# Volterra Semiconductor Corp. v. Primarion, Inc.

> District Court, N.D. California · May 4, 2011 · 796 F. Supp. 2d 1025

URL: https://www.frixlaw.com/law-library/cases/2181625

## Case

- **Full name:** VOLTERRA SEMICONDUCTOR CORPORATION, Plaintiff, v. PRIMARION, INC., Et Al., Defendants
- **Court:** District Court, N.D. California
- **Decided:** May 4, 2011
- **Citations:** 796 F. Supp. 2d 1025; 2011 U.S. Dist. LEXIS 49574; 2011 WL 2559612
- **Precedential status:** Published
- **Opinion:** Opinion by Spero
- **Judges:** Joseph C. Spero
- **Cited by:** 8 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/2181625

## How later opinions describe it (automated extraction)

- declining on summary judgment to strike assertedly inadmissible expert reports; observing that, even if reports had not been sworn, plaintiff had “remedied any deficiency by providing a sworn declaration by [the expert] with all of the challenged reports attached”

## Opinion text

ORDER RE SUMMARY JUDGMENT MOTIONS [Docket Nos. 906-914, 916, 924-925]
REDACTED VERSION
JOSEPH C. SPERO, United States Magistrate Judge.
I. INTRODUCTION
On November 12, 2008, Plaintiff Volterra Semiconductor Corporation (“Volterra”) filed a complaint alleging infringement and contributory infringement by Defendants (“Primarion”) of the following patents: 1) U.S. Patent No. 6,278,264 (the “'264 patent”); 2) U.S. Patent No. 6,462,522 (the “'522 patent”); 3) U.S. Patent No. 6,713, -823 (the “'823 patent”); 4) U.S. Patent No. 6,020,729 (the “'729 patent”); and 5) U.S. Patent No. 6,225,795 (the “'795 patent”). Twelve summary judgment motions (“the Motions”) are presently before the Court, which address the following issues relating to the '264 and '522 patents (“the Burstein Patents”):
1) whether the accused products infringe claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent;
1
2) whether claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent are anticipated by U.S. Patent No. 5,945,730 (“Sicard” or “the Sicard Patent”), or rendered obvious by Sicard, either by itself or in combination with other prior art;
2
3) whether claims 9, 11 and 16-19 of the '522 patent are anticipated by a 1994 article by Anthony Stratakos entitled
*1036
“A Low-Voltage CMOS DC-DC Converter for a Portable Battery-Operated System” (“Stratakos 1994 Article”), or rendered obvious by the Stratakos 1994 Article, either by itself or in combination with other pri- or art;”
3
4) whether certain references cited by Defendants in connection with their anticipation and obviousness defenses qualify as prior art;
4
5) whether Defendants should be precluded from relying on certain prior art references and on-sale bar theories that Volterra alleges were not timely disclosed;
5
6) whether claims 26 and 34 of the '264 patent and claims 9, 11, 16-19 and 22 and 24 of the '522 patent are invalid for lack of a written description or lack of enablement because the Bur-stein Patents do not adequately disclose: a) voltage regulators in which the output voltage can be adjusted while in operation; b) voltage regulators that use LDMOS transistors; and c) certain electrical connections that are not illustrated in the specification;
6
7) whether the asserted claims are invalid because the claim term “power switch” is indefinite;
7
8) whether Plaintiff engaged in inequitable conduct in connection with prosecution of the '264 or '522 patents or during the reexamination proceedings;
8
9) whether any of the asserted claims of the '264 or '522 patents are invalid due to public use of the claimed invention more than a year before filing for the Burstein Patents, in violation of the on-sale bar under 35 U.S.C. § 102 (b);
9
10) whether Volterra has standing to assert infringement of the Burstein Patents.
10
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The parties have consented to the jurisdiction of the undersigned United States magistrate judge pursuant to 28 U.S.C. § 636 (c). Hearings on the Motions were held on December 10, 2010 and January 21, 2011.
II. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). Summary judgment must be supported by “facts as would be admissible in evidence.” Fed.R.Civ.P. 56(e). In order to prevail, a party moving for summary judgment must show the absence of a genuine issue of material fact with respect to an essential element of the non-moving party’s claim, or to a defense on which the non-moving party will bear the burden of persuasion at trial.
Celotex Corp. v. Catrett,
477 U.S. 317, 323 , 106 S.Ct. 2548 , 91 L.Ed.2d 265 (1986). Further,
“Celotex
requires that for issues on which the movant would bear the burden of proof at trial, that party must show affirmatively the absence of a genuine issue of material fact,” that is, “that, on all the essential elements of its case on which it bears the burden of proof at trial, no reasonable jury could find for the non-moving party.”
Fitzpatrick v. City of Atlanta,
2 F.3d 1112, 1116 (11th Cir.1993). Once the movant has made this showing, the burden then shifts to the party opposing summary judgment to designate “specific facts showing there is a genuine issue for trial.”
Celotex,
477 U.S. at 323 , 106 S.Ct. 2548 . On summary judgment, the court draws all reasonable factual inferences in favor of the non-movant.
Anderson v. Liberty Lobby Inc.,
477 U.S. 242, 255 , 106 S.Ct. 2505 , 91 L.Ed.2d 202 (1986).
III. EVIDENTIARY OBJECTIONS
As the Court may consider only admissible evidence in ruling on the summary judgment motions, it turns first to the parties’ evidentiary objections.
Defendants have filed objections to evidence cited by Plaintiff in support of: 1) Plaintiffs summary judgment motions (Docket No. 1085); and 2) Plaintiffs briefs in Opposition to Defendants’ summary judgment motions (Docket No. 1124).
11
Plaintiff, in turn, has filed objections to evidence cited by Defendants in support of: 1) Defendants’ summary judgment motions (Docket No. 1181); 2) Defendants’ briefs in Opposition to Plaintiffs summary judgment motions (Docket No. 1154); and 3) Defendants’ Reply briefs (Docket No. 1177).
The Court rules on these objections below.
A. Defendants’ Objections 1. Objections to Evidence Offered in Support of Plaintiffs Summary Judgment Motions (Docket No. 1085)
Defendants object to Volterra’s reliance on dictionary definitions of the words “layer” and “bump” in Dr. Szepesi’s July 14, 2010 invalidity report, arguing that this extrinsic evidence was not timely disclosed under Patent Local Rule 4-3.
See
Defendants’ Objections to Certain Information Offered in Support of Volterra’s Motions for Summary Judgment (Docket No. 1085)
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(“Defendants’ Objections (Volterra SJ Motions)”) at 1-2 (citing Rebuttal Expert Report of Dr. Thomas Szepesi Regarding Validity of U.S. Patent Nos. 6,278,264 and 6,462,522 (“Szepesi 7/14/10 Rebuttal Report on Invalidity”), ¶¶ 94-95). In addition, Defendants object to Volterra’s reliance on expert reports by Dr. Szepesi that they assert were not properly sworn.
Id.
at 2-3.
Volterra responds that the reliance of its expert on dictionary definitions that were not included in its Rule 4-3 disclosures does not violate that rule, which governs evidence cited to support a party’s claim construction position, because the definitions are offered by Dr. Szepesi to support an argument relating to validity.
See
Volterra Semiconductor Corporation’s Opposition to Defendants’ Objections to Certain Information Offered in Support of Volterra’s Motion for Summary Judgment (Docket No. 1178) (“Volterra’s Response to Defendants’ Objections (Volterra SJ Motions)”) at 1. As to Defendants’ objection that Dr. Szepesi’s reports were not properly sworn, Volterra argues that all of Dr. Szepesi’s reports were properly sworn and that in any event, the argument is moot because Volterra has filed a supplemental declaration by Dr. Szepesi that is sworn under penalty of perjury and has all of his expert reports attached.
Id.
at 1-3.
The Court overrules both objections,
a. Dictionary Definitions of “Layer” and “Bump”
Under Patent Local Rule 4-3, parties are required to disclose any dictionary definitions upon which they intend to rely in support of their proposed claim constructions not later than 60 days after service of the Invalidity Contentions. As Dr. Szepesi relies on the dictionary definitions to which Defendants object in support of his opinions on invalidity, rather than claim construction, this evidence is outside the ambit of Patent Local Rule 4-3. Further, as discussed below, to the extent that Dr. Szepesi’s opinions concerning the meaning of the word “layer” as applied to Sicard may have implications as to infringement, the Court does not find that the dictionary definitions offered by Dr. Szepesi on this question constitute an improper attempt to amend the Court’s claim construction. Rather, the Court concludes that Dr. Szepesi is merely addressing what the Court’s claim construction
means
as to the word “layer” — a term that, prior to summary judgment, did not appear to be a subject of controversy. The Court overrules Defendants’ objection.
b. Szepesi Reports
Defendants assert that the Court should not consider the expert reports of Dr. Szepesi because they are not admissible evidence, citing the rule that “[u]n-sworn expert reports prepared in compliance with Rule 26(a)(2) do not qualify as affidavits or otherwise admissible evidence for purpose of Rule 56, and may be disregarded by the court when ruling on a motion for summary judgment.” Defendants’ Objections (Volterra SJ Motions) at 3 (quoting
Smith v. City of Oakland,
2007 WL 2288328 , at *3-4, 2007 U.S. Dist. Lexis 59941, at *9-10 (N.D.Cal. Aug. 9, 2007)). Defendants also cite
King Tuna, Inc. v. Anova Food, Inc.,
2009 WL 650732 , at *1-2, 2009 U.S. Dist. LEXIS 22901 , at *3-4 (C.D.Cal. Mar. 10, 2009) for the same rule.
Id.
Defendants’ objection fails for two reasons.
First, both
Smith
and
King Tuna
are distinguishable from the facts here in that the reports in those cases were not, in fact, sworn. Here, in contrast, all of the challenged reports end with the statement, “I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.” Nor does either of these cases require that
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expert reports must be sworn in a
separate
declaration by the expert, as Defendants appear to suggest.
Second, even assuming Defendants were correct, Volterra has now remedied any deficiency by providing a sworn declaration by Dr. Szepesi with all of the challenged reports attached.
See Maytag Corp. v. Electrolux Home Products, Inc.,
448 F.Supp.2d 1084, 1064 (N.D.Iowa, 2006) (holding that “subsequent verification or reaffirmation of an unsworn expert’s report, either by affidavit or deposition, allows the court to consider the unsworn expert’s report on a motion for summary judgment”).
The Court overrules Defendants’ objection.
2. Objections to Evidence Offered in Support of Plaintiffs Opposition Briefs (Docket No. 1124)
Defendants object to portions of declarations by Drs. Szepesi and Lidsky filed by Volterra in support of its Opposition briefs, as well as to exhibits attached to Dr. Szepesi’s declaration. Defendants’ Objections to Evidence in Support of Volterra Semiconductor Corporation’s [Opposition to Defendants’] Motions for Summary Judgment (Docket No. 1124) (“Defendants’ Objections (Volterra Oppositions)”). First, Defendants assert that the opinions expressed in paragraphs 36-45 and 64 of Dr. Szepesi’s opposition declaration are new opinions that were not timely disclosed and that the documents attached as Exhibits A through C were not timely disclosed or. produced.
Id.
(citing Rebuttal Expert Declaration of Dr. Thomas Szepesi in Support of Volterra’s Opposition to Defendants’ Motion for Summary Judgment (Docket No. 1075) (“Szepesi 9/10/10 Opposition Decl.”)). Second, Defendants object to paragraph 12 of the Declaration of David Lidsky in Support of Volterra Semiconductor Corporation’s Opposition to Defendants’ Motions for Summary Judgment of Invalidity (Docket No. 971) (“Lidsky 9/10/10 Opposition Deck”), in which Dr. Lidsky states that Volterra’s products practice the inventions of the Burstein Patents and contain all of the elements of the claims that are currently at issue. Defendants argue that Dr. Lidsky’s opinion lacks foundation because Volterra has not provided technical documents about its products to back up Dr. Lidsky’s statement.
Volterra responds that the documents attached to Dr. Szepesi’s declaration as Exhibits A through C are admissible because: 1) the document in Exhibit A, an excerpt from the Area Array Interconnection Handbook, was disclosed by Defendants during discovery; and 2) the documents in Exhibits B and C were offered to rebut specific opinions expressed by Drs. Garrou and Fair and are permissible under Rule 26(a)(2)(C)(ii) of the Federal Rules of Civil Procedure and Civil Local Rule 7-3(a).
See
Plaintiff Volterra Semiconductor Corporation’s Opposition to Defendants’ Objections to Evidence in Support of Volterra’s Motions for Summary Judgment (Docket No. 1172) (“Volterra’s Response to Defendants’ Objections (Volterra Oppositions)”).
Volterra also rejects Defendants’ objections to what they argue are new opinions in paragraphs 36-45 and paragraph 64 of Dr. Szepesi’s declaration.
Id.
According to Volterra, the opinions to which Defendants object in paragraphs 36-45, namely, that the Stratakos 1994 Article does not disclose a flip-chip integrated circuit chip and does not teach away from flip chip, are not new. In support of this assertion, Volterra points to paragraphs 128, 140 and 142 of the Szepesi 7/14/10 Rebuttal Report on Invalidity, which Volterra asserts contain arguments that are essentially the same, if less detailed. Similarly, Volterra argues that the opinion expressed by Dr. Szepesi in paragraph 64 is not new. That
*1040
paragraph describes Figure 1 of the Bur-stein Patents as a “simplified illustration” to explain why it does not show communication lines to the controller that would provide the command to adjust the output voltage. According to Volterra, this opinion is consistent with Dr. Szepesi’s earlier opinions regarding infringement, expressed in paragraph 30 of the June 28, 2010 Opening Expert Report on Infringement of Plaintiff Volterra Semiconductor Corporations’ Expert: Dr. Thomas Szepesi (“Szepesi Opening Report on Infringement”).
As to Defendants’ assertion that Dr. Lidsky’s testimony in paragraph 12 of his declaration lacks foundation, Volterra disagrees. Volterra argues that Dr. Lidsky’s statement is supported by detailed interrogatory responses (attached as an exhibit to the Lidsky declaration) — which Dr. Lid-sky helped prepare based on his review of Volterra technical materials — and therefore, is based on personal knowledge.
Defendants’ objections are overruled,
a. Szepesi 9/10/10 Opposition Declaration
Under Civil Local Rule 7-3(a), parties are permitted to file declarations in support of opposition briefs. Further, Rule 26(a)(2)(D)(ii) requires that where expert testimony is offered “solely to contradict or rebut evidence on the same subject matter identified by another party,” that testimony must be disclosed within 30 days of the other party’s disclosure. Having reviewed the opinions and evidence to which Defendants’ object in connection with the Szepesi 9/10/10 Opposition Declaration, the Court concludes that they are admissible on the grounds that: 1) they are not new opinions (paragraphs 36-45 and 64); 2) they are submitted to rebut specific opinions expressed by Defendants’ experts in support of their summary judgment motions (Exhibits B and C); or 3) they were already disclosed by Defendants (Exhibit A). The Court notes that in determining whether an opinion is “new,” it does not require that an expert’s more recent statement must rigidly adhere to his or her original formulation. Rather, the Court compares the more recently articulated opinions to the opinions that were originally expressed to determine whether the opposing party has been given fair notice, while appreciating that in the course of litigation, the positions of the parties and their experts necessarily evolve somewhat as each attempts to respond to the arguments of the other.
b. Lidsky 9/10/10 Opposition Declaration
As discussed further below, an expert’s testimony must be supported by an adequate foundation to be admissible.
See
Fed.R. Evid. 702;
Daubert v. Merrell Dow Pharm., Inc.,
509 U.S. 579, 590 , 113 S.Ct. 2786 , 125 L.Ed.2d 469 (1993). Here, Volterra has offered expert testimony that is supported by extensive personal knowledge on the part of one of Volterra’s founders and original engineers, who states that he helped draft Volterra’s detailed interrogatory responses (provided as an exhibit to his declaration) addressing the question on which he offers testimony and that he reviewed a variety of technical documents in doing so. Defendants cite to no authority indicating that under these circumstances, an expert’s opinion lacks foundation merely because the underlying technical documents have not been provided. Nor does the Court find authority that supports such a result. The objection is overruled.
B. Plaintiffs Objections
1. Objections to Evidence Offered in Support of Defendants’ Summary Judgment Motions (Docket No. 1181)
Volterra objects on three grounds to the evidence offered by Defendants in support
*1041
of their summary judgment motions.
See
Plaintiff Volterra Semiconductor Corporation’s Objections to Evidence Submitted in Support of Defendants’ Motions for Summary Judgment Filed August 20, 2010 (Docket No. 1181) (‘Volterra’s Objections (Primarion SJ Motions)”). First, Volterra objects to numerous paragraphs of declarations by Drs. Fair and Garrou on the basis that they contain new opinions that were not timely disclosed.
Id.
12
Second, Volterra objects to Defendants’ reliance on orders and initial office actions by the Patent and Trademark Office (“PTO”) relating to reexamination requests for the Burstein Patents, arguing that they have no probative value as to the question of invalidity because they are the product of incomplete patent reexamination proceedings
Id.
13
Finally, Volterra objects to Defendants’ reliance in their summary judgment motions on prior art by Stager, Hallberg and Honn on the basis that this prior art was not listed in Defendants’ invalidity contentions, as required under Patent Local Rule 3-3.
14
Defendants respond that the Fair and Garrou statements to which Volterra objects do not contain new opinions, citing similar statements made by these experts in earlier reports. Response to Volterra Semiconductor Corporation’s Objections to Evidence in Support of Defendants’ Motions for Summary Judgment Filed August 20, 2010 (Docket No. 1127) (“Defendants’ Response to Volterra’s Objections (Primarion SJ Motions)”) at 1-9, 12. To the extent that the language of the later declarations on occasion differs from the language used previously, Defendants contend, this is merely a result of the fact that the experts are summarizing their earlier opinions.
Id.
at 12.
As to the Stager, Hallberg and Honn references, Defendants assert that Volterra’s objection should be overruled because Volterra has long been aware of this prior art. In particular, Defendants state that ‘Volterra was aware of the Stager and Hallberg references at least as early as April 26, 2010 when Primarion identified and disclosed the Stager Reference ... in Infineon AG’s Second Amended and Sup
*1042
plemental Responses to Plaintiffs Interrogatory No. 4.”
Id.
at 12;
see also
Gargano Decl., Ex. 85 at 110-112, 364-366. Defendants further assert that “Volterra was aware of the Honn reference at least as early as August 12, 2009 when Primarion submitted it as an exhibit in support of summary judgment briefing.”
Id.
at 12.
Defendants argue that the PTO orders and office actions are admissible because Defendants are not using this evidence to show invalidity, but rather, to “show how the asserted claims and the prior art should be interpreted and understood in the appropriate context.”
Id.
at 13. Defendants cite to
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
849 F.2d 1430, 1439 (Fed.Cir.1988), in which the Federal Circuit “determined that statements made during reexamination were relevant in construing patent claims.”
Id.
Similarly, Defendants assert, “Primarion offers evidence from the pending reexamination proceedings as being relevant to the proper construction and understanding of the asserted patent claims.”
Id.
a.Opinions of Drs. Fair and Garrou
The Court has reviewed the opinions by Drs. Fair and Garrou to which Volterra objects and finds that as to most of them, the opinions were articulated, in some form, in previous reports and declarations by these experts. However, Defendants have not identified any timely prior testimony that expresses the opinions contained in the following testimony: 1) paragraphs 38, and 43-45 of the Fair Decl. in Support of Defendants’ Sicard SJ Motion; 2) paragraphs 125-126 of the Fair Decl. in Support of Defendants’ Sicard SJ Motion
&
Claim Chart 4 to the extent these opinions are now being offered to support obviousness rather than only anticipation; and 3) Opinions expressed in Appendix 2 to Fair Decl. in Support of Defendants’ Stratakos SJ Motion with respect to the claim term “a first flip-chip type integrated circuit chip mounted on a printed circuit board.” Accordingly, the Court sustains Volterra’s objections to this testimony on the basis that it is untimely.
b.PTO Office Actions and Orders
With respect to the PTO Initial Office Actions and reexamination orders, it is well-established that while statements made by the patentee during reexamination proceedings may be probative as to questions of claim construction,
see E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
849 F.2d 1430, 1439 (Fed.Cir.1988), preliminary decisions and actions by the PTO in the course of a reexamination proceeding are not probative of invalidity.
See Presidio Components Inc. v. American Technical Ceramics Corp.,
723 F.Supp.2d 1284, 1300-01 (S.D.Cal.2010). Here, Defendants have not cited to any statement by the patentee and therefore, the holding of
Phillips Petroleum
does not apply. Rather, Defendants have relied on the preliminary opinions expressed by the PTO on questions of invalidity. As these opinions are only preliminary, however, they have no probative value on that question, as the court in
Presidio Components
explained. Therefore, Plaintiffs objections to Defendants’ reliance on the PTO office actions and orders are sustained to the extent that Defendants rely on them to support their positions regarding invalidity-
c.Honn, Stager and Hallberg
Finally, the Court sustains Volterra’s objection to Defendants’ reliance on Honn, Stager and Hallberg to show obviousness. Patent Local Rule 3-3 requires that a party disclose the prior art upon which it intends to rely in support of its invalidity defenses and amend its invalidity contentions promptly upon the discovery of
*1043
new information. Defendants have not shown good cause for their failure to either include these references in their amended invalidity contentions or seek leave to amend their invalidity contentions. The omission is particularly striking in light of the citations to these references in the prosecution history. Clearly, Defendants (like Plaintiff) were aware of these references at an early stage of the case, yet Defendants have offered no explanation for their failure to include them in their invalidity contentions. As a result, Volterra was deprived of the notice to which it was entitled under the patent local rules that Defendants intended to rely on this prior art to show invalidity.
See O2 Micro International Limited v. Monolithic Power Systems, Inc.,
467 F.3d 1355 , 1365 (Fed.Cir.2006) (affirming ruling by district court denying leave to amend invalidity contentions under the Patent Local Rules of the Northern District of California and noting that “[t]he [patent local] rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed”) (quoting
Nova Measuring Instruments Ltd. v. Nanometrics, Inc.,
417 F.Supp.2d 1121, 1123 (N.D.Cal.2006)).
2. Objections to Evidence Offered in Support of Defendants’ Opposition Briefs (Docket No. 1154)
a. Opposition to MSJ No. 1 (Plaintiffs Infringement SJ Motion)
Volterra objects to Paragraphs 36 and 37 of the Declaration of Richard B. Fair, Ph.D. in Support of Defendants’ Oppositions to Volterra’s Motions for Summary Judgment (“Fair 9/10/10 Opposition Deck”) on the basis that it is not reliable and therefore, inadmissible under Rule 702 of the Federal Rules of Evidence.
15
Plaintiff Volterra Semiconductor Corporation’s Objections to Evidence Submitted by Defendants in Support of Defendants’ Oppositions to Volterra’s Summary Judgment Motions (Docket No. 1154) (“Volterra’s Objections (Primarion’s Oppositions)”) at 1, 5. In Paragraph 37, Dr. Fair states as follows:
In view of Dr. Szepesi’s position that [REDACTED] Fair 9/10/10 Opposition Deck, ¶ 37.
16
Volterra argues that this equivocal statement will not be helpful to the jury to the extent Dr. Fair is not confident enough of his conclusion to affirmatively state that the accused product
does not
infringe. Volterra further asserts that the paragraphs are unreliable because Dr. Fair ignores highly pertinent conflicting evidence that was cited in Volterra’s motion papers, namely, [REDACTED],
Defendants respond that Volterra’s objection is unfounded to the extent that it relies on the use of the words “it
appears”
because Dr. Fair’s statement was made in the context of his invalidity analysis and Dr. Szepesi himself has “not applied his ‘invalidity’ version of [REDACTED] to the accused products,
even though Volterra has the burden of showing infringement.
” Defendants’ Response to Plaintiffs Objections to Evidence in Support of Defendants’ Oppositions to Volterra’s Motions for Summary Judgment (“Defendants’ Response to Volterra’s Objections (Primarion’s Oppositions)”) at 2 (emphasis in origi
*1044
nal). According to Defendants, Dr. Fair’s testimony is admissible because it reveals the inconsistency in Dr. Szepesi’s positions and therefore will be helpful to the trier of fact.
Id.
The admissibility of expert testimony is governed by Rule 702 of the Federal Rules of Evidence, which provides:
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
F.R.Evid. 702. In determining whether expert testimony meets the requirements of Rule 702, courts follow the approach set forth in
Daubert v. Merrell Dow Pharm., Inc.,
in which the Supreme Court described the relevant inquiry as follows:
Faced with a proffer of expert scientific testimony, then, the trial judge must determine ... whether the expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a fact in issue. This entails a preliminary assessment of whether the reasoning or methodology underlying the testimony is scientifically valid and of whether that reasoning or methodology properly can be applied to the facts in issue.
509 U.S. 579, 590 , 113 S.Ct. 2786 , 125 L.Ed.2d 469 (1993). If the basis for the expert’s opinion is clearly unreliable, the district court may disregard that opinion in deciding whether a party has created a genuine issue of material fact.
See id.
at 596 , 113 S.Ct. 2786 (if “the trial court concludes that the scintilla of [expert] evidence presented supporting a position is insufficient to allow a reasonable juror to conclude that the position more likely than not is true, the court remains free to ... grant summary judgment”). The determination of reliability is left to the discretion of the district court, consistent with its gatekeeping function under Rule 702.
Kumho Tire Co., Ltd. v. Carmichael,
526 U.S. 137, 149 , 119 S.Ct. 1167 , 143 L.Ed.2d 238 (1999).
The Court finds that Dr. Fair’s opinion in paragraph 37 is unhelpful and misleading because it is not supported by a factual basis. First, Dr. Fair’s statements are based on a single picture that only shows [REDACTED] of the accused product. Second, Dr. Fair does not address [REDACTED]
Third, Dr. Fair does not explain why he apparently rejects Dr. Szepesi’s opinion that [REDACTED] Accordingly, the Court sustains Volterra’s objection to Dr. Fair’s statements in Paragraphs 37 of his opposition declaration and does not consider that testimony in deciding Volterra’s Infringement Summary Judgment Motion.
17
b. Opposition to MSJ No. 2 (Plaintiffs Prior Art SJ Motion)
Volterra objects to statements made by Dr. Fair in paragraphs 26-29 and 31-34 of his September 10, 2010 opposition declaration. Volterra’s Objections (Primarion’s Oppositions) at 6-7. Volterra’s objections are overruled.
*1045
i. Paragraphs 26-29 of Fair Opposition Declaration
In paragraphs 26-29 of his opposition declaration, Dr. Fair challenges statements by Dr. Szepesi in his invalidity report regarding the date the invention in the asserted patents was conceived. Fair 9/10/10 Opposition Decl., ¶ 26-29;
see also
Szepesi 7/14/10 Rebuttal Report on Invalidity, ¶¶ 389-402 (opining that invention of asserted claims was conceived as of April 3,1998, or at least, by April 16,1998, citing entries in the lab notebooks of Drs. Nickel and Burstein dated March 26, 1998, April 3, 1998, April 16, 1998 and July 7, 1998). According to Dr. Fair, Dr. Szepesi appeared not to have “conducted an independent analysis regarding whether the asserted claims were conceived by April 3, 1998 [but instead] relie[d] solely on the declaration of Andrew Burstein.” Fair 9/10/10 Opposition Deck, ¶¶ 26-27. Dr. Fair opines further that Dr. Burstein, contended in his declaration that the April 3, 1998 date of conception was “supported by the document labeled VLTR0007451 because it showfed] all of the claim limitations of the asserted claims of the Burstein Patents.”
Id.,
¶ 27. Dr. Fair states that this document — which is a page dated April 3, 1998 from Dr. Burstein’s lab notebook — lacks certain required elements of the asserted claims, including “a plurality of doped regions,” “solder balls,” a “filter,” a “control circuit” or a “second filter” and that Dr. Burstein conceded as much in his deposition.
Id.,
¶ 28-29.
Volterra objects to Dr. Fair’s statement on the basis that he addresses only the April 3, 1998 entry in Dr. Burstein’s notebook whereas Dr. Szepesi’s opinion about the conception date was based on several entries in the inventors’ lab notebooks. Volterra’s Objections (Primarion’s Oppositions) at 6-7. Because Dr. Fair ignores relevant evidence, Volterra asserts, his opinion is unreliable and should be found inadmissible. Volterra’s Objections (Primarion’s Oppositions) at 7 (citing
Union Carbide Corp. v. American Can. Co.,
724 F.2d 1567, 1572 (Fed.Cir.1984) and
Arthur A. Collins, Inc. v. N. Telecom Ltd.,
216 F.3d 1042, 1047 (Fed.Cir.2000)). Volterra further asserts that Dr. Fair’s statements concerning the missing claim elements in the April 3, 1998 entry are inadmissible because they are entirely conclusory.
Id.
Defendants respond that
Union Carbide
is not on point because in that case, the court did not find that the expert’s affidavit was inadmissible but rather, found that it did not create a fact question on summary judgment because it merely ignored relevant evidence rather than contradicting it.
See
Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 4. Further, Defendants assert,
Union Carbide
is distinguishable because in that case, the expert whose testimony was at issue had little background in the relevant subject matter. In addition, Defendants assert that Dr. Fair’s testimony differs from the affidavit in
Union Carbide
because he highlights contradictions between the Burstein declaration cited by Volterra and Dr. Burstein’s deposition testimony.
Id.
Finally, Defendants argue that
Arthur A. Collins
is also distinguishable because in that case, as in
Union Carbide,
the court did not find the expert testimony to be inadmissible but instead, found that an expert’s conclusory statement that the accused device included a critical claim limitation could not defeat summary judgment without factual support.
Id.
at 5 (citing 216 F.3d at 1047 ). Here, in contrast, Dr. Fair has offered factual support for his opinion, Defendants argue.
Id.
As discussed above, a court has the discretion to find expert testimony inadmissible — or decline to consider expert testimony on summary judgment — where
*1046
it is unreliable or misleading. The testimony in paragraphs 26-29 of the Fair Opposition Declaration does not warrant exclusion on this basis. Although the narrow focus of Dr. Fair’s statements, which address only the April 3, 1998 notebook entry, may or may not be sufficient to create a dispute of fact sufficient to survive summary judgment, the Court does not find Dr. Fair's statements to be so unreliable or misleading as to find them inadmissible. Dr. Fair is, undisputably, qualified to express an opinion as to the significance of Dr. Burstein’s notebook entries and he has done so. It is apparent from the statements in paragraphs 26-29 that Dr. Fair’s opinions regarding the invention date are based only on his review of the April 3, 1998 notebook entry. While Dr. Fair does not address Dr. Szepesi’s opinions regarding the other notebook entries cited by Dr. Szepesi, this omission is not so misleading as to warrant the exclusion of these paragraphs, even if it may render these opinions less persuasive to a fact finder. Therefore, Volterra’s objection is overruled.
ii. Paragraphs 31-34 of Fair Opposition Declaration
In paragraphs 31-34 of his opposition declaration, Dr. Fair challenges statements by Dr. Szepesi in his invalidity report regarding the date the invention in the asserted patents was reduced to practice. Fair 9/10/10 Opposition Deck, ¶ 31-34;
see also
Szepesi 7/14/10 Rebuttal Report on Invalidity, ¶¶ 376-388 (opining that the first embodiment of the invention was the Cop5 device that was tested on September 5, 1998). According to Dr. Fair, Dr. Szepesi’s opinion that the invention was reduced to practice on September 5, 1998 is based entirely on statements in Dr. Burstein’s declaration, many of which were uncorroborated. Fair 9/10/10 Opposition Deck, ¶ 31. For example, according to Dr. Fair, Dr. Burstein frequently relies on pages from Mr. Nickel’s notebook to show that all of the limitations of the asserted claims were present in the embodiment that was tested on September 5, 1998 but fails to present any evidence that the drawings in Dr. Nickel’s notebooks accurately reflect the embodiment that was tested on September 5, 1998.
Id.,
¶¶ 32-33. Dr. Fair also cites to deposition testimony by Dr. Burstein in which he conceded that a September 5 email on which he relied in his declaration failed to show some of the asserted claim limitations.
Id.,
¶ 34.
Volterra contends that these paragraphs should be excluded on the basis that they are not based on Dr. Fair’s expertise, are not helpful and invade the province of the trier of fact. Volterra’s Objections (Primarion’s Oppositions) at 7 (citing
Union Carbide Corp. v. American Can. Co.,
724 F.2d 1567, 1572 (Fed.Cir.1984) and
Arthur A. Collins, Inc. v. N. Telecom Ltd.,
216 F.3d 1042, 1047 (Fed.Cir.2000)). Defendants respond that it is appropriate for an expert to compare factual evidence to claim limitations and that this testimony is admissible. Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 5.
The Court finds that the opinions offered by Dr. Fair in paragraphs 31-34 are based on his expertise and supported by a factual basis. Therefore, Volterra’s objection to these paragraphs is overruled.
c. Opposition to MSJ No. 3 (Plaintiffs Undisclosed References SJ Motion)
Plaintiff objects to Appendices A and B to Defendants’ Opposition to Plaintiff Volterra Semiconductor Corporation’s Motion for Partial Summary Judgment of No Invalidity Based on Prior Art References and On-Sale Bar Allegations Not Disclosed in Defendants’ First Amended Invalidity Contentions, or, in the Alterna
*1047
tive, to Preclude Defendants from Relying Upon Undisclosed Prior Art and On-Sale Bar Allegations (“Defendants’ Opposition to Plaintiffs Undisclosed References SJ Motion”) on the basis that these appendices were not timely filed. Volterra’s Objections (Primarion’s Oppositions) at 16. In particular, although Defendants expressly referred to these appendices in their Opposition brief, which was filed on September 10, 2010, they failed to serve them on Plaintiff until September 16, 2010 and did not file them until the next day.
Id.
The appendices identified the specific documents and deposition transcripts that Defendants contend Volterra improperly failed to include in its interrogatory responses.
Id.; see also
Docket No. 1095 (Notice of Errata containing Appendices A & B). The Court concludes that exclusion of the appendices is not warranted.
First, there is no indication that Defendants’ omission was willful. Rather, Defendants state in their Notice of Errata that their failure to attach the appendices was inadvertent and the Court has no reason to doubt this representation, especially as Defendants apparently responded promptly to Plaintiffs inquiry by serving and filing the appendices within a week of filing their Opposition brief.
Second, Plaintiff was not materially prejudiced by the omission, as it received the appendices on September 16, 2010— eight days before its Reply brief was due. Although Plaintiffs time to respond was admittedly cut short, Plaintiff did not request an extension on its Reply brief and has never requested leave to file a supplemental brief addressing the specific testimony and documents disclosed in the appendices.
Accordingly, the objection is overruled.
d. Oppositions to MSJ Nos. 4 (Plaintiffs Anticipation SJ Motion) & 5 (Plaintiffs Obviousness SJ Motion)
Plaintiff objects to the following evidence cited in support of Defendants’ Opposition to Plaintiffs Motion for Partial Summary Judgment of No Anticipation Pursuant to 35 U.S.C. § 102 [MSJ No. 4] (“Defendants’ Opposition to Plaintiffs Anticipation SJ Motion”) and Defendants’ Opposition to Plaintiffs Motion for Partial Summary Judgment of Nonobviousness (“Defendants’ Opposition to Plaintiffs Obviousness SJ Motion”): 1) the PTO Initial Office Actions and reexamination orders discussed above, on the ground that this evidence has no relevance to invalidity; 2) the prosecution history of the '264 patent and ten prior art references that were not disclosed in Defendants’ First Amended Invalidity Contentions, on the basis that Defendants failed to comply with Patent Local Rule 3-3, which requires that a party must disclose all prior art. on which it intends to rely, in support of 'invalidity in its invalidity contentions; 3) opinions expressed by Drs. Fair and Garrou in supporting declarations based on the same prior art references; 4) the Stratakos Thesis as prior art, based on the arguments regarding the1 invention date advanced in Plaintiffs Prior Art SJ Motion; and 5) demonstrative exhibits 128 and 129 to the Gargano Deck, based on the assertion that these figures are not what they appear to be. Volterra’s Objections (Primarion’s Oppositions) at 4.
Defendants respond that the PTO Initial Office Actions and reexamination orders are admissible for the reasons discussed above.
18
Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 13-14. They argue that
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the references that were not disclosed in their invalidity contentions should be considered because they are simply being used to provide “context for how a [person of ordinary skill in the art] would have understood certain terms of art” and not as prior art references, and moreover, that Volterra was aware of all of them because they were disclosed in interrogatory responses or expert reports, or were initially cited by Volterra.
Id.
at 10-11 . Defendants further assert that Volterra’s objections to Hallberg and Stager should be overruled because Volterra was aware of this prior art and therefore, no prejudice will arise from considering it.
Id.
at 10 . Defendants argue that the Court should overrule Plaintiffs objections to the opinions expressed in the declarations of Drs. Fair and Garrou that rely on the undisclosed references to the extent the underlying references are admissible.
Id.
at 13 . Defendants also argue that the objections to the opinions of Drs. Fair and Garrou are untimely because those opinions were contained in the opening declarations of Drs. Fair and Garrou, filed on August 20, 2010, but Plaintiff failed to include the objections in its earlier evidentiary objections.
Id.
at 13 . Defendants reject Plaintiffs objection to the Stratakos Thesis, citing the arguments that it advances in its opposition to Plaintiffs Prior Art SJ Motion.
Id.
at 14 . Finally, Defendants argue that Exhibits 128 and 129 are simply graphic aids and are not evidence and further, that they are not misleading,
i.The Undisclosed Prior Art References
With respect to the patent prosecution history, Volterra has not pointed to any authority that persuades the Court that a party asserting an invalidity defense is required, under the Patent Local Rules, to list as prior art the prosecution history of the asserted patent in its invalidity contentions. Therefore, Volterra’s objection to Defendants’ reliance on the prosecution history is overruled. On the other hand, with respect to the remaining ten prior art references, the Court finds no authority for what appears to be an end-run around the Patent Local Rules by Defendants. As discussed further below, one of the goals of Patent Local Rule 3-3 is to ensure that a party asserting invalidity disclose the theories on which it intends to rely in a timely manner so as to avoid undue prejudice to the patent holder. Because Defendants failed to comply with the Patent Local Rules, the Court sustains Volterra’s objections as to the ten undisclosed prior art references listed in Volterra’s objections.
ii.Opinions Expressed by Drs. Fair and Garrou that rely on the Undisclosed References
Volterra also objects to the following opinions expressed by Drs. Fair and Garrou that “discuss or are dependent upon” one or more of Defendants’ undisclosed prior art references: 1) Fair Decl. in Support of Defendants’ Stratakos SJ Motion, ¶¶ 21, 35, 39, 40, 45, 58, 78-85, 86, 88 & 91 (citing to the undisclosed references cited in paragraph 58), as well as Appendix 2 at pp. 5-6; and 2) Garrou Decl. in Support of Defendants’ Stratakos SJ Motion, ¶¶ 20, 22, 24, 26-30, 35^1, 45-46, 51, 54, 56-57, 62, 66-72 and 78-79. Volterra’s Objections (Primarion’s Oppositions) at 13. These objections are sustained, except with respect to ¶¶ 36 and 37 of the Garrou declaration and ¶¶ 78-85, 86, 88 and 91 of the Fair declaration, which express opinions based on the prosecution history of the ’264 patent.
iii.Stratakos Thesis
Volterra objects to Defendants’ reliance on the Stratakos Thesis for the same reasons it argues that it is entitled to summary judgment that the Stratakos Thesis is not prior art. As discussed below, the
*1049
Court concludes that fact questions remain as to whether the Stratakos Thesis is prior art and therefore, the objection is overruled.
iv. Exhibits 128 and 129
Volterra objects to Exhibits 128 and 129 to the Gargano Declaration on the basis that they are inauthentic and misleading. The Court overrules this objection because these exhibits are not offered as evidence but only to illustrate Defendants’ position regarding [REDACTED] in the accused product as compared to[REDACTED]. While the diagrams may or may not be helpful, the Court finds that they are not so misleading as to require that they be excluded.
e. Opposition to MSJ No. 7 (Plaintiffs Inequitable Conduct SJ Motion)
Volterra objects to evidence cited by Defendants in support of their Opposition to Plaintiffs Inequitable Conduct SJ Motion on the ground that these documents were not disclosed by Defendants in their interrogatory responses. Specifically, Volterra seeks exclusion of the following evidence: 1) excerpts of the prosecution file histories for the '522 and '264 patents, including Small Entity Status Declarations submitted by Volterra in connection with the '522 and '264 patent applications (Gargano Deck, Exs. 2, 94 & 95); 2) PTO orders granting reexamination requests for the '522 and '264 patents and documents related to the reexamination proceeding (Gargano Deck, Exs. 20, 21, 71, 73, 124, 144); 3) the first page of a PowerPoint presentation by Alan King and Anthony Stratakos listing Alan King as Chairman and CEO of Berkeley Integrated Technologies and Anthony Stratakos as President and CTO of the same entity (Gargano Deck, Ex. 115) and February 4, 1999 letter from Alan King to Jeff Staszak listing “Volterra People” (Gargano Deck, Ex. 116); 4) interrogatory response by Volterra stating that Berkeley Integrated Technologies, Inc. was incorporated in Delaware in August 1996 and changed its name to Volterra in 1997 and providing list of officers (Gargano Deck, Ex. 4); 5) section of Fair opposition declaration addressing materiality of ten prior art references listed in Defendants’ invalidity contentions in connection with their inequitable conduct affirmative defense (Fair 9/10/10 Opposition Deck, ¶¶ 58-185). In addition, Volterra seeks exclusion of two arguments it contends should have been disclosed by Defendants in their discovery responses: 1) the argument that any undisclosed prior art reference is material based on the fact that the PTO has either granted reexamination of the Burstein Patents based on the reference or issued any subsequent office action based upon it; and 2) the argument that Volterra’s BIT-Buck prototype would have been material to the patentability of the Burstein Patents.
19
Defendants assert that these objections should be overruled. First, with respect to Gargano Exs. 2, 94 and 95, the prosecution file histories of the '522 and '264 patents (which include the Small Entity Status Declarations for the '264 and '522 patents), Defendants argue that this evidence is admissible because Defendants’
*1050
interrogatory responses state that Volterra engaged in inequitable conduct “for at least the reasons set forth in Defendants’ First Amended Answer ... incorporated herein by reference.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 6 (citing Gargano Deck, Ex. 236 (Infineon AG’s Second Amended and Supp. Response to Interrog. No. 8, 4/26/10)). Defendants’ First Amended Answer, in turn, includes an inequitable conduct counterclaim based on allegations related to the prosecution of the patents in suit, including allegations based on the Small Entity Status Declarations for the '522 and '264 patents, which were signed by Anthony Stratakos. First Amended Answer [docket no. 92], Counterclaim ¶¶ 32-38.
Second, Defendants assert that Exhibits 115 and 116 to the Gargano Declaration are admissible because in their interrogatory responses, Defendants stated that Volterra committed inequitable conduct by withholding “the Bit-Buck voltage regulator
(identified during the depositions of Dr. Stratakos, Dr. Lidsky, and Dr. Bur-stein
) developed by Volterra and/or Berkeley Integrated Technologies, Inc.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 7 (citing Gargano Deck, Ex. 236) (emphasis added). Defendants further point out that Exhibit 115 was marked as exhibit 9 during the July 15, 2009 deposition of Dr. Lidsky, and that Dr. Lidsky testified about the slides showing the Bit-Buck voltage regulator contained in that exhibit.
Id.
(citing Ex. 115 (showing exhibit tag on document) and Ex. 233 (excerpt of 7/15/09 Lidsky deposition transcript)). Similarly, Exhibit 116 was marked as exhibit 26 at the July 28, 2009 deposition of Dr. Stratakos and Dr. Stratakos was asked questions about the document during his deposition.
Id.
(citing Ex. 116 (showing exhibit tag on document) and Ex. 234 (excerpt of 7/28/09 Stratakos deposition transcript)).
Third, Defendants argue that Exhibit 141 is admissible because it is Volterra’s own interrogatory responses and therefore is an admission.
Fourth, Defendants argue that they adequately disclosed in their interrogatory responses their position that the PTO Office Actions and orders granting the reexamination requests show that the undisclosed prior art references are material to patent-ability. In particular, Defendants assert that their “interrogatory responses expressly disclose that Defendants’ case of inequitable conduct is based
inter alia
on the pending reexaminations of the '264 and '522 patents, which necessarily includes the documents filed in these reexaminations.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 7. Defendants point also to their further statement in tsheir interrogatory responses that Volterra has taken “positions in the reexamination proceedings that contradict positions taken during this litigation” and cited examples.
Id.
Fifth, Defendants assert that Dr. Fair’s opinions addressing the materiality of the references that Defendants contend were withheld from the PTO during patent prosecution are proper because materiality is a proper subject of expert opinion and the opinions were timely submitted.” Defendants’ Response to Volterra’s Objections (Primarion Oppositions to SJ Motions) at 8.
Sixth, Defendants argue that their argument relating to the BIT-Buck voltage regulator is admissible because they stated in their interrogatory responses that Plaintiff committed inequitable conduct by withholding the BIT-Buck voltage regulator, as discussed above.
*1051
i.Prosecution History and Small Entity Status Declarations
The Court overrules Volterra’s objections to Defendants’ rebanee on the prosecution history and the Small Entity Status Declarations. Defendants’ interrogatory responses made clear that their inequitable conduct claim was based, in part, on conduct that occurred during the prosecution of the patent. Accordingly, Volterra had sufficient notice that Defendants intended to rely on the prosecution history file. In addition, Defendants expressly incorporated their First Amended Answer, which included allegations in support of their inequitable conduct counterclaim and affirmative defense based on the Small Entity Status Declarations. Therefore, the Court finds that Gargano Decl., Exs. 2, 94 and 95 are admissible.
ii.Exhibits 115 and 116
The Court overrules Volterra’s objection to Exhibit 115 and sustains its objection to Exhibit 116. Exhibit 115 is the first page of a Power-Point presentation that included a slide depicting Volterra’s BIT-Buck voltage regulator.
See
Declaration of Daniel R. Foster in Support of Defendants’ Response to Plaintiffs Objections to Evidence in Support of Defendants’ Oppositions to Volterra’s Motions for Summary Judgment and Plaintiffs’ Objections to Evidence in Support of Defendants’ Reply Memoranda (“Foster Decl.”), Ex. 233 (excerpt of 7/15/09 Lidsky Depo.) at 86. This document was marked as an exhibit during the deposition of Dr. Lid-sky, who was asked to testify about the contents of the document, including the slide depicting Volterra’s BIT-Buck voltage regulator, at some length.
Id.
Accordingly, Defendants’ interrogatory response referencing the BIT-Buck voltage regulator identified during Dr. Lidsky’s deposition gave Plaintiff sufficient notice that Defendants intended to rely on this document.
On the other hand, Defendants’ interrogatory response did not provide Volterra sufficient notice as to Exhibit 116. That document is an email message by Alan King listing “Volterra people.” Gargano Decl., Ex. 116. It contains no mention of the BIT-Buck voltage regulator and although it was marked as an exhibit at the deposition of Dr. Stratakos, the questions that were asked about the document during Dr. Stratakos’ deposition also did not relate to the BIT-Buck voltage regulator.
See
Foster Deck, Ex. 234 (excerpt of 7/28/09 deposition of Dr. Stratakos) at 137-144. As a result, Defendants’ interrogatory responses stating that then-inequitable conduct defense was based on the BIT-Buck voltage regulator identified during Dr. Stratakos’ deposition did not put Volterra on notice that Defendants intended to rely on the email offered as Exhibit 116. Volterra’s objection to Exhibit 116 is sustained.
iii.Volterra’s Interrogatory Responses
Exhibit 141 of the Gargano Declaration is an excerpt from Volterra’s own interrogatory responses. While Defendants are
incorrect
in their assertion that Volterra’s interrogatory responses are binding admissions (and thus admissible),
see Synopsys, Inc. v. Magma Design Automation, Inc.,
2006 WL 825277 (N.D.Cal., March 30,2006) (Chesney, J.) (“answers were given in response to interrogatories, rather than to requests for admissions and, consequently, are not binding”) (citing Fed.R.Civ.P. 33(c) and Fed.R.Civ.P. 36(b));
Fort Hall Landowners Alliance, Inc. v. Bureau of Indian Affairs,
2007 WL 2187256 , at *2 (D.Idaho, July 16, 2007) (noting that answers to interrogatories “are not binding admissions in this circuit”) (citing
Victory Carriers Inc. v. Stockton Stevedoring Co.,
388 F.2d 955, 959 (9th Cir.1968) (holding that answers to interrogatories not given the same binding
*1052
effect conferred on responses to requests for admission) and
Donovan v. Crisostomo,
689 F.2d 869, 875 (9th Cir.1982) (stating that “[ijnterrogatories do not supersede or supplement pleadings, nor do they bind parties as an allegation or admission in a pleading or pre-trial order”)), the Court also finds no authority for the proposition that a party’s own interrogatory responses may be excluded on the basis that the party seeking to rely on them did not expressly state as much in
their
interrogatory responses. Therefore, Plaintiffs objection to Exhibit 141 is overruled.
iv.Argument that Undisclosed Prior Art is Material Based on Fact that PTO has Granted Reexamination Request
Volterra argues that Defendants should not be allowed to rely on the PTO decisions relating to the reexamination request to establish materiality because they did not identify these decisions in their interrogatory responses. Because the Court does not reach the question of whether the undisclosed prior art is material to patent-ability, it declines to rule on this objection.
v.Expert Opinion Addressing Materiality of Undisclosed References
In paragraphs 58-185 of the Fair 9/10/10 Opposition Deck, Dr. Fair addresses the materiality of the references that Defendants identified in their interrogatory responses as the ones that allegedly were not disclosed by individuals at Volterra during the prosecution of the asserted patents. Because the Court does not reach the question of whether the undisclosed prior art is material to patentability, it declines to rule on this objection.
vi.Argument that BIT-Buck Voltage Regulator is Material to Patentability
Because the Court does not reach the question of whether the undisclosed prior art is material to patentability, it declines to rule on this objection.
f. MSJ No. 8 (Plaintiffs On-Sale Bar SJ Motion)
Volterra objects to several documents cited by Defendants in support of their Opposition to Plaintiffs On-Sale Bar SJ Motion on the ground that these documents were not disclosed by Defendants in their interrogatory responses. Specifically, Volterra seeks exclusion of the following documents: 1) Docket No. 358 (Prototype Tracking Document, dated 1/6/99); 2) Gargano Deck, Exs. 107-108 (Volterra’s responses to Primarion Interrogatory Number 8); 3) Gargano Deck, Ex. 109 (Volterra email dated 1/20/99); and 4) Ex. 100 to Declaration of David Dolkas in Support of Defendants’ Opposition to Plaintiffs Motion for Preliminary Injunction.
20
Defendants respond that the interrogatory responses are admissible as party admissions. They further contend that the remaining documents are admissible because Volterra had notice of them. In particular, Defendants point out that: 1) the Prototype Tracking Document (Docket Number 358) was offered by Volterra as an exhibit in support of its preliminary injunction motion; 2) Exhibit 109 to the Gargano Declaration was marked as an exhibit by Defendants on August 7, 2009, at the deposition of Dr. Burstein; and 3) Exhibit 100 to the Dolkas Declaration was cited by Defendants in their opposition to the preliminary injunction motion for the same purpose as it is offered here, namely, to show delivery of the Tut prototype in De
*1053
cember 1998. The Court overrules Plaintiffs objections as to all of the documents except Exhibit 109.
In its interrogatories, Volterra asked Defendants to “describe in detail ALL facts that YOU contend support EACH defense, including without limitation by IDENTIFYING ALL DOCUMENTS which support or RELATE to EACH affirmative defense.”
See
Comb. Fisher Deck, Ex. 28 (Defendant Primarion Inc.’s Third Supplemental and Amended Response to Plaintiff Volterra Semiconductor Corporation’s Second Set of Interrogatories [Supplemented as to Interrogatory No. 14]) (“Primarion 6/18/10 Supp. Interr. Responses”) at 4 (interrogatory 14); Ex. 29 (Defendant Infineon Technologies North America Corp.’s Third Amended and Supplemental Responses to Plaintiff Volterra Semiconductor Corporation’s Second Set of Interrogatories [Supplemented as to Nos. 4 and 8] (“Infineon 6/18/10 Supp. Interr. Responses”)) at 401 (interrogatory no. 8); Ex. 30 (Defendant Infineon Technologies AG’s Third Amended and Supplemental Responses to Plaintiff Volterra Semiconductor Corporation’s Second Set of Interrogatories [Supplemented as to Interrogatory Nos. 4 and 8] (“Defendant Infineon AG’s 6/18/10 Supp. Interr. Responses”)) at 403. Defendants’ initial responses in connection with their on-sale bar defenses were brief and conclusory and did not list
any
documents. Subsequently, Volterra brought a motion to compel seeking more complete responses, and the Court expressly ordered that Defendants provide all facts, documents and witnesses related to their affirmative defenses.
See
May 7, 2010 Hearing Transcript [Sealed Version]. Despite the Court’s order, in their supplemental responses Defendants again failed to identify any documents supporting their on-sale bar defense. Thus, it is within the Court’s discretion to exclude all of the undisclosed documents to which Volterra objects on the basis of Defendants’ failure to comply with the Court’s order.
See Avila v. Willits Environmental Remediation Trust,
2007 WL 108347 , at *4 (N.D.Cal. Jan. 10, 2007) (holding that plaintiffs were barred from introducing evidence in opposition to summary judgment that was not included in discovery responses despite representation to court in response to defendant’s motion to compel that plaintiffs discovery responses were “complete”).
Having found that Defendants failed to comply with the Court’s order, however, the Court declines to adopt the remedy sought by Plaintiff, namely, the exclusion of virtually all of the evidence cited by Defendants in support of their on-sale bar defenses, because Plaintiff had sufficient notice as to at least some of the documents that Defendants’ on-sale bar defense would rely on them. First, the Prototype Tracking Document (Docket Number 358) was cited by Volterra in connection with the preliminary injunction and Defendants expressly referred to Volterra’s use of Prototype Tracking Documents in connection with their on-sale bar defense in their amended invalidity contentions.
See
Comb. Fisher Deck, Ex. 39 (First Amended Invalidity Contentions) at 7 (contending in support of invalidity under § 102(b) that “Plaintiff ... admits to using Prototype Tracking Documents (‘PTD’) to track delivery and maintain the confidentiality of information it disclosed to Intel [and] has failed to produce any PTDs that cover the December 1998 delivery to ESG”). Therefore, the Court overrules Volterra’s objection to Docket Number 358.
Second, Ex. 100 to the Dolkas preliminary injunction declaration, an email offered by Defendants to show delivery of the prototype to Intel in December 1998, was offered by Defendants for the same purpose in their Opposition to the
*1054
preliminary injunction motion. Indeed, Defendants quoted the email in that brief, just as they have in their opposition to Plaintiffs On-Sale Bar SJ Motion. Therefore, the Court overrules Plaintiffs objection to Ex. 100 to the Dolkas preliminary injunction declaration.
Third, as discussed above, while Defendants are
incorrect
in their assertion that Volterra’s interrogatory responses are binding admissions (and thus admissible), the Court also finds no authority for the proposition that a party’s own interrogatory responses may be excluded on the basis that the party seeking to rely on them did not expressly state as much in
their
interrogatory responses. Therefore, the Court overrules Volterra’s objections as to Exhibits 107 and 108 to the Gargano Declaration.
The Court sustains Plaintiffs objections to Exhibit 109, however. This document was not referenced in Defendants’ invalidity contentions; nor was it addressed by the parties at the preliminary injunction phase of the case. Accordingly, Defendants’ failure to disclose in their interrogatory responses that they intended to rely on the document to support their on-sale bar defense gives rise to sufficient prejudice to warrant its exclusion.
3. Objections to Defendants’ Evidence in Support of Reply Briefs (Docket No. 1177)
Volterra objects to the following evidence offered by Defendants in support of their Reply briefs on their Sicard and Stratakos SJ Motions: 1) opinions expressed in paragraphs 16-18 and 88 of the Supplemental Declaration of Richard B. Fair, Ph.D., in Support of Defendants’ Motions for Summary Judgment (“Fair 9/24/10 Supp. Deck”) regarding whether the patent examiner would have allowed the claims of the '264 patent if the examiner had been aware of certain prior art, which Volterra argues are speculative and also unreliable in light of the September 27, 2010 Notice of Intent to Issue Ex Parte reexamination Certificate regarding the '264 Patent (“'264 NIRC”),
see
Declaration of Jeffrey M. Fisher in Support of Plaintiff Volterra Semiconductor Corporation’s Objections to New Evidence Submitted by Defendants in Support of Defendants’ Reply Memoranda re: Defendants’ Motions for Summary Judgment (“Fisher Evid. Deck”), Ex. A;
21
2) new prior art references that were offered in support of Defendants’ Reply memoranda that were not listed in Defendants’ invalidity contentions; 3) paragraphs 4-13 of the Declaration of Kenneth Ostrom in Support of Defendants’ Reply Memoranda on the basis that these opinions lack foundation because although Mr. Ostrom addressed the reasons Defendants’ Callisto chip was discontinued in his declaration, he testified at his deposition that he did not know why that chip was discontinued; 4) new expert opinions in the Reply Declaration of James E. Malackowski in Support of Defendants’ Motions for Summary Judgment at ¶ 22 beginning at the words “In fact, while I am aware----”
See
Plaintiff Volterra Semiconductor Corporation’s Objections to New Evidence Submitted by Defendants in Support of Defendants’ Reply Memoranda re: Defendants Motions for Summary Judgment (“Volterra’s Objections (Primarion’s Replies)”).
Defendants respond that the opinions regarding the decision of the patent examiner are not speculative but rather, are based on Dr. Fair’s familiarity with the relevant prior art and the prosecution his
*1055
tory of the '264 patent. Defendants’ Response to Plaintiffs Objections to Evidence in Support of Defendants’ Reply Memoranda re: Motions for Summary Judgment [Docket Nos. 1105 & 1106] (“Defendants’ Response to Volterra’s Objections (Primarion Replies)”) at 1-3. They reject Volterra’s reliance on the '264 NIRC, arguing that the recent decision of the PTO was based on discrepancies between the arguments made before the Court regarding relevant claim terms and those made in the PTO.
Id.
Defendants further assert that the prior art that Volterra asserts is new should be considered, even though it was not included in Defendants’ invalidity contentions, because it was disclosed to Volterrra in various interrogatory responses and “[s]ome of these references go to rebutting opinions in Volterra’s expert reports.”
Id.
at 3-8. Defendants argue that the opinions of Mr. Ostrom do not lack foundation and that Volterra has miseharacterized his deposition testimony.
Id.
at 9. Finally, Defendants argue that the opinions expressed by Mr. Malackowski in his reply declaration but rather, are consistent with the opinions he expressed in his deposition and in his July 26, 2010 expert report.
Id.
at 9-10.
a.Fair 9/24/10 Supp. Deck, ¶¶ 16-18 and 88
The Court overrules Volterrra’s objections to these opinions. Without reaching any conclusions as to the significance of the decision of the PTO in the '264 NIRC, the Court concludes that Dr. Fair’s familiarity with the prior art and the prosecution history provides a sufficient basis to support the opinions stated in these paragraphs.
b.Prior Art References that Were Not Included in Invalidity Contentions
As discussed above with reference to prior art references cited by Defendants in support of their Opposition briefs, the Court finds that Defendants are prohibited, under the Patent Local Rules, from relying on prior art that was not disclosed in their invalidity contentions to show invalidity. Nor is the Court persuaded by Defendants’ assertions that their failure to comply with the requirements of the Patent Local Rules is excused because Plaintiff was aware of this prior art, or on the basis that it is merely offered to provide “context.” Finally, although Defendants have asserted that “some” of these references are offered as rebuttal, this conclusory statement is insufficient to overcome Volterra’s objection without further explanation addressing which references are offered in rebuttal and what specific opinions the references rebut. Therefore, the Court sustains Volterra’s objections with respect to the prior art references listed at pages 2 and 3 of its objections.
c.Declaration of Kenneth Ostrom in Support of Defendants’ Reply Memoranda, ¶¶ 4-13
Having reviewed the deposition testimony of Mr. Ostrom, the Court finds that the opinions to which Volterra objects are supported by adequate foundation based on Mr. Ostrom’s familiarity with and knowledge of Primarion’s corporate documents. Therefore, the Court overrules Volterra’s objection.
d.Reply Declaration of James E. Malackowski in Support of Defendants’ Motions for Summary Judgment, ¶ 22
Having reviewed Mr. Malackowski’s deposition testimony and earlier expert report, the Court concludes that the opinions express by Mr. Malackowski in his Reply declaration at ¶ 22 are similar to earlier opinions expressed by Mr. Malackowski and therefore are not new. Accordingly, the Court overrules Volterra’s objection.
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IV. INFRINGEMENT
A. Background
22
On February 2, 2010, the Court issued its Claim Construction Order, in which it construed ten terms used in the asserted claims of the Burstein Patents.
See
Docket No. 697 (Claim Construction Order); Docket No. 755 (Order Denying Motion for Reconsideration). At the request of the parties, the Court issued a supplemental claim construction order on June 9, 2010, construing the claim term “fabricated on a surface of the substrate.”
See
Docket No. 833 (Order Construing Claim Term “Fabricated on a Surface of the Substrate”). In that order, the Court adopted Plaintiffs proposed construction of the term and rejected Defendants’ proposed construction. In light of the Court’s constructions, on August 6, 2010, Defendants stipulated that they “have directly and indirectly, both contributorily and by inducement, infringed claims 9, 11, 16, 17, 18 and 19 of the '522 patent by making, using, offering for sale, and/or selling” the accused products.
See
Docket No. 894. Defendants did not, however, stipulate to infringement of any of the asserted claims of the '264 patent, despite having stated on several occasions to the Court that they would likely do so.
23
According to Defendants, their eleventh-hour decision
not
to stipulate to infringement of the '264 patent was in response to Dr. Thomas Szepesi’s July 14, 2010 rebuttal expert report on invalidity, in which he [REDACTED]
Volterra now brings a motion for summary judgment that the accused products infringe claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent. The only dispute is [REDACTED]
Finally, Volterra asserts that to the extent that Defendants now take the position that this limitation is not met, the Court should refuse to consider Defendants’ non-infringement defense, impose monetary sanctions and/or preclude Defendants from arguing that [REDACTED] either on summary judgment or at trial. Volterra offers several grounds in support of its request for sanctions.
First, Volterra cites to Defendants’ alleged failure to provide discovery on infringement despite the Court’s order at the July 29, 2010 hearing on Volterra’s motion to compel that Defendants must provide such discovery if they did not stipulate to infringement.
*1057
Second, Volterra points to Defendants’ refusal to stipulate to infringement despite their repeated assertions to the Court that they would do so.
Third, Volterra cites to Defendants’ failure to disclose to the Court at the July 29, 2010 hearing their new theory of non-infringement, even though Dr. Fair’s Reply Invalidity Expert Report, which included this theory, had been served several days earlier, on July 26, 2010.
Fourth, Volterra asserts that Defendants’ non-infringement defense is being asserted for an improper purpose, namely, to use as leverage to induce Volterra to drop its argument that [REDACTED]
Fifth, in its Reply brief, Volterra points to a figure included in one of Defendants’ briefs that, while purportedly duplicating a figure [REDACTED], alters the figure by [REDACTED]
Defendants oppose Plaintiffs request for summary judgment of infringement for the reasons stated above, namely, that there is evidence that the accused devices do not include [REDACTED] Defendants further assert that sanctions should not be imposed because: 1) they properly moved for a protective order to address remaining discovery disputes relating to the infringement-related discovery sought by Volterra; and 2) they produced the discovery required by the Court in its ruling on that motion. As to Defendants’ allegedly untimely disclosure of its new non-infringement position, Defendants argue that it is Volterra that has engaged in “misconduct” by trying to “slip in a new limitation.” Opposition to Volterra’s Infringement SJ Motion at 15. As to Volterra’s request that Defendants be precluded from arguing that [REDACTED] Defendants argue that there is no authority to support the imposition of such drastic sanctions under circumstances such as this.
B. Whether the Court Should Enter Summary Judgment of Infringement
The only remaining question before the Court with respect to infringement is whether [REDACTED] as required under the Court’s claim construction. Based on the admissible evidence in the record, the Court concludes that this limitation is met as a matter of law and therefore, that the accused products infringe the asserted claims at issue.
A determination of infringement is a two-step process.
Wright Med. Tech., Inc. v. Osteonics Corp.,
122 F.3d 1440, 1443 (Fed.Cir.1997). The first step is claim construction, which is a question of law to be determined by the court.
Id.
The second step is an analysis of infringement, in which it must be determined whether a particular device infringes a properly construed claim.
Id.
A device literally infringes if each of the elements of the asserted claims is found in the accused device.
Id.
In the alternative, a device may infringe under the doctrine of equivalents “if every limitation of the asserted claim, or its ‘equivalent,’ is found in the accused subject matter, where an ‘equivalent’ differs from the claimed limitation only insubstantially.”
Ethicon Endo-Surgery, Inc. v. United States Surgical Corp.,
149 F.3d 1309, 1315 (Fed.Cir.1998). As infringement is a question of fact, the issue on summary judgment is whether there is any genuine issue of material fact regarding infringement.
Bai v. L & L Wings, Inc.,
160 F.3d 1350, 1353 (Fed.Cir.1998).
The Court has construed the claim term “metalized pad” as follows:
Pads that include an under-bump metalization layer (UBM) that forms an interface between the top metal layer of the integrated circuit and the solder balls (bumps) that are often used in flip-chip type integrated circuits. Pads in an in
*1058
tegrated circuit are openings in the top passivation layer that allow connection to the top metal layer, to enable formation of connections between the integrated circuit and external circuit element.
The Court rejects Defendants’ assertion that it must revisit its construction of the term [REDACTED] Therefore, Defendants have not established that there is a genuine issue of material fact as to infringement of claims 26 and 34 of the '264 Patent and claims 22 and 24 of the '522 Patent. Accordingly, Volterra is entitled to summary judgment that those claims are infringed by the accused products.
C. Whether the Court Should Impose Sanctions
Volterra seeks a variety of sanctions under Rule 37 of the Federal Rules of Civil Procedure, arguing that Defendants have engaged in misconduct and have pursued a frivolous non-infringement position as to [REDACTED], While the Court agrees with Volterra that Defendants’ non-infringement position is extremely weak, it cannot say that the argument is so baseless as to warrant the imposition of sanctions. Nor does the Court find that Defendants have engaged in misconduct of the sort that would justify the imposition of sanctions, either monetary or in the form of preclusion. Defendants’ failure to produce all of the infringement-related discovery sought by Plaintiffs was the subject of legitimate disputes, which Defendants brought to the attention of the Court for resolution. Further, Defendants were not
required to
stipulate to non-infringement, as it is Volterra’s burden to establish infringement. The fact that Defendants did not alert the Court to the new argument at the July 29 hearing also does not offer a sufficient basis for imposing sanctions.
The Court also does not find that Defendants’ offer to withdraw their infringement position if Volterra agreed to drop its defense based on [REDACTED] to be obviously improper. Given that Volterra’s position [REDACTED] is closely related to Defendants’ non-infringement position, the Court finds no bad faith in Defendants’ offer. Similarly, the [REDACTED] figure that Plaintiff says was doctored in one of Defendants’ briefs does not rise to the level of sanctionable conduct. Given that on the previous page of the same brief, the [REDACTED] figure appears to be represented accurately, the Court is not persuaded that Defendants intended to mislead the Court.
See
Defendants’ Opposition to Volterra’s Obviousness SJ Motion at 210. Therefore, the Court denies Volterra’s request for sanctions under Rule 37.
V. INVALIDITY
A. Legal Standards
1. Anticipation
Under 35 U.S.C. § 102 (a), a patent may be anticipated if the claimed invention was described in a printed publication “before the invention thereof by the applicant for patent.” 35 U.S.C. § 102 (a). The “reference must describe the applicant’s claimed invention sufficiently to have placed a person of ordinary skill in the field of the invention in possession of it.”
In re Spada,
911 F.2d 705, 708 (Fed.Cir.1990). In particular, to establish anticipation under § 102(a) on the basis of a printed publication, “each and every limitation [must be] found either expressly or inherently in a single prior art reference.”
Oakley Inc. v. Sunglass Hut Int’l,
316 F.3d 1331, 1339 (Fed.Cir.2003) (quotations omitted). A limitation is “inherent” if it is “necessarily present” in the prior art invention.
SmithKline Beecham Corp. v. Apotex Corp.,
403 F.3d 1331, 1343 (Fed.Cir.2005). “Because the hallmark of anticipation is prior invention, the prior art reference — in order to anticipate under 35
*1059
U.S.C. § 102 — must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’ ”
Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed.Cir.2008) (citing
Connell v. Sears, Roebuck & Co.,
722 F.2d 1542, 1548 (Fed.Cir.1983)). In order to anticipate, the prior art reference also must enable one of ordinary skill in the art to make the invention without undue experimentation.
Impax Labs., Inc. v. Aventis Pharms. Inc.,
545 F.3d 1312, 1314 (Fed.Cir.2008).
In a patent infringement action, the accused infringer bears the burden of proving invalidity of the asserted patent by clear and convincing evidence.
Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P.C.,
482 F.3d 1347, 1357-58 (Fed.Cir.2007). “[A]nticipation is a question of fact, including whether or not an element is inherent in the prior art.”
Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc.,
471 F.3d 1369, 1375 (Fed.Cir.2006). However, summary judgment of no anticipation is appropriate where no reasonable jury could find by clear and convincing evidence that the claimed invention occurred prior to the critical date based on the evidence produced by the accused infringer.
Central Admixture Pharmacy Services,
482 F.3d at 1358 .
2. Obviousness
The standard regarding obviousness is set forth in 35 U.S.C. § 103 (a), which provides, in relevant part, as follows:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if 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 (a). In
Graham v. John Deere Co.,
the Supreme Court instructed courts to address the question of obviousness against the “background” of three inquiries: 1) the scope and content of the prior art; 2) differences between the prior art and the claims at issue; and 3) the level of ordinary skill in the pertinent art. 383 U.S. 1, 17 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966). In addition, under
Graham
courts are to consider “secondary considerations” that may be relevant to obviousness, such as “commercial success” and “long felt but unsolved needs.”
Id.
In order to be relevant, there must be a nexus between these secondary considerations and the claimed invention.
Ormco Corp. v. Align Tech. Inc.,
463 F.3d 1299, 1311-1312 (Fed.Cir.2006) (holding that commercial success was not relevant to obviousness because it was due to unclaimed features and features that were not novel).
In
Great Atl. & Pac. Tea Co. v. Supermarket Equip.,
the Court explained the policy on which the nonobviousness requirement is based:
The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.
340 U.S. 147, 152-53 , 71 S.Ct. 127 , 95 L.Ed. 162 (1950). On the other hand, “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 Int’l Co.
*1060
v. Teleflex Inc.,
550 U.S. 398, 418 , 127 S.Ct. 1727 , 167 L.Ed.2d 705 (2007). For example, “when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.”
Id.
at 416 , 127 S.Ct. 1727 . It may also be “helpful” to ask whether there was a “teaching, suggestion, or motivation to combine known elements” that would have rendered an invention obvious (“the TSM test”).
Id.
at 418 , 127 S.Ct. 1727 .
In
KSR,
the Supreme Court decided that the Federal Circuit had applied the TSM test too rigidly by holding that the patent examiner should look only to the question the patentee was trying to resolve in determining whether there was a motivation to combine elements found in prior art.
Id.
at 420 , 127 S.Ct. 1727 . The Court explained, “[t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.”
Id.
Therefore, “any need or problem known in the field of the endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
Id.
While the ultimate conclusion of obviousness is a legal question, it is based upon underlying facts.
In re Icon Health & Fitness,
496 F.3d 1374, 1378 (Fed.Cir.2007). “Underlying facts include the scope and content of the prior art, the level of ordinary skill in the art at the time of the invention, objective evidence of non-obviousness, and differences between the prior art and the claimed subject matter.”
Id.
(citing
Graham,
383 U.S. at 17-18 , 86 S.Ct. 684 ). The presence or absence of a motivation to combine is also a question of fact,
see In re Gartside,
203 F.3d 1305, 1316 (Fed.Cir.2000), as are the “secondary considerations” discussed in
Graham. See PharmaStem Therapeutics v. ViaCell, Inc.,
491 F.3d 1342, 1359 (Fed.Cir.2007). Obviousness must be proved by clear and convincing evidence.
Procter & Gamble Company v. Teva Pharmaceuticals USA, Inc.,
566 F.3d 989, 994 (Fed.Cir.2009). Thus, the inquiry on summary judgment is whether a jury applying the clear and convincing evidence standard could reasonably find, based on the evidence produced by the accused infringer, that the claimed invention was obvious.
See TriMed, Inc. v. Stryker Corp.,
608 F.3d 1333, 1339-1340 (Fed.Cir.2010).
3. Prior Art
Under 35 U.S.C. § 102 , a reference may qualify as invalidating prior art on several grounds. First, under § 102(a), a person is not entitled to a patent if “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.” The Federal Circuit has explained that § 102(a) establishes that a person cannot “patent what was already known to others.”
Woodland Trust v. Flowertree Nursery, Inc.,
148 F.3d 1368, 1370 (Fed.Cir.1998). Second, under § 102(b), a person is not entitled to a patent if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102 (b). This provision “establishes a one year grace period based on publication or public use or sale, after which an inventor is barred from access to the patent system.”
Id.
The provision is aimed at the policy of encouraging an inventor “to enter the patent system promptly, while recognizing a one year period of public knowledge or use or commercial exploitation before the patent application must be filed.”
Id.
Under § 102(b), the date one year pri- or to the filing date of the patent applica
*1061
tion is considered the “critical date.”
Orion IP, LLC v. Hyundai Motor America,
605 F.3d 967, 974 (Fed.Cir.2010). Third, a patent application may be prior art under § 102(e) if it was filed in the United States before the invention date of the invention in the asserted patent. 35 U.S.C. § 102 (e). This provision is limited, however, by 35 U.S.C. § 103 (c)(1), which provides:
Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
35 U.S.C. § 103 (c)(1).
a. Invention Date
In determining priority of invention for the purposes of §§ 102(a) and (e), courts look to when the patentee conceived of the invention and when it was reduced to practice.
See Mahurkar v. C.R. Bard, Inc.,
79 F.3d 1572, 1577 (Fed.Cir.1996). In particular, the Federal Circuit has explained that “[i]n the United States, the person who first reduces an invention to practice is ‘prima facie the first and true inventor.’ ”
Id.
(citing
Christie v. Seybold,
55 F. 69, 76 (6th Cir.1893)). “However, the person ‘who first conceives; and, in a mental sense, first invents ... may date his patentable invention back to the time of its conception, if he connects the conception with its reduction to practice by reasonable diligence on his part, so that they are substantially one continuous act.’ ”
Id.
(citation omitted). Thus, to establish an invention date prior to the date of the patent filing date, a patentee must demonstrate “conception coupled with reasonable diligence in reducing the invention to practice ----”
Singh v. Brake,
317 F.3d 1334, 1340 (Fed.Cir.2003).
“To have conceived of an invention, an inventor must have formed in his or her mind ‘a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice.’ ”
Mahurkar,
79 F.3d at 1577 (quoting
Burroughs Wellcome Co. v. Barr Labs., Inc.,
40 F.3d 1223, 1228 (1994)). “A conception must encompass all limitations of the claimed invention and is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.”
Singh,
317 F.3d at 1340 . Where a party seeks to establish conception through the oral testimony of the inventor, corroboration of the inventor’s story must be presented.
Mahurkar,
79 F.3d at 1577 . In assessing corroboration of oral testimony, a “rule of reason” is applied whereby all pertinent evidence is analyzed to determine whether the inventor’s story is credible.
Id.
To show reduction to practice, “an inventor must demonstrate that the invention is suitable for its intended purpose.”
Id.
at 1578 ;
see also Cooper v. Goldfarb,
154 F.3d 1321, 1330 (Fed.Cir.1998) (“In order to corroborate a reduction to practice, it is not necessary to produce an actual over-the-shoulder observer. Rather, sufficient circumstantial evidence of an independent nature can satisfy the corroboration requirement.... Furthermore, an actual reduction to practice does not require corroboration for every factual issue contested by the parties”).
It is presumed that the invention date is the filing date of the asserted patent, or the asserted patent’s parent, until an earlier date is proved.
Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
796 F.2d 443, 449 (Fed.Cir.1986).
*1062
Once a party challenging a patent’s validity makes a prima facie case of invalidity based on prior art, the burden shifts to the patentee to come forth with evidence of an earlier invention date.
PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299, 1305 (Fed.Cir.2008). The ultimate burden, however, remains with the alleged infringer to prove invalidity by clear and convincing evidence.
Id.; see also Mahurkar,
79 F.3d at 1578 (explaining that where patentee had produced evidence that he conceived and reduced invention to practice before allegedly invalidating prior art reference was published, burden was on alleged infringer to establish by clear and convincing evidence that either the patentee had not conceived and reduced invention to practice prior to publication of reference or that patentee had not conceived of invention prior to publication and worked diligently to reduce it to practice);
see also Innovative Scuba Concepts, Inc. v. Feder Industries, Inc.,
26 F.3d 1112, 1115 (Fed.Cir.1994) (holding that district court erred in placing ultimate burden on patentee to prove invention date prior to filing of asserted patent where patentee had produced evidence of earlier invention date and explaining that presumption of patent validity under 35 U.S.C. § 282 places ultimate burden on party asserting invalidity).
b. “Printed Publication”
“[I]n order to invalidate a patent based on prior knowledge or use, that knowledge or use must have been available to the public.”
Woodland Trust v. Flowertree Nursery, Inc.,
148 F.3d at 1370 ;
see also Ormco v. Align Technology, Inc.,
463 F.3d 1299, 1305 (Fed.Cir.2006) (“[a]rt that is not accessible to the public is generally not recognized as prior art”). Thus, public accessibility is the “touchstone” in determining whether a reference is a “printed publication.”
In re Hall,
781 F.2d 897, 899 (Fed.Cir.1986). A party seeking to establish invalidity based on a prior art reference “must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation.”
Id.
The test for sufficient public accessibility to qualify as prior art is a legal determination based on underlying fact issues, subject to a case-by-case analysis.
See In re Wyer,
655 F.2d 221, 224 (C.C.P.A.1981).
In the case of an academic paper, such as a dissertation thesis that has been deposited in a university library, the Federal Circuit has held that as a general rule, whether the paper is a “printed publication” depends on whether it has been “meaningfully catalogued and shelved.”
In re Cronyn,
890 F.2d 1158, 1161 (Fed.Cir.1989). Thus, in
In re Bayer,
the Federal Circuit held that a dissertation thesis was not a “printed publication” because at the relevant time, it had not yet been catalogued and remained in a private library office available only to library employees. 568 F.2d 1357, 1359-1360 (C.C.P.A.1978). Similarly, in
In re Cronyn,
the court held that a student thesis was not a “printed publication” because it was not meaningfully catalogued where the title and author’s name were recorded on an index card, which was stored in alphabetical order by author’s name with hundreds of other index cards in a shoe box that was kept in the chemistry department library. 890 F.2d 1158, 1161 (Fed.Cir.1989). On the other hand, in
In re Hall,
a dissertation was found to be a “printed publication” based on an affidavit by the university librarian describing the library’s general procedures regarding- cataloguing and shelving of dissertation theses and opining that the dissertation would likely have been catalogued and available to the public at the relevant time. 781 F.2d at 899-900 .
*1063
Even where a dissertation has not been catalogued or shelved, however, it may be considered a “printed publication” on other grounds.
See In re Klopfenstein,
380 F.3d 1345, 1348 (Fed.Cir.2004) (noting that cases discussed above do not limit courts to finding that a reference is a “printed publication” only on the basis that they have been meaningfully catalogued and shelved). Thus, in
Cornell University v. Hewlett-Packard, Co.,
the court held that “[t]he question of whether a reference was ‘meaningfully catalogued or indexed’ falls to the side when a ‘research aid’ enables one of skill in the art to locate the sought-after reference.” 2008 U.S. Dist. LEXIS 39343 , at *21-22 (N.D.N.Y. May 14, 2008) (holding that where article in seminal and broadly available electrical engineering publication referred readers to thesis for specific illustration of algorithm, and where the article provided the information necessary for a reader to find the thesis, thesis was a “printed publication” regardless of whether it was catalogued at relevant time).
4. Public Use/ On-Sale Bar
As stated above, under 35 U.S.C. § 102 (b), a patent can be invalidated if the invention was “in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.” “The purpose of the public use bar to patentability is to discourage ‘the removal of inventions from the public domain which the public justifiably comes to believe are freely available.’ ”
American Seating Co. v. USSC Group, Inc.,
514 F.3d 1262, 1267 (Fed.Cir.2008) (quoting
Bernhardt, L.L.C. v. Collezione Europa USA, Inc.,
386 F.3d 1371, 1379 (Fed.Cir.2004)). The test for public use is “whether the purported use: (1) was accessible to the public; or (2) was commercially exploited.”
Id.
(quoting
Invitrogen Corp. v. Biocrest Mfg., L.P.,
424 F.3d 1374, 1380 (Fed.Cir.2005)). Whether a patent is invalid based on public use under § 102(b) is a question of law based on underlying questions of fact.
Minnesota Mining & Mfg. v. Chemque, Inc.,
303 F.3d 1294, 1301 (Fed.Cir.2002).
5. Enablement/Written Description
The Patent Act requires that every patent must contain a written description and be enabled, as stated in 35 U.S.C. § 112 ¶ 1, which provides as follows:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
In
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company,
the Federal Circuit made clear that the written description requirement is distinct from the enablement requirement, although the two “often rise and fall together.” 598 F.3d 1336, 1352 (Fed.Cir.2010).
To satisfy the written description requirement, “the description ‘must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’ ”
Id.
at 1351 (quoting
In re Gosteli,
872 F.2d 1008, 1012 (Fed.Cir.1989)). “In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”
Id.
(quoting
Ralston Purina Co. v. Far-Mar-Co, Inc.,
772 F.2d 1570, 1575 (Fed.Cir.1985)). The “test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”
Id.
To meet this requirement, “[a]n applicant is not required to describe
*1064
in the specification every conceivable and possible future embodiment of his invention.”
Cordis Corp. v. Medtronic AVE, Inc.
339 F.3d 1352, 1365 (Fed.Cir.2003) (quoting
Rexnord Corp. v. Laitram Corp.,
274 F.3d 1336, 1344 (Fed.Cir.2001)). Thus, “[a] specification may, within the meaning of 35 U.S.C. § 112 para. 1, contain a written description of a broadly claimed invention without describing all species that [the] claim encompasses.”
Id.
(quoting
Utter v. Hiraga,
845 F.2d 993, 998 (Fed.Cir.1988)). Further, “[a] patent need not teach, and preferably omits, what is well known in the art.”
Epistar Corp. v. International Trade Commission,
566 F.3d 1321, 1336 (Fed.Cir.2009) (quoting
Spectrar-Physics, Inc. v. Coherent, Inc.,
827 F.2d 1524, 1534 (Fed.Cir.1987)).
The test for enablement is whether a person “skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.”
Sitrick v. Dreamworks, LLC,
516 F.3d 993, 999 (Fed.Cir.2008) (citation omitted). In determining whether a disclosure requires undue experimentation, courts may consider the following factors:
(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.
ALZA Corp. v. Andrx Pharmaceuticals, LLC,
603 F.3d 935, 940 (Fed.Cir.2010) (quoting
In re Wands,
858 F.2d 731, 737 (Fed.Cir.1988)). To satisfy the enablement requirement, the full scope of the claimed invention must be enabled.
Sitrick,
516 F.3d at 999 . Enablement is a question of law based on underlying factual determinations.
Durel Corp. v. Osram Sylvania Inc.,
256 F.3d 1298, 1307 (Fed.Cir.2001).
6. Indefiniteness
The requirement that claims be sufficiently “definite” is set forth in 35 U.S.C. § 112 , ¶ 2, which provides that, “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” “The definiteness inquiry focuses on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification.”
Union Pacific Resources Co. v. Chesapeake Energy Corp.,
236 F.3d 684, 692 (Fed.Cir.2001). “Yet, because claim construction frequently poses difficult questions over which reasonable minds may disagree, proof of indefiniteness must meet ‘an exacting standard.’ ”
Haemonetics Corp. v. Baxter Healthcare Corp.,
607 F.3d 776, 783 (Fed.Cir.2010) (quoting
Halliburton Energy Servs., Inc. v. M-I LLC,
514 F.3d 1244, 1249 (Fed.Cir.2008)). The Federal Circuit in
Haemonetics
explained:
Only claims not amenable to construction or insolubly ambiguous are indefinite. A claim is not indefinite merely because parties disagree concerning its construction. An accused infringer must thus demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art.
Id.
(citations omitted). Indefiniteness is a question of law.
Honeywell International, Inc. v. U.S.,
609 F.3d 1292, 1301 (Fed.Cir.2010).
*1065
7. Inequitable Conduct
“A patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution.”
Digital Control Inc. v. Charles Mach. Works,
437 F.3d 1309, 1313 (Fed.Cir.2006);
see also
37 C.F.R. § 1.56 (a) (“Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.”). Both materiality and intent must be proven by clear and convincing evidence.
Norian Corp. v. Stryker Corp.,
363 F.3d 1321, 1330-31 (Fed.Cir.2004). “When both materiality and intent have been established, the court must balance the equities and determine whether the applicant’s conduct in prosecuting the patent application was egregious enough to warrant holding the entire patent unenforceable.”
Optium Corp. v. Emcore Corp.,
603 F.3d 1313, 1320 (Fed.Cir.2010) (citing
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
537 F.3d 1357, 1365 (Fed.Cir.2008) and
J.P. Stevens & Co. v. Lex Tex Ltd.,
747 F.2d 1553, 1560 (Fed.Cir.1984) (“Once the thresholds of materiality and intent are established, the court must balance them and determine as a matter of law whether the scales tilt to a conclusion that inequitable conduct occurred.”)). In conducting this balancing, “[t]he more material the omission or the misrepresentation, the lower [the] level of intent [is] required to establish inequitable conduct, and vice versa.”
Star Scientific,
537 F.3d at 1367 (quoting
Critikon, Inc. v. Becton Dickinson Vascular Access, Inc.,
120 F.3d 1253, 1256 (Fed.Cir.1997)). In
Star Scientific,
the Federal Circuit described the balancing as follows:
At this second stage ... the question is no longer whether materiality and/or intent to deceive were proven with evidence that is sufficiently clear and convincing. While the facts of materiality and intent to deceive must be proven by clear and convincing evidence, the district court must balance the substance of those now-proven facts and all the equities of the case to determine whether the severe penalty of unenforceability should be imposed. It is this balancing that is committed to the district court’s discretion.
Id.
“Information is material if there is a ‘substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent.’ ”
Avid Identification Systems, Inc. v. Crystal Import Corp.,
603 F.3d 967, 971 (Fed.Cir.2010) (quoting
J.P. Stevens & Co.,
747 F.2d at 1559 ). In addressing whether information is material, the Federal Circuit looks to PTO Rule 56 and associated regulation, 37 C.F.R. § 1.56 .
Avid,
603 F.3d at 972 -973 (citing 37 C.F.R. § 1.56 (b)). Section 1.56 defines materiality as follows:
Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
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37 C.F.R. § 1.56 (b). Thus, an applicant has no obligation to disclose to the PTO a reference that is otherwise material where it is cumulative of information or references that have already been disclosed.
Halliburton Co. v. Schlumberger Technology Corp.,
925 F.2d 1435, 1441 (Fed.Cir.1991). Nor must a reference actually invalidate a patent to be material, or even be prior art.
See GFI, Inc. v. Franklin Corp.,
265 F.3d 1268, 1274 (Fed.Cir.2001) (“Materiality is not limited to prior art but instead embraces any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent”).
With regard to the deceptive intent prong, the Federal Circuit has held that “materiality does not presume intent, which is a separate and essential component of inequitable conduct.”
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
537 F.3d at 1366 . Rather, inequitable conduct will be found only when it has been shown by clear and convincing evidence that an applicant had the specific intent to mislead or deceive the PTO, that is, “that the applicant made a deliberate decision to withhold a known material reference.”
Molins PLC v. Textron, Inc.,
48 F.3d 1172, 1181 (Fed.Cir.1995). “To satisfy the requirement of the intent to deceive element of inequitable conduct, the involved conduct, viewed in light of all the evidence, including evidence of good faith, must indicate sufficient culpability to require a finding of intent to deceive.”
M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., Inc.,
439 F.3d 1335, 1341 (Fed.Cir.2006) (quotations omitted). In
M. Eagles Warehouse,
the Federal Circuit explained that “just as a good faith explanation can be presented as evidence to refute an inference of intent, and usually is so presented, the absence of such an explanation can constitute evidence to support a finding of intent.”
Id.
It cautioned, however, that “[w]hen the absence of a good faith explanation is the only evidence of intent, ... that evidence alone does not constitute clear and convincing evidence warranting an inference of intent.”
Id.
at 1341 . Similarly, the fact that information later found material was not disclosed cannot, by itself, satisfy the deceptive intent element of inequitable conduct.
Id.
at 1340 ;
see also Kingsdown Med. Consultants, Ltd. v. Hollister Inc.,
863 F.2d 867, 876 (Fed.Cir.1988) (en banc) (holding even gross negligence insufficient to prove intent to deceive).
The Federal Circuit has explained that because direct evidence of deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial evidence.
Cargill, Inc. v. Canbra Foods, Ltd.,
476 F.3d 1359, 1364 (Fed.Cir.2007). Nonetheless, an inference of deceptive intent “must not only be based on sufficient evidence and be reasonable in light of that evidence, but it must also be the single most reasonable inference able to be drawn from the evidence to meet the clear and convincing standard.”
Star Scientific,
537 F.3d at 1366 (citing
Scanner Techs. Corp. v. ICOS Vision Sys. Corp.,
528 F.3d 1365, 1376 (Fed.Cir.2008) (‘Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference”)).
Under Rule 56 and Section 1.56, a duty of candor to the PTO is owed by (1) each named inventor, (2) each attorney or agent that prepares or prosecutes the application, and (3) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor or assignee.
Avid,
603 F.3d at 973 . In
Avid,
the Federal Circuit addressed the meaning of the phrase “substantively involved in the prep
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aration or prosecution of the application.”
Id.
The court held that “substantively involved” means “that the involvement relates to the content of the application or decisions related thereto, and that the involvement is not wholly administrative or secretarial in nature.”
Id.
(citing Manual of Patent Examining Procedures § 2001.01 (8th ed., rev. 2, May 2004)).
The burden of proving inequitable conduct lies with the accused infringer.
Star Scientific,
537 F.3d at 1365 (citing
Ulead Sys., Inc. v. Lex Computer & Mgmt. Corp.,
351 F.3d 1139 , 1146 (Fed.Cir.2003)). “The need to strictly enforce the burden of proof and elevated standard of proof in the inequitable conduct context is paramount because the penalty for inequitable conduct is so severe, the loss of the entire patent even where every claim clearly meets every requirement of patent-ability.”
Id.
Further, even where both materiality and intent to deceive are established by clear and convincing evidence, the court may decline to find a patent unenforceable on the basis of inequitable conduct.
Id.
B. Prior Art Summary Judgment Motion
1.Background
In its Prior Art SJ Motion, Plaintiff seeks summary judgment that the following references that Defendants rely upon in support of their invalidity defenses do not qualify as prior art, as a matter of law:
1.
The dissertation thesis by Stratakos entitled “Highr-Efficiency Low-Voltage DC-DC Conversion for Portable Applications” (“the Stratakos Thesis”):
Volterra argues that the Stratakos Thesis is not prior art under either § 102(a) or (b). With respect to § 102(a), Plaintiff asserts that the undisputed evidence shows tfiat the Stratakos Thesis was not publicly available at the time of invention' — • which Volterra asserts is April 3, 1998. Plaintiffs Prior Art SJ Motion at 1. Plaintiff further asserts that the Stratakos Thesis was not publicly available on the critical date under § 102(b), that is, February 4, 1999, and therefore also is not prior art under that provision.
Id.
2. U.S. Patent Nos. 6,133,631 (“Joshi '631 Patent”), 6,189,678 (“Joshi '678 Patent”) & 6,198,261 (“Schultz '261 Patent”):
Volterra argues that these references do not qualify as prior art under §§ 102(a) or (b) because they were not issued before the April 3, 1998 invention date or the February 4, 1999 critical date.
Id.
In particular, the Joshi '634 Patent issued on October 17, 2000; the Joshi '678 Patent issued on December 3, 2002, and the Schultz '261 Patent issued on March 6, 2001.
Id.
at 15-16. Volterra further asserts that these references do not qualify as prior art under § 102(e) because the patent applications were not filed before the April 3, 1998 invention date.
Id.
In particular, the Joshi '634 application was filed on August 5,1998; the Joshi '678 Patent resulted from a continuation-in-part filed on March 15, 1999, and the Schultz '261 application was filed on October 30, 1998. Finally, as to the Schultz '261 Patent, Volterra asserts that this reference also does not qualify as prior art under §§ 103(c) and 102(e) because the Schultz '261 Patent and the Burstein Patents were, at the time of the invention, owned by the same person or subject to an obligation of assignment to the same person.
Id.
at 18.
3.
Xunwei Zhou’s article entitled “Low-voltage High-efficiency Fast-transient Voltage Regulator Module (“Zhou”) and International Patent Application Publication No. WO
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99/31790 (“Stratakos '790 Publication”):
Volterra asserts that these publications are not prior art under §§ 102(a) or (b) because they were not published before the April 3, 1998 invention date or the February 4,1999 critical date.
Id.
at 1, 15-16. Zhou is a dissertation thesis that is dated July 1999.
Id.
at 15. The Stratakos '790 Publication was published June 24,1999.
4.
U.S. Patent No. 6,020,729 (“Stratakos '729 Patent”):
Volterra contends that the Stratakos '729 Patent is not prior art under §§ 102(a) and (b) because the patent issued on February 1, 2000, after the invention date and the critical date and further, that it does not qualify as prior art under §§ 103(c) and 102(e) because the Stratakos '729 Patent and the Burstein Patents were, at the time of invention, owned by the same person or subject to an obligation of assignment to the same person.
Id.
at 2,17.
Volterra’s prior art summary judgment motion rests on four main contentions: 1) the evidence establishes, as a matter of law, that the invention date of the asserted patents was April 3, 1998; 2) in any event, Defendants have conceded in their interrogatory responses that the invention was conceived and reduced to practice no later than December 1998; 3) the evidence establishes, as a matter of law, that the Stratakos Thesis was not publicly available until mid-February 1999, which is after both the invention date and the critical date; and 4) as to the Stratakos '729 Patent and the Schultz '261 Patent, these reference cannot be prior art under § 102(e) because they were commonly owned with the Burstein Patents at the time of the invention.
a. Evidence of Invention Date
In support of its contentions that the date of invention was April 3, 1998 and the first reduction to practice was September 5, 1998, Plaintiff cites to the declaration of Dr. Burstein describing the development of a device referred to as “Tut,” which he contends was the first embodiment of the invention claimed in the asserted patents.
24
Plaintiffs Prior Art SJ Motion at 2 (citing Fisher Comb. Decl., Ex. 5 (Reply Declaration of Andrew Burstein in Support of Volterra Semiconductor Corporation’s Motion for Entry of Preliminary Injunction (“Burstein Deck”))). According to Dr. Burstein, Tut was demonstrated at Volterra’s offices on September 5, 1998 and shown to work as a buck regulator. Fisher Comb. Deck, Ex. 5 (Burstein Deck) at ¶¶ 2-14. Volterra also offers the lab notebooks of Drs. Burstein and Nickel to corroborate the dates of conception and reduction to practice, along with the opinion of its expert, Dr. Szepesi, based on his review of the notebooks, that the inventors had a “definite and permanent idea of the complete and operative invention” by April 3, 1998. Plaintiffs Prior Art SJ Motion at 2 (citing Comb. Fisher Deck, Exs. 7 & 8 (notebooks); Ex. 22 (Szepesi 7/14/10 Rebuttal Report on Invalidity) at ¶¶ 376, 389-402). According to Volterra, the evidence supporting the April 3, 1998 conception date is overwhelming and largely undisputed and therefore, Plaintiff is entitled to summary adjudication as to this date.
Id.
at 9.
Defendants reject Volterra’s position, arguing that Volterra bears a “heavy bur
*1069
den” to establish an invention date that is earlier than the presumed invention date of February 4, 2000, that is, the application date. Defendants’ Opposition to Plaintiff Volterra Semiconductor Corporation’s Motion for Partial Summary Judgment that Certain References Relied Upon by Defendants Do Not Qualify as Prior Art (“Defendants’ Opposition to Plaintiffs Prior Art SJ Motion”) at 10. According to Defendants, the evidence offered by Volterra to support its invention and reduction to practice dates is insufficient to meet this burden because: 1) it does not establish, as a matter of law, that either the concept or the prototype reducing the concept to practice included all of the claimed limitations of the invention; and 2) it consists solely of testimony and documents by the inventors, which is insufficient, as a matter of law, without corroborating evidence.
Id.
at 11 (citing
Mahurkar,
79 F.3d at 1577 ;
Shu-Hui Chen v. Bouchard,
347 F.3d 1299, 1309 (Fed.Cir.2003)). At a minimum, Defendants assert, there are disputed issues of fact with respect to when the invention was conceived and reduced to practice that preclude summary adjudication of this issue.
Id.
at 12-21. In particular, Defendants cite to Dr. Fair’s opinion that the April 3, 1998 entry in Dr. Bur-stein’s lab notebook does not disclose all of the limitations of the asserted claims and that the Tut device tested on September 5, 1998 also did not include every claim limitation.
Id.
at 13 (citing Fair 9/10/10 Opposition Deck, ¶¶ 28-29, 31-34).
In its Reply brief, Volterra rejects Defendants’ assertion that the conception and reduction to practice of the invention are not corroborated by independent evidence. Reply in Support of Plaintiff Volterra Semiconductor Corporation’s Motion for Partial Summary Judgment that Certain References Relied Upon by Defendants do not Qualify as Prior Art (“Reply on Plaintiffs Prior Art SJ Motion”) at 4-6. Volterra contends that the corroborating evidence of conception and reduction to practice is “overwhelming.”
Id.
at 4. With respect to reduction to practice, Volterra cites,
inter alia,
declarations by David Lidsky and Aaron Schultz, coworkers of the inventors who were present for the September 5, 1998 test, as well as pictures of the devices that were tested that day.
Id.
at 4-5 (citing Reply Declaration of David Lidsky in Support of Plaintiff Volterra Semiconductor Corporation’s Motion for Partial Summary Judgment That Certain Prior Art References Relied Upon by Defendants Do Not Qualify as Prior Art (“Lidsky Reply Deck”) & Reply Declaration of Aaron Schultz in Support of Plaintiff Volterra Semiconductor Corporation’s Motion for Partial Summary Judgment That Certain Prior Art References Relied Upon by Defendants Do Not Qualify as Prior Art (“Schultz Reply Deck”)). In addition, Volterra asserts, the declarations of Drs. Burstein, Schultz and Lidsky establish that the prototype that was tested on September 5, 1998 contained all the elements of the asserted claims.
Id.
at 6. Volterra also points to the opinions of its expert, Dr. Szepesi, who reviewed the documents and images of the device that was tested and found that it worked as a Buck regulator and contained all the claim limitations.
Id.
(citing Szepesi 7/14/10 Rebuttal Report on Invalidity, ¶¶ 377-388 & Comb. Fisher Deck, Ex. 23 (claim chart)). As to the April 3 conception date, Volterra argues that there is also extensive evidence, pointing to the declarations of Drs. Bur-stein, Lidsky and Schultz confirming that by late April and early May 1998, Volterra was in the process of proceeding to “tape-out”
25
of a flip-chip prototype embodying the Burstein inventions.
Id.
at 7.
*1070
b. Defendants’ Interrogatory Responses
Volterra contends that even if the Court does not find, as a matter of law, that the invention was conceived in April 1998, Defendants have conceded that the invention date is no later than December 1998 by repeatedly asserting, in sworn interrogatory responses, that Volterra demonstrated an embodiment of the invention to Intel in December 1998. Plaintiffs Prior Art SJ Motion at 9. In particular, in their June 18, 2010 supplemental responses to Plaintiffs contention interrogatories, Defendants state as follows:
In addition, claims 26 and 34 of the '264 Burstein Patents are anticipated under 35 U.S.C. § 102 (b) based on Volterra’s public use and/or offer for sale more than one year before the earliest priority date. The Plaintiffs various proposals to Intel to develop a voltage regulator more than one year before the filing date of the Burstein Patents represents an offer for sale, barring the patentability of claims 26 and 34 of the '264 patent.
In addition, the Plaintiff demonstrated and delivered a voltage regulator to Intel that embodied the inventions of the Asserted Claims more than one year before the earliest filing date of the Asserted Patents, i.e., February Jp, 2000.
Comb. Fisher Decl., Ex. 28 (Primarion’s 3d Supp. Am. Resp. to 2d Set of Interrogs. No. 14 at 7, 9), Ex. 29 (Infineon NA’s 3d Am. Supp. Resp. to 2d Set of Interrogs. No. 8 at 404-405), Ex. 30 (Infineon AG’s 3d Am. Supp. Resp. to 2d Set of Interrogs. No. 8 at 407, 409) (emphasis added).
In their Opposition, Defendants do not dispute that they contend, in the context of their on-sale bar defense, that an embodiment demonstrated at Intel in December 1998 included all the claim limitations of the asserted patents. Defendants’ Opposition to Plaintiffs Prior Art SJ Motion at 17 n. 7. However, they reject Volterra’s assertion that Primarion has thereby conceded that for the purposes of determining whether references constitute prior art, the invention date was no later than December 1998.
Id.
Defendants state their position as follows:
Primarion does not agree that Drs. Bur-stein and Nickel conceived and reduced to practice all limitations of the claimed inventions before February 4, 2000 for purposes of proving an earlier reduction to practice date. But if Volterra contends that the device they made and disclosed to Intel before February 4, 1999 reduced the claimed invention to practice, then Primarion will rely on Volterra’s contention for the limited purpose of showing a prior use or sale more than one year before the filing date of the Burstein Patents.
Id.
Volterra argues in its Reply that Defendants cannot escape the binding effect of their interrogatory responses. Reply on Plaintiffs Prior Art SJ Motion at 3 n. 4 (citing Fed.R.Civ.P. 33(b)(3),
Jack v. Trans World Airlines, Inc.,
854 F.Supp. 654, 660 (N.D.Cal.1994),
Huthnance v. District of Columbia,
255 F.R.D. 297 (D.D.C.2008)). It does not, however, address Defendants’ suggestion that if Defendants are bound by the December 1998 invention date based on the embodiment that was demonstrated at Intel, Plaintiff should likewise be bound in connection with Defendants’ on-sale bar defense and therefore be precluded from arguing that the embodiment that was demonstrated at Intel did not include all of the elements of the asserted
*1071
patent. The Court notes, however, that in a separate brief, Volterra suggests that it does not concede this point.
See
Reply in Support of Motion for Partial Summary Judgment and Notice of No Invalidity Based on Alleged Prior Public Use or On-Sale Bar Pursuant to 35 U.S.C. § 102 (b) (“Reply on Plain

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/2181625. Public record. Not legal advice.