “What is it?” window outside its content manifestation environment. Goodman then expanded the Netscape web browser, thereby enlarging the Meininger references’ content manifestation environment, and was able to show that the “What is it?” window reappeared in the newly expanded content manifestation environment. (First Goodman Supp. Decl. at 12-17;

see also id.

¶ 33 (stating “A window object can be moved beyond the visible portion, yet the object remains a full “citizen” of the CME, complete with controllable attributes that allow further operations on it, even when it is out of view.”).)

Nevertheless, in light of the Court’s definition of “solely contained within,” this demonstration is nothing more than a slight of hand. Goodman’s demonstration worked because he only moved the window slightly outside the content manifestation environment of the Meininger reference. None of the diagrams in pages 13 to 17 of the First Goodman Supplemental Declaration contain a content manifestation environment that takes up the entire computer monitor screen. In fact, Goodman failed to move any of the Meininger reference windows completely off the viewable area within the computer screen in any of his examples. Perhaps this is because, as Simple has demonstrated, doing so would make the windows irretrievable without the use of a refresh command. (Belgard Supp. Deck, Ex. 1.)

In a video demonstration accompanying the Belgard Supplemental Declaration, Simple was able to show that dragging a window from the Meininger reference made it irretrievable without refreshing the content manifestation environment. Accordingly, it is clear that the Meininger reference does not disclose window objects solely contained within said content manifestation environment” as required by element ID of the '493 Patent and claim 16 of the '882 Patent.

Further, CA presents what can best be characterized as an argument based on wordplay.

CA maintains that claim 1 of

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the '493 Patent requires “only that window objects be

produced

only within the” content manifestation environment. (CA’s Objections at 23 n. 23 (emphasis in original).) However, in claim 1 of the '493 Patent, the phrase solely contained within directly follows and modifies the term window object, not merely the manner in which a window object is produced. The relevant claim language reads: “... to process said software system and said associated content to produce

window objects solely contained within

said content manifestation environment....”

See, e.g.,

'493 Patent Cl. 1 (emphasis added). In this context, the phrase solely contained within clearly modifies the term window objects.

The Court’s interpretation of claim 1 is squarely supported by the rules of grammar. According to the rule of the last antecedent, “a limiting clause or phrase ... should ordinarily be read as modifying only the noun or phrase that it immediately follows” in the absence of “other indicia of meaning.”

Barnhart v. Thomas,

540 U.S. 20, 26 , 124 S.Ct. 376 , 157 L.Ed.2d 333 (U.S.2003). The grammatical “rule of the last antecedent,” has been: (1) prescribed by the Supreme Court when interpreting statutes; (2) used by the Federal Circuit in anticipation determinations and statutory analysis; and (3) used by other courts in infringement determinations.

See, e.g., id.; Finisar,

523 F.3d at 1335-37 ;

Anhydrides & Chemicals, Inc. v. United States,

130 F.3d 1481, 1483 (Fed.Cir.1997);

Felix v. Am. Honda Motor Co.,

2007 WL 3054185 at *2-3, 2007 U.S. Dist. LEXIS 78564 at *8-9 (D.Kan. Oct. 19, 2007). In light of this precedent, the Court finds it appropriate to apply the rule of the last antecedent when determining whether the phrase “solely contained within” only modifies the term window objects in the absence of any contrary intent.

See Felix,

2007 WL 3054185 at *2-3, 2007 U.S. Dist. LEXIS 78564 at *8-9.

The intrinsic evidence before the Court bears no indication that window objects were meant to be removed from a single content manifestation environment screen. In fact, a touted improvement of the claimed subject matter over prior art is that it allows users to have multiple window objects

within

a single content man

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ifestation environment.

See, e.g.,

Response and Amendment to Application No. 09/234,297 (Dkt. No. 366), at Ex. 4 at SIM006243;

see also

'493 Patent col. 2. 11. 46-51. Indeed, this intent is reinforced by the position of the phrase solely contained within in claim 1 of the '493 Patent. With no contrary intent, the Court is compelled to find that the phrase solely contained within is meant to modify the term window objects rather than limiting the modifier to the process in which window objects are made.

Since the windows in the Meininger reference can be moved off screen, the Meininger reference fails to meet the solely contained within requirement of claim 1 of the '493 Patent and claim 16 of the '882 Patent. Accordingly, while CA’s motion for summary judgment is properly denied, the Court also finds that no reasonable jury could determine that the Meininger reference anticipates Claim 1 of the '493 Patent or Claim 16 of the '882 Patent.

(3) The Meininger Reference Satisfies the Without Refresh Requirement

Based on the record evidence, CA has provided clear and convincing evidence to support a finding that window elements featured in the Meininger reference “can be moved and minimized without a refresh” from the web browser’s cache.

(See

CA’s Objections at 14; CA’s Supp. Reply at 5; First Goodman Supp. Decl. at 17-26.) CA first illustrates this by way of a technical explanation from Mr. Goodman and then provides a visual demonstration as confirmation.

Goodman’s invalidity declaration establishes that window elements in the Meininger reference could be manipulated without triggering a refresh. In his invalidity declaration, Goodman explains that a layer created by using the Dynamic HTML (“DHTML”) programming language can be moved, minimized or otherwise controlled without “sending requests to the server.”

(Decl. of Danny Goodman in Supp. of Pl.’s Opp’n. to Defs.’ Mot. for Summ. J. (Dkt. No. 362) (“Goodman Invalidity Decl.”), at ¶¶ 39-40.) For instance, no new information is needed from the server or web browser cache when a window, like the “What is it?” element in the Meininger reference, is minimized or restored because such an action merely alters the visibility attribute of the window. (Goodman Invalidity Rpt. at 31.) This is significant because web browsers in use when the Meininger reference was first disseminated allowed users to control the “position, size, and visibility of Dynamic HTML layers without ... [triggering a refresh of] the browser window.”

(Id.)

Nevertheless, the Special Master found that CA had not shown by clear and convincing evidence, with no genuine issue of material fact, that windows in the Meininger reference could be manipulated without triggering a refresh of the local web browser cache.

Since the parties did not object to the Special Master’s definition of “refresh” and the Court has not found it to be clearly erroneous, CA was required to show that windows in the Meininger reference can be moved and minimized without requiring a “refresh from either the server or the [local] browser caches.” (First Goodman Supp. Decl. at 17-26.) CA met its burden with the First Goodman Supplemental Declaration. That declaration con

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tains a step by step demonstration in which Mr. Goodman:

(1) explained the source code and programming functions required to create the Meininger reference and why they did not require a refresh from the server or local web browser cache when a window was manipulated (see

id.

¶ 38 “Moving is accomplished solely by adjusting the coordinate position of the window object in response to mouse event coordinates, and therefore, there is no need to retrieve new content to carry out these acts”);

(2) proved that the web browser cache was cleared by showing their file content directories;

(3) loaded the Meininger reference from his server onto a “client computer”;

(4) disabled his Internet connection;

(5) moved windows around the Meininger reference content manifestation environment;

(6) minimized windows found in the content manifestation environment of the Meininger reference

(id.

¶ 47 (stating “After those minimizing actions, I once again updated and viewed the disk and memory caches, which remained empty, as shown in the following two illustrations.”)); and

(7) once again demonstrated that the server and browser caches were not involved in any of the foregoing user actions by showing that the file content directory in the web browser cache was still empty.

In light of the foregoing, CA has shown by clear and convincing evidence, with no genuine issue of material fact, that the Meininger reference satisfies the without refresh requirement of the patents in suit.

E.g.,

'493 Patent, Cl. 1; '563 Patent Cl. 1; '882 Patent, Cl. 1.

' Having addressed the parties’ objections regarding the Meininger reference, the Court will issue its rulings.

6. The Court’s Rulings Regarding the Meininger Reference

The Court grants Simple’s motion for summary judgment dismissing CA’s anticipation defense, as it pertains to the Meininger reference, because no reasonable jury could find that the Meininger reference discloses the acts independently requirement of the patents in suit. Since all window objects must act independently of other content in the same HTML document, and every claim at issue requires a window object, there is no way in which the Meininger reference can anticipate any of the claims in the '493, '563, or '882 Patents. In addition, no reasonable jury could interpret the record evidence to find that the Meininger reference meets the solely contained within requirement of element 1 D of the '493 Patent. The Court does, however, grant CA’s objection with regards to the without refresh requirement of element II of the '493 Patent and finds that it is disclosed and embodied in

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the Meininger reference. Having determined that the Meininger reference does not anticipate the patents in suit, the Court turns to the parties’ objections regarding the Visual DHTML reference.

C. The Visual DHTML Reference

As it did with the Meininger reference, the Court will describe the Visual DHTML reference prior to discussing the Special Master’s associated recommendations on anticipation and the parties’ corresponding objections. What follows is a summary of the Visual DHTML reference.

1. Overview of the Visual DHTML Reference

The Court’s overview of the Visual DHTML reference will include a summary of the technology used to create it, a description of how some of the window elements therein operate and a description of its content manifestation environment. In many respects, the Visual DHTML reference is quite similar to the Meininger reference. For instance, both are web pages that utilize the DHTML and JavaScript programming languages. (R & R at 15-33, 95-98.) The Visual DHTML reference serves as a demonstration tutorial and web authoring tool.

(Id.

at 96.) After accessing the Visual DHTML reference/web page over the Internet, users can scroll down and click on the “Visual DHTML” hyperlink on the lower left portion of the display shown below in Figure 5. (R & R at 95-98.) This will cause the launch of a new “Visual DHTML (beta)” window as shown below.

A user can launch new windows within the Visual DHTML (beta) window by clicking on the menu icons on the top of the screen.

(Id.

at 99-100.) “For example, clicking on the ‘[New1 button cause[s] the appearance of the ‘New Page’ window ... and clicking on the ‘[Wjidgets’ button cause[s] the appearance of the ‘Components Palette’ window.”

(Id.

at 100-01.)

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[[Image here]]

The “New Page” and “Components Palette” 'windows in the Visual DHTML reference are similar to the “What is it?” window in the Meininger reference because all three are “absolute-positioned elements” and have various controllable attributes which can be altered without requiring a refresh. (R & R at 101 (citations omitted).) Moreover, the absolutely positioned elements in the Visual DHTML reference can be moved freely, much like their counterparts in the Meininger reference.

(See

First Goodman Supp. Decl. at 27-30 (illustrating how window elements in the Visual DHTML reference can be moved anywhere within their content manifestation environment).) However, unlike their counterparts in the Meininger reference, window elements in the Visual DHTML reference are automatically made invisible before they are moved five or more pixels from their content manifestation environments.

(Second Goodman Supp. Deck at 9-10.) In addition, like their counterparts in the Meininger reference, the window elements of the Visual DHTML references

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are made invisible when they are minimized and made visible when they are launched/activated or restored. (CA’s Objections at 10; Second Goodman Supp. Decl. ¶¶ 27-28; Belgard Supp. Decl. Ex. 1.)

Turning to the content manifestation environment of the Visual DHTML reference, it encompasses the entire “framed area” beneath the title bar, which reads “Visual DHTML (beta)-Netscape,” shown in the foreground window of Figure 6 below. (R

R at 163.) The content manifestation environment of the Visual DHTML reference includes various “absolute positioned elements,” such as: (1) a “menu bar and its drop-down menus”; (2) the tool bar, just beneath the menu bar, and its buttons, such as “ ‘[N]ew,’ ‘[W]idgets,’ ‘[Ijmage,’ ‘[L]ink’ and ‘[T]ext’”; and (3) a “status bar.” (R

R at 163-65.)

[[Image here]]

“[A]ll of the text and ‘absolute positioned elements’ within the ... [content manifestation environment of the Visual DHTML reference] ... constitute ‘other content within a particular HTML document’ as called for in” the relevant claim language.

(Id.

(citations omitted).)

Other technical aspects of the Visual DHTML reference will be discussed in further detail below as necessary. Having described the Visual DHTML reference, the Court will summarize the Special Master’s recommendations, which are most relevant to the parties’ objections.

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2. The Special Master’s Recommendations

Overall, the Special Master found that the Visual DHTML reference was admissible prior art but that there were genuine issues of material fact as to whether it anticipated the '493, '563, and '882 Patents.

a. The Special Master’s Evidentiary Recommendations

The Special Master began his analysis of the Visual DHTML reference by denying Simple’s objections to its eligibility as prior art. (R & R at 105-60.) In particular, the Special Master found that CA’s evidence was sufficiently authenticated and not subject to the hearsay exclusion. This included an extensive analysis of the relevance and admissibility of two categories of evidence: (1) the deposition testimony of David Flanagan and Paul Dreyfus and (2) documentary evidence which included source “code, screenshots and articles.”

(Id.

at 106.) What follows is a summary of the Special Master’s analysis of the admissibility of each category of evidence.

(1) The Testimony of Messrs. Dreyfus and Flanagan

The Special Master used Dreyfus’ testimony to establish that the Visual DHTML reference was publicly available in 1998 and used Flanagan’s testimony as corroborative evidence. (R & R at 106-18.) Dreyfus was a former editor for Netscape’s “DevEdge Online website” and helped to produce a CD containing a link to the Visual DHTML reference (the “Visual DHTML CD”). (Deck of Chris Martiniak in Supp. of Pl.’s Reply in Supp. of Mot. for Summ. J. (Dkt. No. 402-6) (“Dreyfus Dep.”), Ex. 4 at 9:5-11.)) Dreyfus stated that, in February of 1998, Gary Smith, the author of the source code used to generate the Visual DHTML reference, sent him a link to the Visual DHTML reference. (Dreyfus Dep. at 22:3-9; R & R at 118; Goodman Invalidity Deck Ex. 8 at CA 1002765.) Dreyfus also claimed to have “inspected” this link to verify its functionality prior to including it in the Visual DHTML CD. (Dreyfus Dep. at 22:3-9; R & R at 114.) On or before June of 1998, the Visual DHTML CD was sent to Flanagan and at least 50,000 other programmers throughout the world, about half of whom were in the United States. (R & R at 107-08;

see also

Dreyfus Dep. at 13:11-14, 22-25, 14:16-25, 15:4-12, 19-25, 16:7-18.) For his part, Flanagan testified that in June of 1998 he received a copy of the CD produced by Dreyfus and others. (R & R at 107-08 (citing and discussing Deck of Chris Martiniak in Supp. of Ph’s Reply in Supp. of Mot. For Summ. J. (Dkt. No. 402-7), Ex. 5.)

The Special Master recommended that Flanagan’s testimony could be used to corroborate Dreyfus’ assertion that the Visual DHTML reference was publicly available on or before June of 1998. Although the Special Master found that it was unclear as to when Flanagan accessed and used, as opposed to received, the Visual DHTML reference, he found that Flanagan’s testimony did in fact corroborate Dreyfus’ testimony under the

Reuter

factors and a rule of reason analysis. (R & R at 116-17 (applying

Reuter,

670 F.2d at 1021 & n. 9;

Juicy Whip,

292 F.3d at 741, 743 ).)

The following factors were critical to the Spe

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cial Master’s recommendation: (1) Dreyfus and Flanagan had no apparent relationship; (2) Flanagan has no apparent interest in the present litigation; (3) Flanagan’s deposition testimony was “approximately six years” after he received the CD with the Visual DHTML link and page; (4) the record was bare of any evidence which contradicted either Dreyfus or Flanagan; (5) the CD labels in evidence directly supported Dreyfus and Flanagan; (6) both Dreyfus and Flanagan appeared to be “quite familiar with the subject matter of the patents in suit”; and (7) CA also “proffered several DHTML and JavaScript references to explain the knowledge of a person skilled in the art” and to serve as prior art references as well. (R & R at 117.) In sum, the Special Master found that Flanagan’s testimony was “sufficiently independent” of Dreyfus’ to corroborate when Visual DHTML was created and distributed to the public.

(Id.

(citing

Medichem,

437 F.3d at 1170 for the proposition that “The requirement of independent knowledge remains key to the corroboration requirement.”).) The Court now turns to the Special Master’s analysis of CA’s documentary evidence.

(2) CA’s Documentary Evidence

As the Special Master observed, CA corroborated the testimony of Flanagan and Dreyfus with documentary evidence.

(Id.

at 118.) CA’s documentary evidence, spanning Bates-numbers CA 1002764-1002773, CA 1108971-1108976 and CA 130056-130074, falls “into three categories: (1) Visual DHTML source code; (2) Visual DHTML screenshots; and (3) articles discussing Visual DHTML.”

(Id.

at 157.)

The Special Master admitted the foregoing evidence because he found that it was properly authenticated by a witness with knowledge and that Simple failed to submit any evidence sufficient to raise any question as to the authenticity of this evidence.

(See

R & R at 118-60.)

In making this authenticity determination, the Special Master established a chain of custody,

ie.,

that the CD provided by Dreyfus during his deposition was in fact the same one used by Goodman when he conducted his analysis of the Meininger reference.

In his video demonstration, Mr. Goodman testified that he inserted the CD into his computer, reviewed and copied the files from the CD of Exhibit 7A (from Mr. Dreyfus’ deposition) to his computer, expanded a. zip archive of those files, and noted that the dates of those files were April 3, 1998 or earlier. Mr. Goodman further testified that he stored the Visual DHTML files on his server in the same way that Mr. Dreyfus testified the files were stored on the Netscape server in April of 1998. Mr. Goodman thus had knowledge of the files comprising Visual DHTML, as well as knowledge of the operation of Visual DHTML and access to the Internet. Simple does not challenge Mr. Goodman’s technical capabilities or the procedures that he employed in copying the contents of that CD to his server. Nor does Simple challenge the accuracy or reliability of the foregoing evidence, or assert that the evidence is anything other than what it purports to be.

(Id.

at 157-58.) The Special Master then determined that Goodman actually relied upon exhibits CA1002765-1002773, C Al108972-1108976, CA130056-130074 and reviewed the very same CD provided by Dreyfus in his initial deposition.

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With respect to CA1002765-1002773, CA1108972-1108976, CA130056130074, however, Mr. Goodman expressly discussed and relied on those documents (whether as Bates-numbered or as appearing in the video demonstration) in support of his invalidity analysis, as set out above in his Invalidity Report, Opposition Declaration and Invalidity Declaration, as well as in the claim charts and video demonstration accompanying that testimony.

See, e.g.,

Goodman Decl., Exh. 8: claim chart for '493:1 at 2, 4-6, 8,11 & 16; '882:1 at 1 & 3; '882:6 at 4-5. Mr. Goodman may not have mentioned every single Bates-numbered page (for example, Mr. Goodman only referenced a page or two of “Visual DHTML” article from DevEdge Online Archive (CAI 30061-65)), but Mr. Goodman’s testimony nevertheless encompasses those documents. Goodman therefore has knowledge of the matters of which he testifies, and that is sufficient to authenticate those documents under Fed.R.Evid. 901(b)(1). Simple’s objections to those documents are therefore not well-taken.

R at 158). Having found that Visual DHTML qualified as prior art, the Special Master went on to analyze whether it anticipates the patents in suit.

b. The Special Master’s Recommendations on Anticipation

The Special Master recommended denial of CA’s motion for summary judgment on anticipation regarding the Visual DHTML reference because there was a genuine issue of material fact as to whether the Visual DHTML reference anticipated the window objects and without refresh limitations of the patents in suit.

(Id.

at 177.) Nonetheless, the Special Master also recommended denial of Simple’s motion for summary judgment because he found that they failed to put forth sufficient evidence such that no reasonable juror could find that their patents were invalid.

(See id.

at 263.) Once again, the Court will focus on the claim elements germane to the parties’ objections, such as the window object and “solely contained within said content manifestation environment” requirements found in element ID of the '493 Patent as well as the without refresh limitation found in element II.

Based on his finding that there was a question of fact as to whether the window elements found in the Visual DHTML reference acted independently of all of the “other content within an HTML document,” the Special Master recommended that the Visual DHTML reference did not anticipate the window objects requirement of element ID.

(Id.

at 169.) According to the Special Master, Goodman’s video demonstration of the Visual DHTML reference: (1) demonstrated very little movement; (2) did not demonstrate whether window elements, such as the “New Page” or “Components Palette” windows shown above in Figure 5,

supra

at 237, could be moved “over the menu bar, status bar or toolbar”; and (3) did not clearly show the “window elements are truly independent of ... [other] content.” (R

R at 169.) The Special Master did, however, note that “when opened, the ‘[Components [P]alette’ window element rested over the toolbar, and the ‘[N]ew [P]age’ window element could be dragged over the toolbar (but was not dropped).”

(Id.)

The Special Master also observed that after a user minimized any of the window elements found in the Visual DHTML reference, she would have to click on a corre

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sponding button in the tool bar to “restore” them.

(Id.

at 170.) As the Special Master noted, Goodman’s video demonstration of the Visual DHTML reference showed that the “[N]ew [P]age” and “[C]omponents [P]alette” window elements could be minimized and then restored to their place on screen before being minimized.

(Id.

at 170.) However, as the Special Master pointed out, in order to restore these window elements, Goodman was required to click on the “[N]ew” and “[W]idgets” buttons in the Visual DHTML reference tool bar.

(Id.

at 170.)

Finally, the Special Master concluded that it was unclear whether or not the Visual DHTML reference satisfied the without refresh limitation of element II in the '493 Patent because CA failed to show that the content manifestation environment was not “updated with content from the [local] web cache” while a user manipulated various window elements.

(Id.

at 177.) Having summarized the Special Master’s recommendations presently at issue, the Court will list the parties’ objections.

3. The Parties’ Objections

Once again, Simple puts forth numerous objections dealing with evidentiary issues and whether CA proffered sufficient evidence to evade summary judgment. To begin with, Simple maintains that CA failed to establish that the Visual DHTML reference is eligible as prior art under Section 102(a) because there is insufficient evidence to prove that it was publicly available before January 21, 1999. According to Simple, the uncorroborated testimony of Paul Dreyfus was insufficient to establish that Visual DHTML was posted on the Internet by February of 1998, regardless of whether Dreyfus is a disinterested third party.

(See

Simple’s Objections at 9 (citing

Finnigan Corp. v. International Trade Comm.,

180 F.3d 1354 , 1366 (Fed.Cir.1999)); Simple’s Supp. Reply at 12.) Simple further asserts that CA failed to “establish that Dreyfus had the requisite personal knowledge” to authenticate the publication date of the Visual DHTML reference as February of 1998. (Simple’s Supp. Reply at 13.) Finally, Simple argues that since the Special Master concluded that CA “had not proved that [the] Visual DHTML [reference] discloses: (1) ‘window objects;’ and (2) the ‘without refresh’ limitation ... no reasonable jury could conclude that [the] Visual DHTML [reference] renders any claim” of the '493, '563, and '882 Patents invalid. (Simple’s Objections at 12-13.) In sum, Simple argues that their motion for summary judgment dismissing CA’s anticipation defense regarding the Visual DHTML reference should be granted.

CA objects to the Special Master’s recommendation that its motion for summary judgment on anticipation regarding the Visual DHTML reference be denied. In particular, CA: (1) objects to the Special Master’s recommendation that there are genuine issues of material fact as to whether the record evidence clearly and convincingly shows that window elements in the Visual DHTML reference (a) act

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independently of other content, and (b) satisfy the without refresh requirement of element II of the '493 Patent; and (2) argues that the window elements in the Visual DHTML reference meet the solely contained within requirement of the of element ID of the '493 Patent.

(See

CA’s Objections at 9-11, 17-20;

see also

Second Goodman Supp. Decl. at 3-10.)

4. The Visual DHTML Reference Does Not Anticipate the Patents In Suit

Preliminarily, the Court must determine whether the Visual DHTML reference is admissible prior art. After addressing that issue, the Court will turn to the parties’ objections over whether it anticipates the patents in suit.

a. The Visual DHTML Reference is Admissible Prior Art

The Court finds Simple’s objections to the Special Master’s recommendation on the eligibility of the Visual DHTML reference as prior art unpersuasive. Simple does not attack the credibility of any of CA’s witnesses involved or provide any evidence to contradict either their testimony or the documentary evidence associated with the Visual DHTML reference. Rather, Simple merely insists that CA has failed to put forth clear and convincing evidence, that the Visual DHTML reference was publicly available prior to the filing date of the '493 Patent, January 21, 1999. The Court does not agree. It would serve no purpose for the Court to undertake an extensive analysis of CA’s evidence in light of the painstaking and detailed review conducted by the Special Master, given the Court’s agreement with both his reasoning and recommendation.

The Court adopts the Special Master’s evidentiary findings as well as his reasoning regarding the eligibility of the Visual DHTML reference and its associated documentation as prior art.

(See

R at 105-60.) The Special Master correctly found that: (1) the testimony of Messrs. Dreyfus and Flanagan was well corroborated, unrefuted, and could be used to establish that the Visual DHTML reference was admissible prior art under Section 102(a) of the Patent Act and (2) CA’s documentary evidence associated with the Visual DHTML reference was properly authenticated under Federal Rule of Evidence 901(b)(1) by a witness with knowledge that the documents were what CA claimed them to be. Simple’s objections to the contrary are denied.

b. The Visual DHTML Reference Does Not Anticipate the Patents in Suit

Having determined that the Visual DHTML reference constitutes eligible prior art, the Court must now determine whether it anticipates the: (1) act independently; (2) solely contained within; and (3) without refresh requirements of the patents in suit.

(See

CA’s Objections at 9-11, 17-20; Simple’s Response To CA’s Objections (Dkt. No. 612), at 8-10.) Each claim element will be addressed

ad seriatim.

(1) The Visual DHTML Reference Does Not Disclose Window Objects Because It Fails to Disclose Window Elements That Act Independently of Other Content

Once again, the parties’ dispute regarding the acts independently requirement centers upon whether window elements in the Visual DHTML reference can be restored independently of other content.

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Inasmuch as a user must click on a button in the tool bar to restore window elements in the Visual DHTML reference once they have been minimized, Simple is correct that window elements in the Visual DHTML reference do not act independently of all other content within their content manifestation environment. (Simple’s Response To CA’s Objections at 8-9.) For example, if a user were to minimize either the “Components Palette” or “New Page” window element, shown above in Figure 6,

supra

at 238 she would not be able to restore them unless she clicked on the “Widget” or “New” buttons shown in the tool bar of the Visual DHTML reference’s content manifestation environment.

(See

Belgard Supp. Decl. at 7-8.)

Due to the fact that the “Components Palette” or “New Page” window elements of the Visual DHTML reference cannot be restored without the use of a

separate

tool bar in the same content manifestation environment, a user’s control and manipulation of these window elements is restricted by other content. (Belgard Supp. Decl. ¶¶ 20-25;

see also

Second Goodman Supp. Decl. ¶¶ 27-28.) The Court defines “independently of other content” to mean that a window object can act “independently” so long as its motions and actions are not constricted by other content in the HTML document, although it can still be impacted by other content in the HTML document. As such, a window object can be made to pop up and display other content while remaining “independent” of other content within an HTML document because once it is initiated or made to display data, the users control of said window object is not constricted by other content. However, in the Visual DHTML reference, the user’s ability to restore the “Components Palette” or “New Page” windows is constricted by other content because she must click on the “New” or “Widget” tool bar buttons to make the either window visible again. Accordingly, the Visual DHTML reference does not disclose window elements that act independently of other content and thus fail to disclose window objects as defined by the patents in suit.

The Court is unpersuaded by CA’s argument that “when a window element in [the] ... Visual DHTML [reference] ... opens or ‘restores,’ that act only depends on its own content — the change to its own ‘visibility’ attribute — and not on ‘other content.’ ” (CA’s Supp. Reply at 4.) While the “visibility” attribute is not other content because it is directly associated with and cannot be separated from its associated window element in the Visual DHTML reference, it is clear that the separate and distinct tool bar region of the Visual DHTML reference is other content. Indeed, as the Special Master correctly pointed out, the tool bar is other content, a distinct region of the Visual DHTML reference’s content manifestation environment.

(See

R & R at 163-65.) As the Court noted in its discussion of CA’s objections regarding whether the Meininger reference satisfied the acts independently requirement, the distinction between the

visible

tool bar and the

invisible

window element, which must be restored with the use of other content, is further proof that window elements in the Visual DHTML reference fail to act independently of other content.

See supra

§ I.B.5.b.(1).(a), at 230-31. Having determined that the Visual DHTML reference does not disclose window objects, the Court now turns to whether it satisfies the solely contained within requirement.

(2) The Visual DHTML Reference Satisfies the Solely Contained Within Requirement

Window elements in the Visual DHTML reference remain solely contained within their content manifestation environments

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as required by element ID of the '493 Patent. Simple argues that the Visual DHTML reference fails to teach the solely contained within requirement of element ID of the '493 Patent because window elements can be dragged entirely outside their content manifestation environments. (Simple’s Response To CA’s Objections at 9-10.) However, an analysis of the source code behind the Visual DHTML reference proves otherwise.

When a user tries to move a window element in the Visual DHTML reference more than five pixels outside its content manifestation environment, the window element being dragged is hidden and a new “operating-system-level window” is opened outside the web browser hosting the Visual DHTML reference. (Second Goodman Supp. Decl. ¶¶ 22-25.) This is significant because a window element within the content manifestation environment of the Visual DHTML reference is distinguishable from a separate “operating-system-level window.” An “operating-system-level window” is actually a separate web browser such as Netscape’s Navigator or Microsoft’s Internet Explorer. Accordingly, while a web browser (an “operating-system-level window”) can contain multiple window elements, a window element cannot contain an operation level web browser.

The following excerpt from the Second Goodman Supplemental Declaration explains how the source code behind the Visual DHTML reference implements this behavior.

21. I have repeatedly referenced the cDrag() function (Bates CA10027701002771) as the central code that controls dragging (moving) window objects in Visual DHTML.... The source code for that function is as follows:

function cDrag(e) {

var x = window.innerWidth;

var y = window.innerHeight;

if (e.pageX > -5

& e.pageY > -5

e.pageX < x &

e.pageY < y) {

d.cDragLayer.moveBy (e.pageXd.offX, e.pageY-d.offY);

} else {

if(d.cDragLayer.that.dialogMorph)

{

cDragEnd(e);

dialogWinMorph(e, this);

}

d.offX = e.pageX;

d.offY = e.pageY;

d.dragged = true;

}

21. The cDrag () function simply moves a window object (inside the CME) to a coordinate associated with a mouse-move event.

As long as the coordinate is either inside the visible portion of the CME or no more than fíve pixels beyond those dimensions, the window object is simply moved to that new position. But if the event coordinate is outside that space, and the window object is one that is designed to be “morphed”

(as the “New Page” and “Components Palette” window objects are),

the function invokes two additional functions, cDragEnd ()

and dialogWinMorph().

23.

Among the tasks of the cDragEnd () function (CA1002771-1002772) is one that hides the window object be

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ing dragged. That is to say, the window object inside the CME is merely hidden, as if a user had clicked the upper right button to minimize it.

24. The dialogWinMorph () function (CA1002771) uses a built-in method of all scriptable browsers (window, open ()) to

create a new operating-system-level window outside of the CME

.... In the process of creating that window, the function also copies the contents of the hidden window object inside the CME to the newly created browser window outside of the CME.

25. Therefore, a person of ordinary skill in the art could clearly understand from the source code of Visual DHTML that window objects initially created inside the CME remain inside the CME, while other program code creates a completely separate, operating-system-level window outside of the CME when the user attempts to drag a window object beyond the five pixel margin of the CME.

(Second Goodman Supp. Decl. at 9-10 (emphasis added).) The resultant new “operating-system-level” web browser is not a window element, and is not contained within the web browser hosting the Visual DHTML reference content manifestation environment. The original window element, that was being dragged, although invisible, remains solely contained within its content manifestation environment.

In view of the foregoing, it is clear that the “Components Palette,” “New Page,” are never actually removed from their content manifestation environment. Rather, they are hidden as soon as the user tries to move them more than five pixels outside the content manifestation environment of the Visual DHTML reference. (Second Goodman Supp. Decl. ¶¶ 22-25.) After the window element being dragged is hidden, a new “operating-system-level window” is opened outside the browser featuring the Visual DHTML reference. (Second Goodman Supp. Decl. ¶ 24.) As such, the Court concludes that the Visual DHTML reference anticipates the solely contained within requirement. The focus now shifts to the without refresh requirement.

(8) The Visual DHTML Reference Satisfies the Without Refresh Requirement

An analysis of the DHTML technology underlying the Visual DHTML reference as well as the First Goodman Supplemental Declaration clearly demonstrate, with no genuine issue of material fact, that a user can move and minimize window elements within the content manifestation environment of the Visual DHTML reference without requiring a refresh of content from the web cache. The Court will first turn to an explanation of the technology underlying the Visual DHTML reference.

Not surprisingly, the Visual DHTML reference is built upon DHTML technology. This is critical because the only way to initiate a “refresh” in DHTML enabled web browsers was through an explicit command such as calling the “locatiomreload ()” java method in an application’s source code. (Goodman Invalidity Decl. ¶ 110.) The source code behind the Visual DHTML reference bears no indication of any such explicit refresh command based on the movement, minimization or refreshing of a window element in its content manifestation environment. (CA’s Objections at 18;

see also

Dkt. No. 332-10 (CA 1002765-73).) Indeed, as the following excerpt shows, DHTML scripting used in 1998 and 1999 “enabled users to drag elements around ... or resize ... [them]” without having to refresh content. (Goodman Invalidity Rpt. at 17.)

Although the Netscape Navigator 4 browser was unable to modify some

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style properties, both it and Internet Explorer 4 were able to get and set style properties related to positioned elements. Therefore, by virtue of the object models automatically provided to Web authors in those browsers,

scripts were capable of adjusting position, size, visibility, cropping, and stacking order of any positioned element

(whether or not scripts actually used those properties). Changes occurred in real time, just as in other application programs.

The browser’s contents did not have to be reloaded or refreshed to change an element’s position, size, visibility, cropping, stacking order, or contents.

In concert with mouse events, scripters enabled users to drag elements around the page or resize elements by as much or as little as the user wished.

(Goodman Invalidity Rpt. at 17.)

The First Goodman Supplemental Declaration reinforces the foregoing analysis of the Visual DHTML reference source code. As he did with the Meininger reference, Goodman detailed a step by step process which clearly and convincingly showed that window elements could be minimized and moved within the Visual DHTML reference’s content manifestation environment without requiring a refresh from the web cache. (First Goodman Supp. Decl. at 31-37.) Goodman’s proof consisted of the following steps:

(1) clearing the local cache of all relevant files;

(2) disconnecting the client computer from the Internet;

(3) moving the “Components Palette” and “New Page” window elements within the content manifestation environment of the Visual DHTML reference;

(4) minimizing the “Components Palette” and “New Page” window elements; and

(5) showing that the client computer had an empty cache before, during and after these functions were being performed.

{Id.; see also

Goodman Invalidity MSJ Decl. ¶ 110; Goodman Invalidity Decl. ¶ 110; Goodman Invalidity Rpt. at 17, 31, 32.) In light of the foregoing, the Court finds that CA has clearly and convincingly demonstrated that the Visual DHTML reference satisfies the without refresh requirement of element II of the '493 Patent. Having discussed the parties objections, the Court will issue its rulings.

5. The Court’s Rulings Regarding the Visual DHTML Reference

The Court grants Simple’s motion for summary judgment dismissing CA’s anticipation defense, as it pertains to the Visual DHTML reference because no reasonable jury could find that the Visual DHTML reference discloses the acts independently requirement. Due to the fact that every claim in the '493, '563, and '882 Patents requires a window object that acts independently of other content, the record evidence bears no indication that the Visual DHTML reference can anticipate any of the claims at issue. The Court does however grant CA’s objections to the Special Master’s recommendation that Visual DHTML reference does not disclose the solely contained within and without refresh requirements of elements ID and II of the '493 Patent. The focus now shifts to the parties’ objections regarding the JavaScript Bible.

D. The JavaScript Bible

In addressing the parties’ objections, as they relate to the JavaScript Bible, the Court will first provide an overview of the

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JavaScript Bible. The Court will then summarize the Special Master’s pertinent recommendations as well as the parties’ corresponding objections. Finally, the Court will put forth its own analysis and ruling. In that analysis, the Court will begin by determining whether the JavaScript Bible is enabling prior art. Next, the Court will address whether any of the claims of the '493, '563, and '882 Patents are anticipated by the JavaScript Bible. That discussion will entail: (1) determining which source code listings in the JavaScript Bible disclose a window object; (2) comparing the independent claims of the patents in suit to determine if there is any analytical overlap between them, for purposes of an anticipation determination; and (3) conducting an element by element analysis of the independent claims of the patents in suit in order to determine if they are anticipated by the JavaScript Bible. In view of its conclusion that the JavaScript Bible anticipates a content manifestation environment with a single window object, the Court’s analysis will, of necessity, address the claims found in the '563 and '882 Patents.

1. Overview of the JavaScript Bible

The JavaScript Bible, third edition, is a 1,015 page reference manual for JavaScript version 1.2 written by Mr. Goodman, CA’s expert witness. (R

R at 177; Simple’s Objections at 13.) The JavaScript Bible discloses various content manifestation environments featuring Netscape layer elements. According to CA, chapters one and nineteen anticipate the patents in suit. (R & R at 177.) As such, the Court’s references to the JavaScript Bible are confined to the disclosure of chapters one and nineteen.

Goodman explained and executed the various source code listings found in chapter 19 of the JavaScript Bible, which CA claims anticipate the patents in suit. The Court will detail each of the relevant listings in its analysis below. Generally speaking though, the source code examples in chapter 19 of the JavaScript Bible teach one skilled in the art to make web pages that employ certain features enabled by using the JavaScript programming language, in combination with the web browsers commonly utilized at the date of its publication, to create content manifestations environments featuring Netscape layer elements. What follows is a summary of the Special Master’s recommendations which have been objected to.

2. The Special Master’s Recommendations

Overall, the Special Master found that the JavaScript Bible was eligible as prior art but there were material issues of fact as to whether it anticipated the patents in suit.

a. The Special Master Found that the JavaScript Bible was Eligible Prior Art

The Special Master found that the JavaScript Bible qualified as prior art because its Copyright certificate provided prima facie evidence that it “was first published or distributed on March 3, 1998.” (R

R at 180.) He also noted that, Simple failed to put forth any evidence to contradict this finding.

(Id.

at 180-81.) Having established that the JavaScript Bible was available prior to the filing date of the '493 Patent, January 21, 1999, the Special Master addressed whether it enabled one skilled in the art to practice the subject matter claimed in the '493, '563, and '882 Patents.

(Id.

at 181-94.)

After conducting a detailed analysis, the Special Master found it was “clear ... that the [JavaScript Bible] ... is enabled at least for what it discloses,

i.e.,

to at least the extent of the scripts and supporting text.”

(Id.

at 193-94.) In support of his

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conclusion, the Special Master pointed out the undisputed fact that Goodman was able to execute the source code “scripts” disclosed within the JavaScript Bible and then manipulate the resulting content manifestation environments. (R & R at 181-93.) The Court now turns to the Special Master’s analysis of whether the JavaScript Bible anticipates the patents in suit.

b. The Special Master Found that there was a Genuine Issue of Material Fact as to Whether the JavaScript Bible Anticipates the Patents In Suit

Although the Special Master found that the JavaScript Bible disclosed elements 1A, IB, 1C, IE, IF, 1G and 1 H of the '493 Patent, he found genuine issues of material fact regarding the window objects and without refresh requirements of elements ID and II respectively.

(Id.

at 194-205.)

According to the Special Master, CA failed to demonstrate that any of the “layers — which Mr. Goodman views as the claimed ‘window objects’ — in the screen-shots resulting from the [source code] scripts [disclosed in the JavaScript Bible] may ‘act independently of other content within a[n] ... HTML document.’ ” (R

R at 197-98.) In particular, the Special Master found that CA was unable to meet its burden of proof in attempting to “describe how” window elements in the JavaScript Bible act with respect to “other content.” (Id. at 198.)

Further, although the Special Master found that the JavaScript Bible clearly disclosed window elements that could be “manipulated without retrieving information from the server,” he recommended that CA failed to meet its burden of proof regarding whether manipulating the window elements in the Java Script Bible triggered a refresh from the “local” computer. (Id at 203-04.) In his analysis, the Special Master made note of the fact that the ability to trigger a refresh in some of the source code listings disclosed by the JavaScript Bible was determined by code settings chosen by the programmer. (Id at 204.) The Special Master also cited the following excerpt from Chapter 19 of the JavaScript Bible.

As you experiment with the different feel for resizing and redrawing behavior, you will see that redrawing during resizing is a slow process due to the repetitive loading (from cache) needed each time. On slower client machines, it is easy for the cursor to outrun the layer region, causing the layer to not get mouseOver events at all. It may not be the best-looking solution, but I prefer to redraw after resizing the layer.

(Dkt. No. 332-25, at CA 1085580 (“JavaScript Bible”).) It appears that the Special Master interpreted this passage to mean that when a layer element disclosed in the JavaScript Bible is redrawn or resized, it relies on “repetitive loading” from the local cache.

Having found a genuine issue of material fact as to whether the JavaScript Bible disclosed window objects, or the “without refresh” requirement of element II of the '493 Patent, the Special Master recommended that the Court deny CA’s motion for summary judgment of anticipation, re

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garding the JavaScript Bible. The Court will now summarize the parties’ objections.

3.Simple’s Objections

Simple’s objections focus on three issues: (1) the eligibility of the JavaScript Bible as enabled prior art; (2) whether the JavaScript Bible discloses “control sections” as described in the patents in suit; and (3) the Special Master’s summary judgment standard. (Simple’s Objections at 13-15; Simple’s Supp. Reply at 14-16.) According to Simple, finding that the JavaScript Bible is enabling “is no different than saying that a dictionary would enable an author of ordinary skill to write a novel like

The Great Gatsby,

because it discloses all of the words used by F. Scott Fitzgerald.” (Simple’s Objections at 13.) In other words, Simple asserts that CA has not met its burden of clearly and convincingly showing that the JavaScript Bible offers sufficient guidance to enable one skilled in the art to practice the subject matter claimed in the patents in suit. (Simple’s Supp. Reply at 14-15 (citing

Aspex Eyewear, Inc. v. Concepts in Optics, Inc.,

111 Fed.Appx. 582, 589 (Fed.Cir.2004);

Amgen Inc. v. Hoechst Marion Roussel, Inc.,

314 F.3d 1313, 1355 (Fed.Cir.2003)).) Simple also argues that, while “the Special Master recognized that the JavaScript Bible does not disclose” the “ ‘solely contained within,’ ‘window objects’ and ‘without refresh’ limitations” of the patents in suit, “he failed to recognize that it also does not disclose a ‘control section.’ ” (Simple’s Supp. Reply at 16.) Finally, Simple argues that their motion for summary judgment should be granted because CA has not show by clear and convincing evidence, that the JavaScript Bible discloses every element of the patents in suit.

4.CA’s Objections

According to CA, the Special Master incorrectly found genuine issues of material fact where none exist because the JavaScript Bible anticipates the patents in suit.

{See

CA’s Objections at 11-14, 19-22.) Specifically, CA objects to the Special Master’s recommendation that there were genuine issues of material fact as to whether the JavaScript Bible clearly teaches and embodies: (1) window elements that act independently of other content and (2) the without refresh requirement of element II of the '493 Patent.

5.The JavaScript Bible is Enabling Prior Art

As a preliminary matter, the Court must determine whether the JavaScript Bible is enabling prior art.

a. Legal Standard

In order to anticipate claimed subject matter under Section 102 of the Patent Act, “a prior art reference must be enabling so that the claimed subject matter may be made or used by one skilled in the art.”

Impax Labs., Inc. v. Aventis Pharms., Inc.,

468 F.3d 1366 , 1382 (Fed.Cir.2006) (citations omitted). In essence, the prior art reference “must sufficiently describe the claimed invention to have placed the public in possession of it.”

In re Donohue,

766 F.2d 531, 533 (Fed.Cir.1985). The public is in possession of a claimed invention “if one of ordinary skill in the art could have combined the publication’s description of the invention

with his own knowledge

to make the claimed invention.”

Id.

(emphasis added). Although disclosures in prior art patents are presumed to be enabled, an alleged infringer must show that non-patent prior art references enable the claimed invention.

See Amgen,

314 F.3d at 1355 .

It is important to recognize that the enablement requirements of Sections 102 and 112 of the Patent Act differ.

See Impax Labs.,

468 F.3d at 1382. While the more stringent requirements of Section 112 mandate that a patent specification

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“enable one skilled in the art to

‘use’

the invention,” the enablement standard of Section 102 does not require actual performance.

Novo Nordisk Pharm., Inc. v. Bio-Technology Gen. Corp.,

424 F.3d 1347, 1355 (Fed.Cir.2005) (citations omitted) (emphasis added). Indeed, it is not even necessary that “an invention disclosed in a publication” have actually “been made in order to satisfy the enablement requirement” of Section 102.

Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc.,

246 F.3d 1368 , 1379 (Fed.Cir.2001);

see Novo Nordisk Pharm.,

424 F.3d at 1355 (“ ‘[A]nticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabled to one of skill in the art.’ ”).

If one skilled in the art must perform unduly extensive experimentation to produce the claimed subject matter, the prior art reference in question is not anticipatory.

See Novo Nordisk Pharm.,

424 F.3d at 1355 (citing

SmithKline Beecham Corp. v. Apotex Corp.,

403 F.3d 1331, 1343 (Fed.Cir.2005));

PPG Indus. v. Guardian Indus. Corp.,

75 F.3d 1558, 1564 (Fed.Cir.1996). However, even a considerable amount of experimentation is not unduly extensive if it is merely routine for the art in question.

In re Wands,

858 F.2d 731, 737 (Fed.Cir.1988). Rather, courts should analyze the following factual considerations when determining whether the level of experimentation is unduly extensive;

“(1) the

quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”

Warner-Lambert Co. v. Teva Pharms. USA, Inc.,

418 F.3d 1326, 1337 (Fed.Cir.2005) (citing

Wands,

858 F.2d at 737 ).

Having articulated the relevant legal standard, the Court will determine whether the JavaScript Bible is sufficiently enabling.

b. The JavaScript Bible Clearly Enables the Scripts and Supporting Text Contained Therein

The Special Master Correctly found that the JavaScript Bible enables the subject matter it discloses, “to at least the extent of the scripts and supporting text.” (R & R at 193-94.) To wit, chapters one and nineteen of the JavaScript Bible disclose source code that would allow one skilled in the art to create a content manifestation environment with multiple Netscape layer elements, tiled Netscape layer elements or Netscape layer elements that can be moved, resized, or minimized without requiring a refresh from the server. (Dkt. No. 332, Attachs. 25-35; Goodman Invalidity MSJ Decl. ¶¶ 136-47.)

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However, as discussed below, it is not clear that the JavaScript Bible enables a combination of the foregoing embodiments in one content manifestation environment.

See generally Connell,

722 F.2d at 1548 ;

Net MoneyIN, Inc. v. VeriSign, Inc.,

545 F.3d 1359, 1371 (Fed.Cir.2008).

An analysis of the factual considerations laid out in

Wands

shows that the JavaScript Bible is, as the Special Master found, enabled “at least the extent of the scripts and supporting text.”

(See

R & R at 194.) Specifically, the evidence before the Court indicates that: (1) one skilled in the art would not have to perform a great deal of experimentation to create the content manifestation environments disclosed in the JavaScript Bible because chapter nineteen expressly provides the necessary source code; (2) considering the nature of software and the technology associated with the patents in suit as well as the state of the prior art and its skill level, one skilled in the art could easily implement source code listings in the JavaScript Bible and then determine whether she has successfully constructed the embodiments described therein,

see

note 31

supra,

and (3) the level of predictability in the field would make it easy for one skilled in the art to determine whether she has written software code which spanned the breath of the subject matter claimed in the '493, '563, and '882 Patents. Practically speaking, a computer programmer skilled in the art would only have to re-type or copy and then paste the source code found in the JavaScript Bible, as well as the CD-Rom which accompanies it, and make minor adaptations to create the subject matter disclosed therein. Having observed that the JavaScript Bible is sufficiently enabling to qualify as prior art under Section 102(a), the next task is to ascertain whether it is appropriate to combine the teachings of the source code listings disclosed therein when making an

anticipation

determination.

c. Source Code Listings in the JavaScript Bible May Not Be Combined For Purposes of an Anticipation Determination

For the reasons discussed below, when deciding whether to grant summary judgment of anticipation, the Court must evaluate each source code listing in the JavaScript Bible on an individual basis, rather than as a unified combination which would rearrange separate elements found within a single prior art reference.

“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention

arranged as in the claim.” Connell,

722 F.2d at 1548 (emphasis added); see

Net MoneyIN,

545 F.3d at 1371 . As the following excerpt states, prior art references which fail to describe an invention, as it is arranged in a patent claim, are better analyzed under a Section 103 obviousness inquiry.

The [lower court] opinion says anticipation may be shown by less than “complete anticipation” if one of ordinary skill may in reliance on the prior art “complete the work required for the invention”, and that “it is sufficient for an anticipation

‘if the general aspects are the same and the differences in minor matters is only such as would sugyest itself to one of ordinary skill in the art.’” Those statements relate to obviousness, not anticipation. Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim. Soundscriber Corp. v. U.S.,

[ 175 Ct.Cl. 644 ] 360 F.2d 954, 960 , 148 U.S.P.Q. 298 , 301 (Ct.Cl.1966). A prior

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art disclosure that “almost” meets that standard may render the claim invalid under § 103; it does not “anticipate.”

Connell, 722

F.2d at 1548 (emphasis added);

Net MoneyIN,

545 F.3d at 1371 . Interestingly, the Federal Circuit recently clarified its interpretation of the phrase “as arranged in the claim” and helped identify the difference between anticipation and obviousness inquiries in

Net MoneyIN,

545 F.3d at 1368-71 .

One of the claims at issue in

Net MoneyIN,

claim 23 of U.S. Patent No. 5,822,737 (the “'737 Patent”) was directed to an “Internet payment system comprising five ‘links.’ ”

Id.

at 1368-69 (quoting claim 23 of the '737 Patent). The district court found that Claim 23 was anticipated because all five links were disclosed in two separate examples found in the relevant prior art reference (“the iKP reference”). The Federal Circuit reversed and in explaining why, stressed the importance of linking and utilizing the elements in a pri- or art reference as they are in the claimed invention.

See Net MoneyIN,

545 F.3d at 1369-71 .

According to

Net MoneyIN,

“the hallmark of anticipation is

prior inven

tion”

Id.

at 1369 (citing

Connell,

722 F.2d at 1548 ) (emphasis added). In particular, the

Net MoneyIN

court stressed that, “the ‘arranged as in the claim’ requirement ... refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order.”

Id.

at 1370. The Federal Circuit went on to expressly warn against treating patent “claims as mere catalogs of separate parts” without regard for the “part-to-part relationships set forth” therein.

Id.

(quoting

Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co.,

730 F.2d 1452, 1459 (Fed.Cir.1984)). As stated in

Net MoneyIN,

this “part-to-part” relationship defines the essence of an invention.

Net MoneyIN,

545 F.3d at 1370 (quoting

Lindemann,

730 F.2d at 1459 .) Accordingly, the bright line rule from

Net MoneyIN

is that unless a prior art reference discloses “all of the limitations” in a patent claim “arranged or combined in the same way as recited in the claim,” it fails to “prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102 .”

Id.

at 1371 ;

see also id.

at 1370-71 (stating that

Lindemann,

730 F.2d 1452 ;

Ecolochem, Inc. v. Southern California Edison Co., 227

F.3d 1361 (Fed.Cir.2000) and

Finisar,

523 F.3d at 1334 -37 all required that a “prior art reference ... show the claimed invention arranged or combined in the same way as recited in the claim in order to anticipate.”).

As a result, although the iKP reference described two protocols, which when taken together, disclosed all five links recited in claim 23 of the '737 Patent, it did not “anticipate the system” claimed therein. Net

MoneyIN,

545 F.3d at 1371 . Rather, the Federal Circuit stated that in order to find anticipation, all five links would have to be described in one single example/protocol.

Id.

In fact, the Federal Circuit went on to point out that the district court was “wrong to combine parts of the separate protocols shown in the iKP reference in concluding that claim 23 was anticipated” even though “there may be only slight differences between the protocols disclosed in the iKP reference and the system of claim 23.”

Id.

According to the Federal Circuit, “differences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.”

Id.

The case at bar is highly analogous to

Net MoneyIN.

Like the iKP reference, the JavaScript Bible contains various examples (listings) that are alleged to antici

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pate the patents in suit. Nevertheless, when making an anticipation determination, it would be inappropriate to combine multiple listings/examples of source code to meet the requirement of a single claim. Doing so would disregard the part-to-part relationship between the claim elements of the patents in suit.

Net MoneyIN,

545 F.3d at 1370 . It is also irrelevant that the listings in the JavaScript Bible may be somewhat similar in appearance to the claimed subject matter of the patents in suit because even

slight

differences between prior art and a patent claim “invoke the question of obviousness, not anticipation.”

Id.

at 1371 . Rather, the essence of subject matter claimed in the '493, '563, and '882 Patents is the way it combines and arranges various elements already found in the prior art to make a content manifestation environment featuring window objects. At this point, an example may be helpful.

If listing 19-11 of the JavaScript Bible discloses a content manifestation environment featuring one window object and listing 19-12 discloses a content manifestation environment that also features just one window object, the JavaScript Bible cannot necessarily be said to anticipate a content manifestation environment with multiple window objects, as required by element ID of the '493 Patent. Rather, in this instance, the JavaScript Bible does not

anticipate

claim 1 of the '493 Patent because it does not disclose every element as arranged in the patent claim, namely a content manifestation environment featuring multiple window objects. In sum, if a single listing in the JavaScript Bible does not disclose every element of a claim as arranged in the patents in suit, the JavaScript Bible cannot be said to “prove prior invention of the thing claimed.”

Id.

Having determined the degree to which the JavaScript Bible is enabled, the focus now turns to determining whether the JavaScript Bible anticipates any of Simple’s asserted claims.

6. The JavaScript Bible Anticipates Some of the Claims in the '563 and '882 Patents

Having determined that the JavaScript Bible is enabling prior art, the Court will now address whether it discloses: (1) a window object that acts independently of other content; (2) the without refresh and solely contained within requirements; and (3) a control section.

a. The JavaScript Bible Discloses a Window Object that Acts Independently of Other Content

The record evidence shows that the JavaScript Bible discloses the acts independently requirement of the patents in suit. CA offers an explanation of the source code and DHTML technology disclosed in the JavaScript Bible as proof that the JavaScript Bible discloses window objects. (CA’s Objections at 11-13.) First, CA correctly points out that the layer elements disclosed in the JavaScript Bible “are implemented using Netscape’s ‘layer’ element with ‘methods of absolute-positioned layers.’ ”

(Id.

at 12.) Accordingly, these layer elements each exist on their “own physical plane.”

(Id.)

As shown in the following excerpt, layers disclosed in JavaScript Bible must be specifically programmed to depend on other content, otherwise their behavior will not be constrained by other content.

A person of ordinary skill in the art ... would know that unless explicitly programmed to act otherwise, a Dynamic HTML absolute-positioned element can be relocated to any coordinate position (x, y or left, top) in a Content Manifestation Environment (CME).... [T]here is no built-in or automatic “collision detection” mechanism that prevents an abso

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lute-positioned element from being repositioned at any location within the CME,

regardless of what other content may exist in the plane of the main document or what other absolute positioned elements may be stacked in front of, or behind, a given absolute-positioned element

By ‘repositioned,’ I mean not only temporarily located during, say, a drag operation, but also left in a new position after the user has released the mouse button of the drag operation (i.e., ‘dropped’

This text is long and has been trimmed here. Open the source document for the complete record.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.