Opinion

Avocent Huntsville Corp. v. Clearcube Technology, Inc.

443 F. Supp. 2d 1284
2006 U.S. Dist. LEXIS 56073
2006 WL 2107032

Court: District Court, N.D. Alabama
Filed: Jul 12, 2006
Status: Published
Author: Smith
On the bench: Smith
Cited by: 3 cases
Authority: More cited than 49.3%

granting motion for partial summary judgment of no inequitable conduct where patentee did not resubmit in contin uation-in-part application material reference disclosed in ancestor application

How later courts described this case

granting motion for partial summary judgment of no inequitable conduct where patentee did not resubmit in contin uation-in-part application material reference disclosed in ancestor application

Written by the judges who cited it.

The opinion

MEMORANDUM OPINION

SMITH, District Judge.

Plaintiff, Avocent Huntsville Corporation (“Avocent”), owns two patents directed to the problems of transmitting computer-generated, analog color video signals over extended distances: ie., U.S. Patent No. 6,150,997 (“the ’997 patent”), and U.S. Patent No. 6,184,919 (“the ’919 patent”). Avocent contends that accused products of defendant, ClearCube Technology, Inc. (“ClearCube”), infringe claim 1 of the ’997 patent, and claims 1, 6, and 16-18 of the ’919 patent.

See

35 U.S.C. § 271 . ClearCube’s amended answer asserts affirmative defenses and counterclaims for invalidity under 35 U.S.C. §§ 102 , 103, and 112, and for patent unenforceability under the doctrine of inequitable conduct before the Patent and Trademark Office.

Numerous motions are pending, but not all are addressed in this opinion. A list of those motions raising issues discussed herein is set out below, followed immediately by an outline of the ensuing discussion.

A. Document Number (“doc.no.”) 136 — ClearCube’s motion for summary judgment declaring that certain Avocent patents and/or applications constitute prior art to the patents-in-suit;

B. doc. no. 142 — Avocent’s motion for a partial summary judgment declaring that the patents-in suit “are not invalid”;

*1290

C. doc. no. 154 — Avocent’s motion for separate trial of ClearCube’s inequitable conduct allegations;

D. doc. no. 157 — Avocent’s motion for a partial summary judgment declaring that it engaged in “no inequitable conduct”;

E. doc. no. 160 — Avocent’s motion for a partial summary judgment declaring that ClearCube’s products satisfy the “amplifier” limitation of claims 1 and 6 of the ’919 patent, and, claim 1 of the ’997 patent;

F. doc. no. 166 — ClearCube’s motion for partial summary judgment of non-infringement of claims 1 and 6 of the ’919 patent;

G. doc. no. 168 — Clear Cube’s motion for partial summary judgment of non-infringement;

H. doc. no. 171 — ClearCube’s motion for a partial summary judgment declaring that Avocent’s ’919 and ’997 patents are not enforceable; and,

I. doc. no. 174 — Avocent’s motion to strike the supplemental expert report of Gregg L. Vaughn, Ph.D.

OUTLINE OF DISCUSSION

Part One

Standards of

Review.................................................1293

Part Two

Background of the

Patents-inr-Suit....................................1294

The ’689 Application and %0I

Patent.....................................1296

The

Application...................................................1296

The

Patents-in-Suit...................................................1296

The ’076 application and ’919

patent..................................1296

The ’697 application and ’997

patent..................................1297

Part Three

The Disputed Claims

..............................................1297

Part Four

Claim Construction

Decisions........................................1300

Part Five

Avocent’s Motion to Strike the Supplemental Report of ClearCube’s Expert Witness, Dr. Gregg L.

Vaughn...........................................1300

Procedural

Background................................................1300

Section II of Vaughn’s Supplemental Report

— the

“amplifier” non-infringement

opinion................................................1303

Avocent’s

argument................................................1304

2. Conclusion........................................................1304

Section III of Vaughn’s Supplemental Report

— the

“adapter” non-infringement

opinion................................................1305

1. Conclusion........................................................1307

Sections TV and V of Vaughn’s Supplemental Report

— “obviousness”

and the validity of the

patents-in-suit......................................1307

Scope of Dr. Vaughn’s

rebuttal.......................................1308

a. Conclusion....................................................1308

New “prior

art”....................................................1308

Part Six

Infringement

Contentions.............................................1309

Avocent’s Motion for Partial Summary Judgment Declaring that Clear-Cube’s Accused Products Include the “Amplifier” Element Recited in Claim 1 of the ’997 Patent, and, Claims 1 and 16 of the ’919

Patent----1310

Infringement

analysis..............................................1311

*1291

“a circuit (ora device when connected in a

circuit)”................1313

“that draws power from a source other than the input

signal”.... 1313

“and provides an output signal that reproduces the essential features of the input

signal”...................................1313

i.Dr. Vaughn’s

testimony.....................................1314

2. Conclusion........................................................1315

ClearCube’s Motion for Partial Summary Judgment Declaring Non— Infringement of Claim 1 of the ’997 Patent, and, Claims 1 and 6 of the ’919

Patent......................................................1316

Procedural

background.............................................1317

ClearCube’s summary judgment contentions

..........................1319

Avocent’s

response.................................................1321

4. Conclusion........................................................1322

C. “The Adapter

Motion”

— ie.,

ClearCube’s Motion for Partial Summary Judgment Declaring Non-Infringement of Claims 1 and 6 of the ’919 Patent

.............................................................1322

Facts relevant to “the adapter

motion”................................1323

ClearCube’s

argument..............................................1324

ClearCube’s “testing”

contention.................................1324

ClearCube’s credibility

contentions...............................1325

Dr. Vaughn’s rebuttal

..........................................1325

3. Conclusion........................................................1326

Avocent’s Motion for Partial Summary Judgment Declaring that Claims 16-18 of the ’919 Patent are

Infringed..................................1326

Part Seven

Avocent’s Motion for a Partial Summary Judgment Declaring That The Patents-in-Suit “Are Not

Invalid”.........................................1326

Part Eight

ClearCube’s Failure to Provide Evidence of Invalidity Under 35 U.S.C. §§ 102 and 112

........................................................1328

Part Nine

The Issues of Whether the ’997 Patent is Prior Art to the Asserted Claims of the ’919 Patent, and, Whether the %0I Patent is Prior Art to Both the ’997 and ’919

Patents......................................................1328

The %0k Patent is Prior Art to the ’997 and ’919

Patents....................1328

Is the ’997 Patent Prior Art to the ’919

Patent?............................1329

The first and second requirements of§

102(e)(2).......................1330

The fourth requirement of § 102(e)(2)

................................1330

The third requirement of § 102(e)(2)

.................................1331

Common versus disparate

inventors..............................1331

Conclusion: The ’997 patent is not prior art to the asserted claims of the ’919 patent, due to Robert Asprey’s common inventorship...

.1334

Part Ten

ClearCube’s Contention that the Patents-in-Suit Are Invalid for “Obviousness”

....................................................................1334

The Patent Requirement of

“Non-Obviousness”...........................1335

Obviousness is a question of

law.....................................1336

The presumption of validity applies to the issue of

obviousness..........1336

The Prior Art References Relied Upon by ClearCube as Support for its Contention that the Patents-in-Suit are Invalid for

Obviousness..........1337

Impact of conclusion that the ’997 patent is not prior art to the asserted claims of the ’919

patent...................................1337

Impact of rulings on Avocent’s motion to strike Dr. Vaughn’s supplemental

report....................................................1338

The Problems Attendant to Combining Prior Art References

...............1339

The requirement of “some teaching, suggestion, or motivation" in the prior art for selecting and combining references

.....................1339

The presumption of validity applies to the issue of combining prior art

references...........................................1341

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The Deficiencies of ClearCube’s

Proofs...................................1341

E. Conclusion...........■................................................1342

Part Eleven

Motions Pertaining to the Accusation of “Inequitable Conduct” in the Patent and Trademark

Office...............................................1342

Facts Relevant to Accusation of Inequitable

Conduct.......................1344

Charles Phillips and Mark

Clodfelter.................................1346

The ’689 application that issued as the %0f

patent......................1346

The filing date of the ’H2

application.................................1347

Rejection of claims in the %f2 application in view of the ’jOj

patent.... 1348

Simultaneous prosecution of the %12 application and the patents-in-

suit............................................................1348

Continuing dispute over the filing date of the ’112

application.......1348

Notice of

rejection?.............................................1349

Abandonment of the %I2

application..............................1349

The ’076 application and pending claim 20

............................1350

Charles Phillips’s fifth request for correction of the filing date of the %I2 application

..........................................1350

Clodfelter’s first (March j, 1999) amendment in response to the PTO’s Office Action Summary rejecting pending claim

20.... 1351

Clodfelter’s second (March 22/23, 1999) amendment in response to the PTO’s Office Action Summary rejecting pending claim 20

— the

so-called “Supplemental

Amendment”...................1351

The PTO’s “Notice of Allowability” of pending claim

20.............1352

Examiner Le’s markings on the Supplemental

Amendment.........1353

Rejection of Charles Phillips’s request for a change to the filing date accorded the %I2

application..............................1353

Amendment under 37 C.F.R. §

1.312.............................1353

Issuance of the

patents-in-suit.......................................1354

The Inequitable Conduct

Doctrine.......................................1354

The materiality of withheld information, or false and misleading statements to an

examiner........................................1354

Intent to

deceive...................................................1356

Balancing the materiality of withheld information or false and misleading statements to an examiner against evidence of an intent to deceive

.................................................1356

Knowledge: claims of inequitable conduct arising from failure to disclose prior

art.................................................1357

That Aspect ofAvocent’s Motion Seeking a Declaration against Clear-Cube’s “inequitable conduct affirmative defenses and counterclaims”...

.1357

ClearCube’s challenge to the ’919 patent based upon the “Extender” and “AutoBoot Commander” line of

products........................1357

Materiality

...................................................1358

b. Knowledge....................................................1358

c. Intent........................................................1359

d. Conclusion....................................................1360

ClearCube’s challenge to the ’997 patent based upon the “Extender” line of

products..................................................1360

Materiality

...................................................1360

b. Knowledge....................................................1360

c. Intent........................................................1360

d. Conclusion....................................................1361

ClearCube’s challenge to the ’919 patent based upon the filing date of the %I2 application and pending claim 20 of the ’076 application...

.1361

Materiality

...................................................1361

b. Conclusion....................................................1362

ClearCube’s “Motion for Summary Judgment for Unenforceability of Avocent’s ’919 and ’997

Patents”.......................................1364

ClearCube’s challenge to the ’919

patent...............................1365

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2.ClearCube’s challenge to the ’997

patent...............................1365

Motions Related to the Precise Filing Date of the %I2

Application...........1366

Avocent’s

motion...................................................1367

a. Analysis......................................................1368

ClearCube’s motion

................................................1369

Avocent’s motion under MPEP § 609

................................1370

Avocent’s motion under 37 C.F.R. §

1.312.............................1371

Part Twelve

Avocent’s Motion for Separate Trial of ClearCube’s Inequitable Conduct Allegations

..........................................................1372

CONCLUSION................................................................1373

Part One

Standards of Review

The Federal Rules of Civil Procedure provide that 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). The party moving for summary judgment bears the initial burden of showing the court, by reference to materials on file, that there are no genuine issues of material fact to be decided at trial.

Celotex Corp. v. Catrett,

477 U.S. 317, 323 , 106 S.Ct. 2548 , 91 L.Ed.2d 265 (1986).

When the moving party has discharged its burden, the non-moving party cannot rest upon the pleadings. Instead, Rule 56(e) requires the party opposing summary judgment to go beyond the pleadings, and to demonstrate by affidavit or other appropriate means that there is a genuine issue of material fact for trial.

See also Celotex,

477 U.S. at 324 , 106 S.Ct. 2548 . A “genuine” dispute about a material fact exists if the “evidence is such that a reasonable jury could return a verdict for the nonmoving party.”

Jeffery v. Sarasota White Sox, Inc.,

64 F.3d 590, 594 (11th Cir.1995)

(per

curiam) (quoting

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 248 , 106 S.Ct. 2505 , 91 L.Ed.2d 202 (1986)). Conversely, “summary judgment may be granted when no ‘reasonable jury could return a verdict for the nonmoving party.’ ”

Pro-Mold & Tool Co., Inc. v. Great Lakes Plastics, Inc.,

75 F.3d 1568, 1572 (Fed.Cir.1996) (quoting

Anderson,

477 U.S. at 248 , 106 S.Ct. 2505 ).

In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion for summary judgment, and all justifiable inferences are to be drawn in that party’s favor.

See Anderson,

477 U.S. at 255 , 106 S.Ct. 2505 ;

see also, e.g., IPXL Holdings, LLC v. Amazon.com, Inc.,

430 F.3d 1377, 1380 (Fed.Cir.2005);

Elekta Instrument v. O.U.R. Scientific International, Inc.,

214 F.3d 1302, 1306 (Fed.Cir.2000);

Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc.,

145 F.3d 1303, 1307 (Fed. Cir.1998);

Pro-Mold & Tool,

75 F.3d at 1572 .

When a district court is, as here, presented cross motions for summary judgment on the same issues, “[t]he court must rule on each party’s motion on an individual and separate basis, determining, for each side, whether a judgment may be entered in accordance with the Rule 56 standard.” 10A Charles A. Wright, Arthur R. Miller

Mary Kay Kane,

Federal Practice and Procedure: Civil 3d

§ 2720, at 335-36 (1998) (footnote omitted).

*1294

“The fact that both the parties have moved for summary judgment does not mean that the court must grant summary judgment to one party or the other. Cross-motions are no more than a claim by each party that it alone is entitled to summary judgment, and the court must evaluate each motion on its own merits, taking care in each instance to view the evidence in favor of the nonmoving party.”

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc.,

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

Bubble Room, Inc. v. United States,

159 F.3d 553, 561 (Fed. Cir.1998)) (internal alteration omitted).

Part Two

Background of the Patents-in-Suit

Personal computers usually are located near video monitors. Consequently, computer-generated video signals normally are transmitted over cables that are no more than ten to twenty feet in length.

Avo-cent was known as Cybex Computer Products Corporation prior to 2000,

and Cybex was in the business of developing products that allowed customers to locate personal computers at extended distances from a user’s monitor, keyboard, and mouse.

In a business setting, this resulted in less clutter at each user’s workstation, as well as increased security. As Avocent explained:

If the video, keyboard and mouse signals can be reliably transmitted over extended distances, the computers themselves can be located in a backroom where only an authorized computer administrator can physically access them. This prevents unauthorized software or files from being installed on the computers or copied from the computers.

There is a problem inherent in such configurations, however: computer-generated video signals degrade when transmitted over extended distances, resulting in undesirable debasement of clarity in the images depicted on the monitor’s screen.

Cybex’s early innovations directed to this problem were tailored to the transmission of

digital,

as opposed to

analog,

*1295

video signals. That was due to the fact that, during the 1980s, the leading computer signal-standard was the Color/Graphics Adapter (“CGA”) developed by IBM.

CGA was a

digital

standard: that is, each “bit” of information was expressed as either a “1” or “0” value.

IBM later introduced another signal standard, called the Enhanced Graphics Adapter (“EGA”).

EGA also was a

digital

standard. Accordingly, Cybex’s original technology was designed to compensate for the degradation of

digital

signals transmitted by computers over extended distances: that is,

the digital information could be reliably recovered by comparing the received signal to an intermediate reference point. A “1” would be registered if the received signal was above the reference point; a “0” would be registered if the signal was below that reference point, regardless of line-induced degradation.

In the early 1990s, however, IBM introduced an

analog

video standard, called the Video Graphics Adapter (“VGA”),

which presented a new set of challenges. Analog signals can have an infinite number of amplitudes between a minimum and maximum value,

and the specific amplitude transmitted by the computer

the information conveyed by the signal. Thus,

any

degradation in the amplitude of an analog signal may cause an uncorrectable loss of information. As the computer industry began replacing digital video systems with the new, analog VGA systems, Cybex commenced its work on the problems associated with the transmission of analog VGA video over extended distances. Cybex’s innovations in this area ultimately led to the inventions disclosed in the patents-in-suit.

*1296

The ’689 Application and ’404 Patent

An early achievement for Cybex was the development of an amplifier device that could boost a weak analog video signal to a usable amplitude.

Cybex filed U.S. Patent Application Serial No. 07/912,689 (“the ’689 application”) on July 13, 1992, and that application issued as U.S. Patent No. 5,276,404 (“the ’404 patent”) on January 4, 1994.

Claim 1 of the ’404 patent recites a “non-inverting, constant current voltage amplifier,”

and the remaining claims (2-6) are dependent upon claim 1.

The ’442 Application

Cybex mailed U.S. Patent Application Serial No. 08/177,442 (“the ’442 application”) to the Patent and Trademark Office (“PTO”) in early January 1994. The PTO assigned the application a filing date of January 5,1994 — an action that is disputed by Avocent. Even so, discussion of Avo-cent’s contention that the PTO should have assigned the ’442 application a filing date of January 4, 1994

(ie.,

the same day upon which the ’404 patent issued) will be addressed

infra,

in Part Eleven, Sections A(3), C(3), and E of this opinion, concerning ClearCube’s assertion that Avocent engaged in inequitable conduct before the Patent and Trademark Office.

The ’442 application described various systems for the transmission of computer-generated analog color video signals, and purported to be a “continuation-in-part”

of the inventions disclosed in the ’689 application that issued as the ’404 patent.

Robert R. Asprey was the sole inventor of the subject matter claimed in the application.

The ’442 application never issued as a patent.

C.The Patents-irir-Suit

In 1996, during the pendency of the ’442 application that never matured into an issued patent, Cybex filed two additional patent applications, both of which ultimately issued as the patents-in-suit.

The ’076 application and ’919 patent

Cybex filed U.S. Patent Application Serial No. 08/660,076 (“the ’076 application”) on June 3, 1996, reciting various systems for the transmission of analog color video signals over extended distances.

*1297

The ’076 application purported to be a “continuation-in-part” of the ’442 application,

and it issued as the ’919 patent on February 6, 2001.

Robert R. Asprey, Philip M. Kirshtein, and Thomas V. Lusk are the three inventors named on the ’919 patent.

The ’697 application and ’997 patent

Cybex also filed U.S. Patent Application Serial No. 08/741,697 (“the ’697 application”) on October 31, 1996, reciting systems for the transmission of analog color video signals.

The ’697 application purported to be a continuation-in-part of the ’442 application,

and it issued as the ’997 patent on November 21, 2000.

Robert R. Asprey is the sole inventor named on the ’997 patent.

It should be noted that, even though the ’697 application was filed last, on October 31, 1996 — almost four months

after

the filing date of the ’076 application that matured into the ’919 patent — it issued first, as the ’997 patent, on November 21, 2000. Conversely, the ’076 application, which was filed first (on June 3, 1996), issued last, as the ’919 patent, on February 6, 2001.

Part Three

The Disputed Claims

Avocent contends that ClearCube’s accused products infringe claim 1 of the ’997 patent, and claims 1, 6, and 16-18 of the ’919 patent.

Claim 1 of the ’997 patent, and claims 1, 16, and 18 of the ’919 patent, are independent claims. Claim 6 of the ’919 patent is dependent on claim 1, and claim 17 of the same patent is dependent on claim 16.

Claim 1 of the ’997 Patent

recites:

1. A system for transmission of analog color video signals between a source of said signals and a video monitor, being at spaced locations, comprising:

a plurality of computers, each providing, as a set, said color video signals;

a switch receiving said sets of said color video signals, each with respect to a common reference, from said computers and providing a selected said set of said color video signals as an output;

a signal transmitter at a first location responsive to said output of a set of said color video signals, said transmitter, including

an amplifier for each

*1298

said color video signal of one of said sets for providing a color video signal output and wherein

at least a high frequency portion of each said color video signal has been amplified as a direct function of frequency and providing both an inverting and non-inverting signal, available as an output;

a plurality of video transmission circuits, each said circuit having first and second ends, respectively, one circuit for each of said color video signals of one of said sets and each said circuit having an input responsive to an output of said transmitter at said first end, and each said circuit having a responsive signal output at said second end;

a signal receiver at a second location responsive to each of said transmitted signal outputs and color video signal at said second end, including an amplifier for each said color video signal for providing a discrete color video signal with respect to a common reference; and

signal means responsive to said receiver for providing each said color signal, each with respect to a common reference, to an analog color video monitor.

Claim 1 of the ’919 Patent

recites:

1. An extended-in-length computer video communications link for transmitting computer video signals comprising:

a source of computer video signals including red, green, and blue video signals,

a video transmitter comprising a plurality of amplifiers, one of each said amplifiers for each of said red, green, and blue video signals, each said amplifier comprising:

a signal input for receiving a one of said red, green and blue video signals,

frequency sensitive compensating circuitry responsive to a said video signal so that said amplifier provides a first video signal that increases in amplitude with increasing frequency at a first output and a second video signal that is an inverse of said first video signal at a second output,

a twisted pair of conductors for each said amplifier, with first and second conductors of said twisted pair coupled at one end to respective said first and second outputs of said amplifier,

an adapter for each of said twisted pair of conductors, each said adapter coupled to an opposite end of a respective one of said twisted pair of conductors, each said adapter receiving said first video signal and said second video signal and providing a respective said video signal as a single ended output, and further configured to provide a ground reference potential for said transmitter at said adapter, whereby need for a reference ground conductor between said transmitter and said adapter is eliminated.

Claim 6 of the ’919 Patent,

which is dependent to claim 1 above, recites “[a] video communications link as set forth in claim 1 wherein said source of video signals comprises a termination point of another video communications link.”

*1299

Claim 16 of the ’919 Patent

recites:

16. A computer video signal communications system for selectively coupling sets of R, G, B computer color video signals from one of a plurality of computers to a separately located color monitor, said system comprising:

a transmitter including:

switching means for selectively providing a said set of said color video signals from a selected said computer, and

a first signal format converter responsive to each said color signal of a said set of color signals from said switching means for converting a signal format of each said color signal from single ended format to a balanced format;

a plurality of sets of twisted pair conductors, each set of said conductors having a first end and second end, with a said first end of each of said sets of conductors receiving a discrete color video signal from said transmitter;

a receiver coupled to said second ends of said sets of said twisted pair conductors and including:

a plurality of second signal format converters for converting a said balanced format of each said discrete color video signal from each said set of conductors from balanced to unbalanced format; and

signal means responsive to unbalanced format signals from said receiver for coupling color video signals to a color video monitor.

Claim 17 of the ’919 Patent,

which is dependent to claim 16 above, recites “[a] system as set forth in claim 16 wherein said receiver includes frequency compensation means for boosting a frequency response of at least one said color video signal directly as a function of frequency.”

Claim 18 of the ’919 Patent

recites:

18. A computer video signal communications system for selectively coupling a set of R, G, and B computer color video signals from one of a plurality of computers to a separately located color monitor, said system comprising:

a transmitter including:

switching means for selectively providing said set of R, G, and B computer color video signals from a selected said computer, and

a first signal format converter responsive to each said R, G and B color video signal for converting a signal format of each said R, G and B color video signal from single ended format to a balanced format;

a set of twisted pair conductors for each said balanced format R, G, and B color video signals, each said set of twisted pair conductors having a first end and a second end, with a said first end of each of said sets of twisted pair conductors receiving a discrete one of said balanced format R, G, and B color video signals from said transmitter;

a receiver coupled to said second ends of said sets of twisted pair conductors and including:

frequency compensation means for boosting a frequency response of each said R, G and B color video signal directly as a function of frequency;

a plurality of second signal format converters for converting said balanced format of each said R, G and B color video signal from each said set of twisted pair conductors from balanced to unbalanced format; and

*1300

signal means responsive to siad [sic] unbalanced format signals from said receiver for coupling said R, G and B color video signals to a color video monitor.

Part Four

Claim Construction Decisions

A claim construction hearing was held on February 22 and 23, 2006.

See Markman v. Westview Instruments, Inc.,

517 U.S. 370, 372 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996) (holding that the first issue in any patent infringement case is that of “claim construction”: the interpretation of words used in a patent’s claim, “the portion of the patent document that defines the scope of the patentee’s rights”);

see also, e.g., Rockwell International Corporation v. United States,

147 F.3d 1358, 1362 (Fed.Cir.1998) (“The first step in any invalidity or infringement analysis is claim construction.”) (citations omitted). The memorandum opinion and order entered on March 15, 2006, set forth this court’s interpretation of the following, disputed, claim terms.

“Twisted pair” wiring, which is used in the ’919 patented invention to conduct analog video signals, may be either “shielded” or “unshielded.”

The term “amplifier,” as it is claimed in both the ’997 and ’919 patents, was defined as “a circuit (or a device when connected in a circuit) that draws power from a source other than the input signal and provides an output signal that reproduces the essential features of the input signal.”

The term “discrete,” as it is used in the claims of both patents, simply means that a color video signal

(e.g.,

red) is separate or distinct from the other two color video signals

(e.g.,

green and blue).

Finally, the phrase “for said transmitter,” as recited in claim 1 of the ’919 patent, was construed as meaning “from the signals received from the transmitter.”

Part Five

Avocent’s Motion to Strike the Supplemental Report of ClearCube’s Expert Witness, Dr. Gregg L. Vaughn

Avocent’s motion to strike the April 24, 2006 supplemental report of ClearCube’s expert witness, Dr. Gregg Vaughn,

will be granted in part and denied in part.

Procedural Background

Discovery commenced on March 8, 2004.

Pursuant to a scheduling order entered on June 25, 2004,

as amended on September 15, 2004,

the parties were required to disclose, no later than August 2, 2004, the identity of all specially retained or employed expert witnesses, together with a complete report under Fed.R.Civ.P. 26(a)(2)(B). Rebuttal reports were due September 20, 2004. The party bearing the burden of proof on a claim or counterclaim was required to initiate this sequence of disclosures.

Each party disclosed an expert report on August 2, 2004. Avoeent’s expert, Jo

*1301

seph C. McAIexander, explained how ClearCube’s accused products infringed the patents-in-suit.

ClearCube’s expert, Dr. Vaughn, opined that the patents-in-suit were not valid.

The parties’ rebuttal reports followed, with Dr. Vaughn rebutting McAlexander’s findings of infringement, while two individuals — McAIexander and Robert Asprey — rebutted Vaughn’s opinions concerning the validity of the patents-in-suit.

On the latter issue, McAIexander and Asprey both challenged Dr. Vaughn’s validity analysis on the basis that he had failed to articulate a motivation, suggestion, or teaching to combine selected prior art references in a way that would lead to the claimed inventions.

The court’s scheduling orders did not provide for the submission of responsive expert reports after the September 20, 2004 deadline, but neither did it expressly preclude the submission of supplemental reports. Consequently, Avocent served a supplemental report addressing the issue of patent infringement on November 26, 2004.

After a period of delay in this litigation,

the claim construction hearing was conducted on February 22 and 23, 2006. On the first day of the hearing, Avocent’s counsel (Donald Jackson) informed the court that Robert Asprey had died the previous month.

Jackson noted that Avocent had served rebuttal reports on the issue of patent validity authored by McA-Iexander

and

Asprey. Even so, he sought permission to supplement McAlexander’s report, but only to the extent necessary to incorporate issues addressed by Asprey.

Ken Kuffner, a witness retained by Clear-Cube to provide an expert opinion on the issue of inequitable conduct, also had died prior to the hearing. ClearCube thus sought permission to secure additional expert testimony on the issue Kuffner had been prepared to address at trial.

Near the conclusion of the hearing, Avocent’s counsel also posed the following question to the court: Would Avocent’s expert

*1302

(McAlexander) be allowed to incorporate the court’s construction of disputed claim terms in his patent infringement analysis?

This court deferred an answer to that question.

The court’s claim construction opinion, construing the patent terms and phrases described in Part Four

swpra,

was entered on March 15, 2006.

To advance the case toward trial, the court ordered the parties to enumerate all pre-trial procedures that needed to be completed. The parties filed a Joint Status Report on March 23, 2006, and they reiterated their agreement on one point: “supplemental” expert reports would be necessary to fill the evidentiary voids resulting from the deaths of Asprey and Kuffner. Avocent also renewed its request for leave to incorporate the court’s construction of disputed claim terms in Joseph McAlexander’s infringement reports.

This court entered a Revised Scheduling Order on March 31, 2006,

accomplishing two things of relevance to the present discussion. First, the parties were ordered to designate expert witnesses to replace Asprey and Kuffner.

Avocent also was granted leave to incorporate the court’s construction of claim terms into McAlexander’s infringement analysis.

McAlexander served his second supplemental report on April 10, 2006,

and supplemented his earlier opinions on patent infringement in three respects: (1) the court’s construction of the claim term “amplifier” was consistent with his preexisting understanding of the term and, therefore, his earlier infringement opinions (at least with respect to the “amplifier”) were not altered; (2) a review of ClearCube’s data sheets showed that the accused products included an “amplifier,” even under Clear-Cube’s original construction of the term; and (3) a schematic showed that a receiver located at the far end of ClearCube’s transmission system provided a ground reference potential “for said transmitter,”

*1303

as that phrase was construed by the court.

McAlexander’s second supplemental report also addressed ClearCube’s assertions of patent invalidity. McAlexander stated that, upon comparing his original report to Asprey’s, he found the opinions expressed in each essentially the same,

with one exception: Asprey’s report had discussed in greater detail the technical differences between

television

and

computer

video systems. McAlexander thus incorporated, by reference, those portions of Asprey’s report addressing those differences.

Vaughn served his rebuttal report on April 24, 2006, addressing in one comprehensive document McAlexander’s updated infringement analysis, and the invalidity opinions of Robert Asprey, as adopted by McAlexander. Section II of Vaughn’s rebuttal addressed McAlexander’s infringement analysis premised on the court’s construction of the claim term “amplifier.” Section III addressed McAlexander’s infringement analysis premised on the court’s construction of the phrase “for said transmitter.” Section IV addressed the alleged invalidity of the ’919 patent, and Section V did the same for the ’997 patent. Avocent followed with the subject motion, asking the court to strike Sections II through V of Dr. Vaughn’s report.

Section II of Dr. Vaughn’s Supplemental Report

— the

“amplifier” non-infringement opinion

The first numbered claims of both patents-in-suit require “amplifiers” to assist in the transmission of analog color video signals. This court construed the term “amplifier” as meaning “a circuit (or a device when connected in a circuit) that draws power from a source other than the input signal and provides an output signal that reproduces the essential features of the input signal.”

Following claim construction, McAlexander supplemented his earlier opinions on patent infringement to reiterate his position that ClearCube’s accused products included the claimed “amplifier.”

Not surprisingly, Dr. Vaughn’s rebuttal report took the opposite position that ClearCube’s products did not include the claimed “amplifier” and, therefore, there was no infringement. Dr. Vaughn’s opinion, set forth in Section II of his rebuttal report, built upon several analytical steps. He first focused on that aspect of the court’s construction of “amplifier” requiring reproduction of “the essential features of the input signal.” Dr. Vaughn opined that “the essential features of the input signal” meant “the frequency components of the video signal.”

He then asserted that, when a computer and monitor are separated by extended distances, each “frequency component of the video signal” must be transmitted from the computer to the monitor without significant loss of amplitude.

Specifically, Dr. Vaughn opined that a change in signal amplitude even as small as one-half of one percent (measured at the computer and monitor) could alter the intensity of the color displayed on the

*1304

monitor’s screen.

Dr. Vaughn based this opinion upon his analysis of the ’919 patent specification, as well as Joseph McAlexan-der’s testimony at the claim construction hearing.

Dr. Vaughn also noted that the patent claims at issue impose limitations on the “amplifier.” Claim 1 of the ’997 patent, for example, recites an “amplifier ... for providing a color video signal output and wherein at least a high frequency portion of each said color video signal has been

amplified as a direct function of frequency,”

while claim 1 of the ’919 patent recites an “amplifier” that “provides a first video signal that

increases in amplitude with increasing frequency

at a first output.”

Dr. Vaughn understood the emphasized claim language as requiring that “each frequency component ha[ve] a higher gain than the previous frequency component.”

Finally, having laid this groundwork, Dr. Vaughn stated his non-infringement analysis in two sentences:

The circuitry on the transmitting end of a ClearCube system does not have an amplifier because it does not reproduce the essential features of the input signal nor does it provide greater gain for frequency components at successively higher frequencies. So, the circuitry on the transmitting end of a ClearCube system does not reproduce the essential features of the input signal.

Avocent’s argument

As a preliminary matter, the court finds that Avocent’s motion to strike

all

opinions set forth in Section II of Dr. Vaughn’s rebuttal report is over-inclusive. That is because the gravamen of Avocent’s complaint is directed to the second step of Dr. Vaughn’s analysis:

i.e.,

that the amplifier must reproduce “the frequency components of the video signal” in such a manner that the voltage level of the signal at the computer, the input end of the transmission path, and the voltage level of the signal at the monitor on the other end, do not differ by even one-half of one percent. Avocent contends that this opinion raises an additional, previously undisclosed limitation on the claim term “amplifier,” purportedly supported by the patent specification and the testimony of Joseph McAlexander at the claim construction hearing. In other words, it is an untimely attempt at claim construction.

Conclusion

This court agrees that the following portions of Section II of Dr. Vaughn’s rebuttal report are due to be stricken: the last sentence of paragraph 5, and paragraphs 6 and 7.

As will be discussed in

*1305

greater detail in Part Six, Section B of this opinion

infra,

ClearCube has continually shifted its claim construction contentions throughout the course of litigation, foisting last-minute surprises on Avocent’s counsel and this court. Now, after claim construction and on the eve of trial, ClearCube proffers yet another, previously undisclosed claim limitation. Avocent’s motion to strike these portions of Dr. Vaughn’s rebuttal report will be granted.

Cf. Atmel Corporation v. Information Storage Devices, Inc.,

1998 WL 775115 , at *2-3 (N.D.Cal.1998) (refusing to allow amendment to claim charts after claim construction). Avocent’s motion to strike the other portions of Section II, however, will be denied.

Section III of Vaughn’s Supplemental Report

— the

“adapter” non-infringement opinion

Claim 1 of the ’919 patent recites an “adapter ... further configured to provide a ground reference potential

for said transmitter

at said adapter.”

This court has construed the emphasized phrase, “for said transmitter,” as meaning “from the signals received from the transmitter.” In whole cloth, therefore, claim 1 of the ’919 patent recites an “adapter ... further configured to provide a ground reference potential

{from the signals received from the transmitter

] at said adapter.”

McAlexander opined in his second supplemental report that a structure called a “C-Port,” located on the receiver-side of ClearCube’s accused products, is config

*1306

ured to provide a ground reference potential “from the signals received from the transmitter.”

Dr. Vaughn disagreed, and grounded his contrary opinion on two assertions: (1) a “common-mode filter” located on the front end of ClearCube’s transmission system did not allow recovery of the ground reference potential at the accused C-Port; and (2) there was no need to recover the ground reference potential at the C-Port, because signals in the ClearCube system were sent in “balanced” format.

Dr. Vaughn was subsequently deposed on May 1, 2006, at which time he was questioned about his analysis of Avocent’s claimed “adapter.” In pertinent part, Dr. Vaughn was asked about the concept of transmitting video signals from a transmitter to the adapter, and whether there was a “path” through which the signals could “return” to the transmitter.

Dr. Vaughn opined that, indeed, the laws of physics require a “return path” for the video signals, and asserted that the “return path” in Avocent’s system was through the “twisted pair” of conductors connecting the transmitter and adapter.

Dr. Vaughn also suggested that the “return path” requirement was implicit in this court’s construction of the phrase “for said transmitter.”

Avocent now moves to strike Section III of Dr. Vaughn’s supplemental

report

on the basis of Dr. Vaughn’s

deposition testimony

regarding the “return path” requirement. According to Avocent, Dr. Vaughn asserts new claim construction arguments relating to the “adapter” component that were not raised during the claim construction process.

In Section III of his report, Dr. Vaughn does state that there is a “return path” from “the adapter (or receiver)” to the transmitter, but that is merely a passing reference in the text; and this court cannot conclude from the text alone that Dr. Vaughn is engaging in claim construction, as Avocent contends.

Dr. Vaughn was asked to elaborate on his opinions at deposition, however, and he explained that (i) claim 1 of the ’919 patent requires a “return path” from the adapter to the transmitter, (ii) the “return path” is “generated from the signals that are received from the transmitter,” and (in) the “return path” in Avocent’s system runs through the “twist

*1307

ed pair” of conductors connecting the transmitter and adapter.

Conclusion

To the extent Avocent seeks to preclude this testimony at trial, that is the proper subject of a motion

in limine.

Indeed, Avocent has filed such a motion: doc. no. 218 seeks to preclude Dr. Vaughn from testifying that the claimed “adapter” requires “twisted pair conductors to serve as a return current path from the receiver to the transmitter.”

However, Avocent’s motion to strike Section III of Dr. Vaughn’s supplemental report will be denied.

Sections IV and V of Vaughn’s Supplemental Report

— “obviousness”

and the validity of the patents-in-suit

Section IV of Dr. Vaughn’s supplemental report sets forth his opinions on the validity of the ’919 patent, and Section V does the same for the ’997 patent. Dr. Vaughn disclosed his original validity report on August 2, 2004,

and he then opined that it would have been obvious at the time of the subject inventions to a person of ordinary skill in the art “of video

transmission”

— ie., someone holding “a Bachelor of Science degree in Electrical Engineering and at least four years of experience in the field”

— to combine the information contained in each binary set of prior art references identified by him.

Dr. Vaughn further described, on a claim-by-claim basis, how the identified prior art combinations contained all of the elements found in the asserted claims of the patents-in-suit.

Robert Asprey and Joseph McAlexander followed with their rebuttal reports on September 20, 2004, and each challenged Dr. Vaughn’s analysis on the basis that he had failed to articulate a motivation, suggestion, or teaching for combining the selected prior art references to lead to the claimed inventions. Both noted that, while the patents-in-suit addressed the problem of transmitting computer-generated video signals over extended distances, Vaughn repeatedly cited prior art references directed to the transmission of other types of signals, such as

television

signals. As-prey’s report provided a particularly detailed discussion of this subject matter.

*1308

Additionally, for each binary set of prior art references identified by Dr. Vaughn, McAlexander’s report attempted to demonstrate that the references taught entirely “different solutions for transmitting video signals” than did the patents-in-suit — a

further

reason to conclude that there was no motivation, suggestion, or teaching to combine elements from the selected prior art references.

Following the death of Asprey, and in accordance with the Revised Scheduling Order entered on March 31, 2006, McAlex-ander incorporated eight passages from Asprey’s report into his second supplemental report.

Those passages all involved Asprey’s discussion of the differences between computer-generated video signals and television signals, in the context of challenging the motivation-suggestion-teaching element of Dr. Vaughn’s invalidity analysis.

Dr. Vaughn served his rebuttal report in response to Asprey’s opinions, as thus incorporated by McAlexander. Avocent now asserts two independent arguments to strike Sections IV and V of Dr. Vaughn’s latest report: (1) the scope of Dr. Vaughn’s rebuttal exceeded that of As-prey’s opinions, as incorporated by McA-lexander; and (2) Dr. Vaughn cited five new “prior art” references in his rebuttal report.

Scope of Dr. Vaughn’s rebuttal

Rule 26(a)(2)(C) of the Federal Rules of Civil Procedure provides that “rebuttal disclosures are those that relate to evidence that is ‘intended solely to contradict or rebut evidence on the same subject matter identified by another party’ in its expert disclosures.”

Aircraft Gear Corporation v. Marsh,

2004 WL 1899982 , at *5 (N.D.Ill. Aug.12, 2004);

see also Gilbane Building Company v. Downers Grove Community High School District No. 99,

2005 WL 838679 , at *11 (N.D.Ill. April 5, 2005) (same).

Conclusion

The court finds that the following paragraphs in Sections IV and V of Dr. Vaughn’s supplemental report rebut As-prey’s contentions regarding the differences between computer video signals and television signals: ¶¶ 20, 22, and 41. The following paragraphs also rebut Asprey’s contentions, but only to the extent that each incorporates, by reference, paragraph 22: ¶¶ 30, 33, 37, 43, and 48. Avocent’s motion to strike these portions of Dr. Vaughn’s supplemental expert report is denied.

However, Avocent’s motion to strike all other opinions set forth in Sections IV and V of Dr. Vaughn’s supplemental report will be granted, because those portions extend beyond the limited subject matter incorporated into McAlexander’s invalidity analysis.

New “prior art”

Avocent also moves to strike Sections IV and V of Dr. Vaughn’s supplemental report on the basis that the report includes five new “prior art” references that were not previously disclosed. These references are: the ‘VGA to RGB Converter” article (cited in paragraph 22 of the Vaughn supplemental report); the “Sun-3” article (¶ 22); “Fast Ethernet Alliance” (¶ 23); “Application Notes” (¶ 25); and the “EDN Magazine” articles (¶ 25).

*1309

Paragraphs 23 and 25 of the Dr. Vaughn’s supplemental report already have been stricken. Accordingly, the references cited in those paragraphs — the Fast Ethernet Alliance, Application Notes, and the EDN Magazine articles — will not be discussed here. On the other hand, the “VGA to RGB Converter” article and the “Sun-3” article are cited in paragraph 22 of the Vaughn supplemental report. So far, that paragraph has survived Avocent’s motion to strike.

Dr. Vaughn cites these articles to illustrate a purported flaw in Asprey’s opinion that there are important differences between computer and television video signals. This was in direct rebuttal to Asprey’s opinions, as incorporated by McAlexander. Avocent attempts to characterize these references as previously undisclosed “prior art” references to the patents-in-suit, but that argument is misleading. Dr. Vaughn does not attempt to combine elements from the ‘VGA to RGB Coverter” and “Sun-3” articles with elements from other prior art references to show the “obviousness” of the patents-in-suit. The articles merely are cited to show what a person of ordinary skill in the relevant technology allegedly would have known in 1996.

Avocent also advances the argument that it did not have the opportunity to reply to Dr. Vaughn’s invalidity analysis under the court’s latest Revised Scheduling Order. Therefore, Avocent contends that the previously undisclosed references should be stricken. This court disagrees. After claim construction, the parties filed a Join Status Report, wherein Avocent

agreed

that its “supplemental” report on invalidity would be disclosed first, followed by ClearCube’s rebuttal. Avocent cannot complain about the sequence of expert disclosures under these circumstances.

Part Six

Infringement Contentions

The resolution of a patent infringement claim entails a two-step analytical progression.

See Markman v. Westview Instruments, Inc.,

52 F.3d 967, 976 (Fed. Cir.1995)

(en

banc). The first step is that of “claim construction”: the interpretation of words used in a patent’s claims, “the portion of the patent document that defines the scope of the patentee’s rights.”

Markman v. Westview Instruments, Inc.,

517 U.S. 370, 372 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996);

see also, e.g., Rockwell International Corporation v. United States,

147 F.3d 1358, 1362 (Fed.Cir.1998) (“The first step in any invalidity or infringement analysis is claim construction.”) (citations omitted).

The second step requires a comparison of each element of the properly construed claim to the device accused of infringing.

See Markman,

52 F.3d at 976 . At this step of the analysis, a plaintiff may establish infringement in either of two ways: it may show that the asserted claim reads literally on the accused device, or it may show infringement under the so-called “doctrine of equivalents.”

See, e.g., Becton Dickinson and Company v. C.R. Bard, Inc.,

922 F.2d 792, 796 (Fed.Cir.1990). “To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly.”

Southwall Technologies, Inc. v. Cardinal IG Company,

54 F.3d 1570, 1575 (Fed.Cir. 1995) (citing

Becton Dickinson,

922 F.2d at 796 ). Under the doctrine of equivalents, every limitation in the claim must be found in the accused device, at least by “substantial equivalent.”

Becton Dickinson,

922 F.2d at 796 . Stated more fully,

[a]n accused product that does not literally infringe a claim may infringe under the doctrine of equivalents if “it performs substantially the same function in substantially the same way to obtain

*1310

the same result.”

Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,

339 U.S. 605, 608 , 70 S.Ct. 854, 856 , 94 L.Ed. 1097 , 85 USPQ 328 , 330 (1950). Only if an accused product contains specific structure which meets all limitations of an asserted claim directed to structure, at least equivalently, can that product infringe under the doctrine of equivalents.

Pennwalt Corp. v. Durand-Wayland, Inc.,

833 F.2d 931, 935 , 4 USPQ2d 1737, 1739 (Fed.Cir.1987)

(in banc), cert. denied,

485 U.S. 961 , 108 S.Ct. 1226 , 99 L.Ed.2d 426 (1988).

Southwall Technologies,

54 F.3d at 1579 .

While claim construction is an issue of law,

see Markman,

52 F.3d at 970-91 , the determination of an allegation of infringement, whether literal or under the doctrine of equivalents, is a question of fact.

See, e.g., Elekta Instrument,

214 F.3d at 1306 .

“Summary judgment on the issue of infringement is proper when no reasonable jury could find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents.”

PC Connector Solutions LLC v. SmartDisk Corporation,

406 F.3d 1359, 1364 (Fed.Cir.2005) (citing

Bai v. L & L Wings, Inc.,

160 F.3d 1350, 1353-54 (Fed.Cir.1998)).

Avocent’s Motion for Partial Summary Judgment Declaring that Clear-Cube’s Accused Products Include the “Amplifier" Element Recited in Claim 1 of the ’997 Patent, and, Claims 1 and, 16 of the ’919 Patent

Claim 1 of the ’997 patent is directed to the problem of transmitting computer-generated analog color video signals over extended distances. A plurality of computers is located at the front end of the system, and each computer provides a set of color video signals to a “switch,” which selectively provides each set of color video signals to a “transmitter.” The “transmitter,” in turn, includes an element called the “amplifier.” Claim 1 of the ’997 patent recites, in part, “a signal transmitter at a first location responsive to said output of a set of said color video signals, said transmitter, including an

amplifier

for each said color video signal of one of said sets for providing a color video signal output.”

Claim 1 of the ’919 patent also is directed to the problem of transmitting computer-generated analog color video signals over extended distances. A source of computer-generated color video signals is located at the front end of the system. A “transmitter” is located immediately thereafter, and it comprises a plurality of “amplifiers.” Claim 1 of the ’919 patent recites, in part, “a video transmitter comprising a plurality of

amplifiers,

one of each said

amplifiers

for each of said red, green, and blue video signals.”

Claim 6 of the ’919 patent is dependent on claim 1.

At claim construction, the term “amplifier,” as recited in these claims, was construed as meaning “a circuit (or a device when connected in a circuit) that draws power from a source other than the input signal and provides an output signal that reproduces the essential features of the input signal.”

Avocent’s subject motion for partial summary judgment asks the court to declare that ClearCube’s accused products satisfy “the ‘amplifier’ limitation” of claims 1 and 6 of the ’919 patent and claim 1 of

*1311

the ’997 patent.

The scope of the motion is tightly circumscribed. Avocent seeks to isolate the “amplifier,” as that term has been construed by this court, from the surrounding claim language. Avocent then turns to ClearCube’s accused products.

The ClearCube “Cage” is a centralized chassis that holds up to eight computers. In ClearCube’s terminology, each computer is called a “Blade.”

Each Blade, in turn, transmits analog color video signals (as well as other types of signals) to a “transmitter,” which ClearCube calls a “Backpack.”

The precise question before the court is whether Avocent’s claimed “amplifier” also can be identified in ClearCube’s “Backpack.” If so, and there is no fact dispute, Avocent’s motion for partial summary judgment is due to be granted.

Infringement analysis

A circuit diagram assigned the Bates stamp number “CC 41852” represents a portion of the ClearCube Backpack.

The diagram illustrates eight sets of three circuits, or twenty-four circuits in all. Each set of three circuits receives signal information from one of the eight computers, or “Blades,” located at the front end of the ClearCube system. The following schematic illustrates the three circuits that receive signal information from computer number 8 (designated “CP8” in the drawings):

*1312

[[Image here]]

The top circuit receives three types of signals: a “polarity” signal, a horizontal synchronization signal, and a green analog video signal (“GRN”).

The middle circuit also receives three types of signals: a “blanking” signal, a horizontal synchronization signal, and a red analog video signal (“RED”).

100

The third circuit illustrated on the bottom of the diagram receives a vertical synchronization signal, a horizontal synchronization signal, and a blue analog video signal (“BLU”).

101

*1313

“a circuit (or a device ivhen connected in a circuit)

”

The claimed “amplifier,” as construed by this court, must first and foremost have “a circuit (or a device when connected in a circuit).” It is undisputed that Clear-Cube’s Backpack has twenty four “circuits,” including the three circuits illustrated above.

“that draws power from a source other than the input signal

”

This clause may be parsed into two elements: (1) there must be an “input signal” to each circuit; and (2) the circuit must “draw[] power from a source other than the input signal.” The Backpack circuitry clearly receives an “input signal” from the computers, or “Blades,” located at the front end of ClearCube’s transmission system.

102

It also is undisputed that Clear-Cube’s circuit “draws power from a source other than the input signal.” At oral argument, Avocent’s counsel identified the symbol “5V,” standing for 5 volts, directly above the operational amplifiers located toward the right of the subject circuits. Avocent asserts, and ClearCube does not dispute, that this symbol represents the point at which power is drawn into the circuitry from a source other than the input signal. The actual power source is illustrated in another diagram, assigned Bates stamp number “CC 41851,” under the heading “Power Supply No. 1 Connector.”

103

c.“and provides an output signal that reproduces the essential features of the input signal

”

Finally, in view of the claimed “amplifier,” it must be found that ClearCube’s Backpack circuitry (i) “provides an output signal” (ii) “that reproduces the essential features of the input signal.” It is undisputed that there is an “output signal” at the far right end of the Backpack circuitry.

104

Even so, the contested issue is whether that circuitry provides an output signal that “reproduces the essential features of the input signal.” This is the question upon which Avocent’s motion ultimately turns.

Avocent quotes a snippet of testimony from the deposition of ClearCube’s expert witness, Dr. Gregg Vaughn, to satisfy this decisive requirement:

Q. So the red, green, and blue information that comes in get converted and combined, but that same information comes out on the right-hand side of that circuit; correct?

A. Yes, sir.

105

Avocent then construes this portion of Dr. Vaughn’s testimony as follows:

Dr. Vaughn expressly testified that the operational amplifiers and the surrounding circuity, receives the red, green and blue color video signal information, and reproduces that color video information

[i.e.,

the essential features of the input signal

106

] at the output of that circuitry.

*1314

This testimony, coupled with the Court’s construction of “amplifier,” establishes that the ClearCube transmitter has an “amplifier” for each of the color video signals.

107

Upon careful review of Dr. Vaughn’s testimony, however, this court must disagree with Avocent’s characterization of the evidence.

Dr. Vayghn’s testimony

Dr. Vaughn was asked during his deposition to review the Backpack circuits illustrated in the document bearing Bates stamp number CC 41852.

108

In response, Dr. Vaughn focused his analysis on the three circuits receiving signals from computer number 8, illustrated above. Dr. Vaughn observed that each circuit receives not only an analog color video signal, but also other signals, such as vertical and horizontal synchronization, polarity, and blanking signals.

109

These signals are combined algebraically, and then converted to a differential signal.

110

It was in this specific context that Avoeent’ counsel elicited the cited response from Dr. Vaughn:

Q. Okay. And those combined differential signals are then outputted from the circuitry that’s on this page, correct?

A. Yes, sir, eventually.

Q. This combined signal, just take the green positive, for example—

A. Okay.

Q. —that would include the polarity data, the synchronization data, as well as the color video—the green color video information; correct?

A. Yes, sir.

Q. And the same would be true for the red except perhaps it’s—strike that. With respect to the red, the differential signal—again, just take positive as an example—that would have the red color video information that was input on the left side of that circuit as well as the data from the other two signals that comes in on the left side of that circuit; correct?

A. Yes, sir. Red would have blanking and horizontal sync.

Q. Okay. And then the same or a similar analysis would hold for blue. The blue signal would come in from the computer on the left side and would be combined with information from two other signals—

A. Yes, sir.

Q. —converting to a differential signal and then output as a combined signal on the right-hand of that circuitry; correct?

A. That’s correct.

Q. So the red, green, and blue information that comes in get converted and combined, but that same information comes out on the right-hand side of that circuit; correct?

A. Yes, sir.

111

This testimony does not squarely address the question of whether ClearCube’s Backpack circuitry provides an output signal that “reproduces the essential features of the input signal.” Rather, and construing the evidence in the light most favorable to ClearCube, the non-moving party, Dr. Vaughn simply agrees with Avocent’s counsel that in ClearCube’s circuitry, the analog color video signal is provided as an output, notwithstanding the fact that it is

*1315

combined with other signals, such as horizontal and vertical synchronization signals, and converted into a differential format.

The distinction is made clearer upon review of another portion of Dr. Vaughn’s deposition testimony. Later in his deposition, Dr. Vaughn was specifically asked to provide a meaning for the phrase “reproduces the essential features of the input signal,” as set forth in the court’s construction of the claimed “amplifier.”

112

Dr. Vaughn opined that the “essential features” of the video signal are the “frequency components” of the video signal,

113

a term that he defined as encompassing signal voltage or current.

114

Dr. Vaughn also provided an opinion on what it meant to “reproduce” the essential features of the input signal: the claimed “amplifier” had to output the frequency components of the video signal in such a manner that, ultimately, the monitor would display the same image as originally transmitted by the computer.

115

When Dr. Vaughn was asked

in this context

to state whether ClearCube’s accused system included the claimed “amplifier,” Dr. Vaughn unequivocally stated that it did not, because ClearCube’s circuitry did not “reproduce the essential features of the input signal.”

116

Dr. Vaughn reasoned that in Avoeent’s claim “amplifier,” the frequency components of the input signal had to be reproduced at the output signal to an accuracy of less than one-half of one percent (0.5%); otherwise, the information transmitted from the computer would not be correctly displayed on the monitor.

117

In contrast, the circuitry in ClearCube’s Backpack actually decreased the frequency components by a ratio of one-third.

118

Avocent complains that this portion of Dr. Vaughn’s analysis includes improper claim construction, as well as arguments regarding the concept of voltage or current “gain” previously rejected by this court at claim construction. There is some merit to that contention. For example, as discussed in Part Five, Section B of this opinion,

supra,

Dr. Vaughn’s opinion regarding the requisite degree of accuracy in the claimed “amplifier” (0.5%) is due to be stricken.

Even so, this only underscores the fact that Avocent’s

reliance

on Dr. Vaughn’s deposition testimony to prove infringement of the claimed “amplifier” is misplaced. Dr. Vaughn never testified that the circuitry in ClearCube’s Backpack provides an output signal that “reproduces the essential features of the input signal.” His conclusion was just the opposite.

Conclusion

Where, as here, the party moving for summary judgment bears the burden of proof on an issue, then that party must satisfy not only the initial Rule 56(c) responsibility of informing the court, by reference to materials on file, that there are no genuine issues of material fact that should be decided at trial, but that party also must carry its ultimate burden by showing that it would be entitled to a directed verdict at trial.

See Celotex Corp. v. Catrett,

477 U.S. 317, 323-25 , 106 S.Ct.

*1316

2548, 91 L.Ed.2d 265 (1986). Avocent has failed to prove by a preponderance of the evidence that the circuitry in ClearCube’s Backpack provides an output signal that “reproduces the essential features of the input signal.” Avocent’s motion for partial summary judgment will, therefore, be denied.

ClearCube’s Motion for Partial Summary Judgment Declaring Non-Infringement of Claim 1 of the ’997 Patent, and, Claims 1 and 6 of the ’919 Patent

The court now turns to a related motion, filed by ClearCube, seeking a partial summary judgment declaring that claim 1 of the ’997 patent, and claims 1 and 6 of the ’919 patent, are

not

infringed by Clear-Cube’s accused products. Claim 1 of the ’997 patent recites, in relevant part:

1. A system for transmission of analog color video signals between a source of said signals and a video monitor, being at spaced locations, comprising:

a signal transmitter at a first location responsive to said output of a set of said color video signals, said transmitter, including an

amplifier

for each said color video signal of one of said sets for providing a color video signal output and wherein at least a high frequency portion of each said color video signal has been

amplified as a direct function of frequency

[.]

119

Claim 1 of the ’919 patent recites, in part:

1. An extended-in-length computer video communications link for transmitting computer video signals comprising:

a source of computer video signals including red, green, and blue video signals,

a video transmitter comprising a plurality of

amplifiers,

one of each said

amplifiers

for each of said red, green, and blue video signals, each said

amplifier

comprising:

a signal input for receiving a one of said red, green and blue video signals,

frequency sensitive compensating circuitry responsive to a said video signal so that said

amplifier

provides a first video signal that

increases in amplitude with increasing frequency

at a first output[.]

120

Claim 6 of the ’919 patent is dependent on claim 1.

ClearCube’s motion focuses upon the functional limitations imposed on the “am

plifier”

— i.e., that the “amplifier” provide “a color video signal output and wherein at least a high frequency portion of each said color video signal has been

amplified as a direct function of frequency”

(claim 1 of the ’997 patent), and “a first video signal that

increases in amplitude with increasing frequency

at a first output” (claim 1 of the ’919 patent).

Setting aside the preliminary question of whether its accused products include an “amplifier” as that term has been construed by the court, ClearCube contends that its circuitry, if it constitutes an “amplifier” at all, does not perform the functional requirements described in the language italicized above. The thrust of Avocent’s response is that ClearCube’s non-infringement motion raises an untimely claim construction contention.

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Procedural background

Critical events underlying ClearCube’s motion, and Avocent’s opposition to it, involve the parties’ conduct during the course of discovery and their compliance with the orders entered by this court. Avo-cent propounded an interrogatory on March 16, 2004, requesting ClearCube to disclose each claim element or limitation in each patent-in-suit that required construction by the court.

121

When ClearCube failed to answer responsively, Avocent moved to compel ClearCube’s claim construction contentions, and that motion was granted on July 12, 2004.

122

ClearCube was ordered to provide full and complete responses to Avocent’s request for claim construction contentions and, if necessary, to supplement its responses immediately upon gaining new information.

123

ClearCube answered Avocent’s interrogatory on July 23, 2004, representing that the claim terms “discrete” and “twisted pair” required construction.

124

Avocent also ascertained, through the course of subsequent discovery involving expert witnesses, that the claim term “amplifier” was disputed by ClearCube.

125

In September 2004, the court entered a Revised Scheduling Order in anticipation of a claim construction hearing.

126

The parties were ordered, among other things, to prepare and file a Joint Claim Construction and Pre-Hearing Statement that included the information specified in Local Patent Rule 4-3 implemented by Judge T. John Ward of the United States District Court for the Eastern District of Texas.

127

That Rule, in turn, required that the parties’ Joint Claim Construction and Pre-Hearing Statement include the construction of claim terms, phrases, or clauses on which the parties agreed, as well as each party’s proposed construction of disputed claim terms, phrases, or clauses.

128

In compliance with those instructions, the parties filed their Joint Claim Construction and Pre-Hearing Statement on December 17, 2004.

129

ClearCube asserted that the claim term “amplifier,” as recited in claim 1 of the ’997 patent, required construction. Imbedded in its lengthy construction of “amplifier,” however, was a proposed construction of the claim phrase “amplified as a direct function of

frequency”

— i.e., the additional, functional limitation on the “amplifier” recited in claim 1 of the ’997 patent. ClearCube stated: “ ‘Amplified as a direct function of frequency’ means that as the frequency increases the amount of amplification, in other words the amplitude, increases to compensate for line losses of a given length of conductor.”

130

Avocent subsequently moved to strike “amplified as a direct function of frequency” from the court’s claim construction

*1318

analysis.

131

Avocent correctly observed that the court’s July 12, 2004 order had instructed ClearCube to fully disclose its claim construction contentions, and if new information was obtained, to

immediately

supplement its interrogatory answers. ClearCube’s response, however, was that Avocent

had

received notice during discovery that the phrase was disputed. The major premise in ClearCube’s argument was that the phrase “amplified as a direct function of frequency,” as recited in claim 1 of the ’997 patent, was synonymous with the phrase “increases in amplitude with increasing frequency,” as recited in claim 1 of the ’919 patent. Indeed, ClearCube represented to the court that “the phrase ‘increasing signal amplitude with increasing frequency’

is just another way of saying

‘amplified as a direct function of frequency.’ ”

132

ClearCube argued that, because the parties had repeatedly probed the meaning of the phrase “increases in amplitude with increasing frequency” during discovery,

133

Avocent was placed on notice that the related phrase, “amplified as a direct function of frequency,” was disputed.

134

At oral argument, the court reserved ruling on Avocent’s motion to strike Clear-Cube’s claim construction contention for “amplified as a direct function of frequency.” Additionally, the court understood ClearCube’s argument — that “amplified as a direct function of frequency” was synonymous with “increases in amplitude with increasing frequency” — to mean that the latter phrase also needed to be construed, in tandem with its purported counterpart.

135

The court entered an order on November 29, 2005, instructing as follows: “ClearCube

must file a brief,

no later than Wednesday, December 14, 2005, clearly addressing its specific contentions regarding the construction of the phrase ‘increases in amplitude with increasing frequency’ from Claim 1 of the ’919 patent. Avocent

may respond

on or before Friday, December 30, 2005.”

136

Despite the unequivocal

*1319

instructions set forth in this order, Clear-Cube did not file a brief.

The court conducted its claim construction hearing on February 22 and 23, 2006. On the first day of the hearing, Avocent’s counsel (Donald Jackson) informed the court that Avocent had not filed a “response” regarding the phrase “increases in amplitude with increasing frequency,” for the obvious reason that ClearCube had failed to comply with the court’s order to “file a brief.” This court accordingly ruled that it would not construe that phrase, due to ClearCube’s failure to abide by the specific instructions set forth in the November 29, 2005 order.

137

Later during the hearing, ClearCube’s counsel (Joseph Cloud) admitted that counsel were fully aware of the explicit instruction, stated in the court’s November 29, 2005 order, that “ClearCube

must file a brief

MR. CLOUD: The decision was made by ClearCube’s counsel that the — we didn’t need a separate definition for increases in amplitude and increase in frequency. We felt as though and do feel as though that it’s incorporated into the amplifier definition and that the amplifier definition — that one of the essential characteristics to the amplifier definition is the increasing amplitude with increasing frequency. When we made the decision, we thought we don’t need to ask the Court to go out and define additional words of increase. We think it is — it’s there within the confines of amplifier itself. And I think not only that, but— so that was the reason that there wasn’t some kind of specific brief filed on it. I think the decision was we don’t want to ask the Court to come find a new definition of increase or increases in amplitude.

138

After the court’s ruling, precluding analysis of “increases in amplitude with increasing frequency,” ClearCube did not ask that the purportedly synonymous phrase, “amplified as a direct function of frequency,” be construed.

ClearCube’s summary judgment contentions

It is against this backdrop that Clear-Cube now moves for partial summary judgment declaring that claim 1 of the ’997 patent and claims 1 and 6 of the ’919 patent are not infringed. ClearCube argues that the pertinent claim limitations on the

“amplifier”

— ie., “amplified as a direct function of frequency” in claim 1 of the ’997 patent, and “increases in amplitude with increasing frequency” in claim 1 of the ’919 patent — both impose a particular requirement:

ie.,

when there is an increase in the frequency of a video signal at the claimed “amplifier,” the amplitude of the signal will

always

increase; it may

never

decrease, nor remain the same.

139

ClearCube relies on the adjective “monotonic” to describe this feature.

140

According to ClearCube, “monotonic” is a term that means

“always

moving in one direction; in this instance it means

always

increasing,

never

decreasing.”

141

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ClearCube also asserts the now-familiar argument that “amplified as a direct function of frequency” is synonymous with “increases in amplitude with increasing frequency.”

142

Under this rationale, the “monotonic” requirement applies with equal force to the “amplifier” in claim 1 of the ’997 patent, and, the “amplifier” recited in claims 1 and 6 of the ’919 patent.

ClearCube’s analysis then turns to the question of non-infringement. Joseph McAlexander was retained by Avocent to determine whether ClearCube’s products infringed the patents-in-suit. He served an infringement report on November 26, 2004.

143

To avoid a fact dispute at summary judgment, ClearCube now adopts the results of McAlexander’s laboratory tests

(ie.,

Avocent’s own evidence) for purposes of this motion. During his testing, McA-lexander attempted to identify circuitry in ClearCube’s products that evidenced the same characteristics as Avocent’s claimed “amplifier.”

144

A sample of his test results showed that,

at certain frequency ranges,

an increase in signal frequency resulted in an increase of signal amplitude. At

other ranges of frequency increase,

however, the signal amplitude either remained the same, or decreased. Clear-Cube relies on the phrase “meanders as to increasing frequency” to describe this phenomenon.

145

The following is ClearCube’s graphical representation of one of McAlex-ander’s data sets, with signal frequency represented on the horizontal axis, and signal amplitude represented on the vertical:

146

[[Image here]]

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On the strength of this evidence, Clear-Cube contends that claim 1 of the ’997 patent, and claims 1 and 6 of the ’919 patent, are not infringed by its accused products.

Avocent’s response

Avocent challenges ClearCube’s contention that the claim limitations of “amplified as a direct function of frequency” recited in claim 1 of the ’997 patent, and “increases in amplitude with increasing frequency” recited in claim 1 of the ’919 patent, require an increasing, “monotonic” relationship between signal frequency and amplitude. Avocent asserts that the language of the claims does not state that limitation, nor can that limitation be construed in view of other intrinsic evidence. Avocent also maintains that the asserted claims are literally infringed by ClearCube’s accused products.

Where, as here, the parties do not dispute any relevant facts regarding Clear-Cube’s products, but disagree over possible interpretations of the claim language, the question of literal infringement

should

collapse to one of claim construction, and thus be amenable to summary judgment.

See General Mills, Inc. v. Hunt-Wesson, Inc.,

103 F.3d 978, 983 (Fed.Cir.1997);

Athletic Alternatives, Inc. v. Prince Manufacturing, Inc.,

73 F.3d 1573, 1578 (Fed. Cir.1996). The problem in this case, however, is that claim construction was completed months ago, and the parties are now on the eve of trial. Thus, a resolution of ClearCube’s motion for partial summary judgment on the merits cannot be accomplished without casting the parties backward in this litigation.

What is most troublesome, however, is not the possibility of delay. Rather, it is the indifference with which ClearCube’s counsel construed the orders of this court. Nearly two years ago, on July 12, 2004, ClearCube was ordered to provide full and complete responses to Avocent’s request for claim construction contentions and, if necessary, to supplement its responses immediately upon gaining new information. ClearCube answered Avocent’s claim construction interrogatory on July 23, 2004, representing that only two claim terms, “discrete” and “twisted pair,” required construction. It is undisputed that Clear-Cube

never

supplemented its interrogatory responses to state that the claim phrase “amplified as a direct function of frequency” was disputed, or required construction.

When ClearCube finally did disclose that contention in the parties’ Joint Claim Construction and Pre-Hearing Statement, and Avocent moved to strike it, ClearCube represented to this court that, contrary to all appearances, it actually had acted in good faith. ClearCube’s argument was that the phrase “amplified as a direct function of frequency” was synonymous with the phrase “increases in amplitude with increasing frequency,” and since the latter concept was discussed repeatedly during deposition discovery, Avocent could not complain. That led this court to

order

that “ClearCube

must file a brief,

There was no equivocation in that instruction.

Of course, if ClearCube’s counsel had filed such a brief, and disclosed the contention they now advance at summary

judgment

— i.e., that “amplified as a direct function of frequency” and “increases in amplitude with increasing frequency” both describe an increasing, “monotonic” relationship between signal frequency and amplitude — Avocent would have responded, and this court would have addressed the issue on the merits at the stage of claim construction. But, that is not what occurred. ClearCube elected to disregard

*1322

the specific instructions of this court and, as explained by ClearCube’s counsel at the claim construction hearing, the reasons were strategic.

In hindsight, this court may reasonably ascertain what that strategy entailed. ClearCube made the following assertion in the parties’ Joint Claim Construction and Pre-Hearing Statement: “ ‘Amplified as a direct function of frequency’ means that as the frequency increases the amount of amplification, in other words the amplitude, increases to compensate for line losses of a given length of conductor.” Notably, this restatement of “amplified as a direct function of frequency” tracks the language of the phrase “increases in amplitude with increasing frequency.” ClearCube clearly wished to solidify its major premise that “amplified as a direct function of frequency” was synonymous with “increases in amplitude with increasing frequency.”

As explained by ClearCube’s counsel at the claim construction hearing, however, ClearCube did not then desire to have the critical phrase “increases in amplitude with increasing frequency” construed. Clear-Cube’s position is that the plain and ordinary meaning of the phrase “increases in amplitude with increasing frequency” describes an increasing, “monotonic” relationship between signal frequency and amplitude, and that no words need to be added or deleted from the claim language to express that concept.

Maybe so. But to reiterate, ClearCube was

ordered

by this court to set forth such an argument in a brief. There was no room for gamesmanship during the critical time period leading up to the claim construction hearing. This should have been patently clear to ClearCube’s counsel, in light of Avocent’s contemporary accusations that ClearCube’s conduct, with regard to disclosure of claim construction contentions, was one of “delay, conceal, and surprise.”

147

The court also notes the following request placed in a marginal note of Clear-Cube’s summary judgment brief:

To the extent the claim language

lie.,

“amplified as a direct function of frequency” and “increases in amplitude with increasing frequency”] does not appear clear and unambiguous as to the required relationship between increasing frequency and increasing amplitude,

ClearCube asks that the Court further construe the subject claims to eliminate any possible confusion.

148

This request will be denied. ClearCube was given the opportunity to “eliminate any possible confusion” prior to the claim construction hearing, but it elected not to do so. This court will not revisit claim construction upon ClearCube’s request, especially under these egregious circumstances, unless ordered to do so upon subsequent appeal to the Federal Circuit.

Conclusion

ClearCube’s motion for partial summary judgment, which relies upon a disputed interpretation of “amplified as a direct function of frequency” and “increases in amplitude with increasing frequency,” is denied.

C. “The Adapter

Motion”

— ie.,

Clear-Cube’s Motion for Partial Summary Judgment Declaring Non-Infringement of Claims 1 and 6 of the ’919 Patent

ClearCube also moves for a partial summary judgment declaring that its accused products do not infringe claims 1 and 6 of the ’919 patent.

149

The parties convenient

*1323

ly refer to this as “the adapter motion,” because it addresses the functions of the “adapter” recited in the asserted claims. Claim 1 of the ’919 patent recites in part:

1. An extended-in-length computer video communications link for transmitting computer video signals comprising:

adapter

for each of said twisted pair of conductors, each said

adapter

coupled to an opposite end of a respective one of said twisted pair of conductors, each said

adapter

receiving said first video signal and said second video signal and providing a respective said video signal as a single ended output, and further configured to provide a ground reference potential

for said transmitter

at said

adapter,

whereby need for a reference ground conductor between said transmitter and said adapter is eliminated.

150

Claim 6 of the ’919 patent is dependent on claim 1.

Facts relevant to “the adapter motion”

Most of the facts pertinent to the discussion of “the adapter motion” were set forth in detail in Part Five, Section A

supra.

A brief summary is provided below.

Joseph McAlexander was retained by Avoeent to show how ClearCube’s accused products infringed the patents in suit. McAlexander served his original infringement on August 2, 2004, and he served a supplemental infringement report on November 26, 2004.

151

McAlexander opined that each element of the claimed “adapter,” as recited in claim 1 of the ’919 patent and incorporated into dependent claim 6 of the same patent, also was found in Clear-Cube’s accused products, specifically in a structure called a “C-Port.”

152

At claim construction, one issue addressed by this court was the meaning of the phrase “for said transmitter,” as it limited the claim term “adapter.” This court construed that phrase as meaning “from the signals received from the transmitter.” In other words, claim 1 of the ’919 patent recites an “adapter ... further configured to provide a ground reference potential

¡from the signals received from the transmitter

] at said adapter »

153

Following claim construction, the court issued a Revised Scheduling Order permitting the parties to conduct additional discovery for the purpose of incorporating, to the extent necessary, this court’s construction of disputed claim terms into the infringement analysis.

McAlexander disclosed his second supplemental report on April 10, 2006.

154

He opined that, like the “adapter” in claims 1 and 6 of the ’919 patent, ClearCube’s “C-Port” provided a ground reference potential “from the signals received from the

*1324

transmitter.” The focal point of McAlexan-der’s analysis was a circuit diagram of the C-Port shown on a document bearing Bates stamp number “CC 9225.”

155

McA-lexander’s report isolated a portion of that schematic, showing transmission of positive and negative red video signals, and identified two resistors, labeled “R16” and “R21,” in particular. This analysis followed:

To take the positive and negative red conductors as an example, when one “looks into” the C-Port at the nodes above R16 and below R21, one can determine that that circuitry provides a ground reference potential from the signals received from the transmitter, as required by the Court’s Markman Order. The equivalent resistance across R16 is approximately 51 ohms. The equivalent resistance across R21 is approximately 55 ohms. The mid-point between R16 and R21 is shown as corresponding to the ground used by the remaining C-Port circuitry. This shows that the C-Port circuitry provides a ground reference for the C-Port from the signals received from the transmitter.

Essentially the same circuitry is reproduced for the blue and the green signal pairs as they enter the C-Port.

156

McAlexander was deposed by ClearCube’s counsel on April 17, 2006.

157

ClearCube’s argument

ClearCube asserts that its accused products do not include an “adapter,” or any corresponding structure that provides a ground reference potential “from the signals received from the transmitter.” At summary judgment, however, the decisive question is this: Do the findings and opinions contained in McAlexander’s April 10, 2006 supplemental report (and his April 17, 2006 deposition testimony) create a genuine issue of material fact as to whether ClearCube’s “C-Port” provides a ground reference potential “from the signals received from the transmitter”?

ClearCube’s “testing” contention

ClearCube initially challenges McAlex-ander’s infringement analysis on the basis that it is founded upon speculation and conjecture, and directs the court to a snippet of his deposition testimony in which McAlexander was asked the following:

Q. Did you do any testing of the C-Port to see whether it was providing the ground reference potential for the C-Port? This mid-point, whether it was providing the ground reference potential for the C-Port?

A. If you’re asking if I tested it like I did the McDermott,

I have not tested yet. I can see from the schematics that it is, that it does provide a potential that captures what is at the transmitter.

158

Seizing upon the statement “I have not tested yet,” ClearCube asserts that, because McAlexander’s opinions are not supported by test data, they are not sufficient to resist summary judgment. This court disagrees. ClearCube ignores McAlexan-der’s immediate qualification:

“I can see from the schematics that ...

[the C-Port] does provide a potential that captures what is at the transmitter.”

159

McAlexan-der repeatedly referred to the C-Port schematic diagram during his deposition as support for his opinion that ClearCube’s

*1325

C-Port provides a ground reference potential “from the signals received from the transmitter.”

160

Moreover, the

allegation

that some type of (unspecified) testing is a necessary predicate to support McAlexander’s conclusion that ClearCube’s C-Port provides a ground reference potential “from the signals received from the transmitter” merely affects the

weight

a decision-maker may choose to accord his opinion, but certainly not its admissibility.

ClearCube’s credibility contentions

ClearCube also attacks the credibility of the opinions stated in McAlexander’s second supplemental report. ClearCube observes that, in his first two infringement reports (both issued prior to claim construction), McAlexander opined that, like the invention embodied in claims 1 and 6 of the ’919 patent, ClearCube’s accused products lacked a separate conductor for the transmission of ground signals. Clear-Cube complains that McAlexander’s latest report is a departure. The following statements illustrate the argument:

“ClearCube submits that it is simply not credible for Mr. McAlexander to submit a supplemental report (after the Court’s claim construction ruling for the term ‘adapter’) to the effect that ClearCube’s system now works differently, particularly since nothing has changed in the ClearCube product design”;

161

“Avocent has not offered any ... testimony or evidence other than the contradictory and vacillating testimony of its own expert which should be given no weight”;

162

“Avocent failed to present any credible evidence raising a fact as to infringement”;

163

and,

“Mr. McAlexander first said one thing about the operation of the adapter, and when that did not suit Avocent’s purposes, he said something else. Accordingly, Mr. McAlexander’s opinions provide no support for Avocent’s infringement arguments.”

164

ClearCube ignores the hornbook principle that it is not proper for this court to assess witness credibility when considering a motion for summary judgment; such determinations are reserved for the jury.

See, e.g., Wanlass v. Fedders Corporation,

145 F.3d 1461, 1463 (Fed.Cir.1998) (“In determining the propriety of summary judgment, credibility determinations may not be made.”).

165

Dr. Vaughn’s rebuttal

ClearCube also directs the court to the opinion of its expert, Dr. Vaughn, who opines that ClearCube’s “C-Port” does not perform the same functions as the claimed “adapter,” because it is not configured to provide a ground reference potential “from the signals received from the transmitter.”

*1326

Dr. Vaughn’s opinion is grounded in two assertions: (1) a “common-mode filter” located on the front end of ClearCube’s transmission system does not allow recovery of the ground reference potential at the accused receiver; and (2) there is no need to recover the ground reference potential at the accused receiver, because signals in the ClearCube system are sent in a balanced format.

166

ClearCube argues that Dr. Vaughn’s opinions have remained consistent throughout this litigation, bolstering its motion for summary judgment.

This argument stumbles coming out of the gate: it is axiomatic that, when considering a motion for summary judgment, the court is required to accept the

non-moving

party’s evidence as true, and draw all reasonable inferences in favor of the

non-moving

party. While ClearCube may

ultimately

persuade a jury, on the strength of Dr. Vaughn’s testimony, that its “C-Port” does not provide a ground reference potential “from the signals received from the transmitter,” that is of no moment at this stage of the litigation. Dr. Vaughn’s opinions merely create a fact dispute requiring resolution by a jury.

Conclusion

ClearCube’s motion for a partial summary judgment declaring non-infringement of claims 1 and 6 of the ’919 patent will be denied.

Avocent’s Motion for Partial Summary Judgment Declaring that Claims 16-18 of the ’919 Patent Are Infringed.

This court entered an order on May 10, 2006, holding that some accused products marketed by ClearCube literally infringe claims 16-18 of the ’919 patent. That partial declaratory judgment and accompanying memorandum opinion were entered as doc. nos. 152 and 153, respectively.

Part Seven

Avocent’s Motion for a Partial Summary Judgment Declaring That The Patents-in-Suit “Are Not Invalid”

In the first sentence of the motion docketed in this case as doc. no. 142, Avocent asks the court to render a partial summary judgment declaring that the ’997 and ’919 patents “are not invalid” — a grammatically-disapproved double-negative (negation of an opposite) that is construed as requesting a judgment declaring the patents-in-suit to be “valid.” The motion will be denied for the reasons discussed below.

Congress declared in § 282 of the Patent Act that all issued patents “shall be presumed valid,” and the burden of proving invalidity “rest[s] on the party asserting ... invalidity”:

A patent shall be presumed valid. Each claim of a patent

(whether in independent, dependent, or multiple dependent form)

shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.

Notwithstanding the preceding sentence, if a claim to a composition of matter is held invalid and that claim was the basis of a determination of nonobvi-ousness under section 103(b)(1), the process shall no longer be considered non-obvious solely on the basis of section 103(b)(1).

The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

35 U.S.C. § 282 (emphasis supplied);

see also, e.g., American Hoist & Derrick Company v. Sowa & Sons, Inc.,

725 F.2d 1350, 1358-60 (Fed.Cir.1984).

*1327

This statutory presumption of validity is not a principle of substantive law, nor is it “evidence” to be weighed against a challenger’s argument of invalidity; instead, it is “a procedural device” that places the burden of going forward with the production of evidence—as well as the burden of persuading a decision-maker that a patent is not valid—upon the alleged infringer, the party asserting invalidity as an affirmative defense.

See, e.g., SmithKline Diagnostics, Inc. v. Helena Laboratories Corp.,

859 F.2d 878, 885 (Fed.Cir.1988) (observing that the presumption “places the burden of proof of facts, and the ultimate burden of persuasion to establish invalidity,” on the party attacking validity);

Avia Group International, Inc. v. L.A. Gear California, Inc.,

853 F.2d 1557, 1562 (Fed.Cir.1988) (same).

“Thus, unless the alleged infringer undertakes to challenge validity with evidence, the patentee need do nothing to establish its rights under the patent.”

New England Braiding Co. v. A.W. Chesterton Co.,

970 F.2d 878, 882 (Fed.Cir.1992).

The burden of persuasion never shifts. The Federal Circuit has clearly stated in numerous cases that “the burden of persuasion on invalidity must, under the statute, remain at all times on the party asserting invalidity.”

RCA Corp. v. Applied Digital Data Systems, Inc.,

730 F.2d 1440, 1444 (Fed.Cir.1984);

see also, e.g., American Hoist & Derrick Co.,

725 F.2d at 1358 (observing that the burden is “permanent”);

Solder Removal Co. v. U.S. International Trade Commission,

65 C.C.P.A. 120 , 582 F.2d 628, 632-33 (Cust. & Pat. App.1978) (holding that “the burden of persuasion is and remains always upon the party asserting invalidity”).

Of course, very much like the familiar, burden-shifting, analytical framework crafted by the Supreme Court in

McDonnell Douglas Corp. v. Green,

411 U.S. 792 , 93 S.Ct. 1817 , 36 L.Ed.2d 668 (1973), for use in Title VII disparate treatment cases based upon circumstantial evidence, when a challenger presents a

prima facie

case of invalidity, the patent-holder then comes under a burden of producing rebuttal evidence. Even so, “the presumption of validity remains intact and the ultimate burden of proving invalidity remains with the challenger throughout the litigation.”

Innovative Scuba Concepts, Inc. v. Feder Industries, Inc.,

26 F.3d 1112, 1115 (Fed.Cir.1994).

Further, a determination of invalidity “must be predicated on facts established by clear and convincing evidence.”

Rockwell International Corporation v. United States,

147 F.3d 1358, 1362 (Fed. Cir.1998) (citing

National Presto Industries v. West Bend Company,

76 F.3d 1185, 1189 (Fed.Cir.1996)).

167

The foregoing principles underscore the impropriety of that portion of Avocent’s motion asking this court to declare the patents-in-suit “valid” (or, as Avocent phrases it, “not invalid”). The Federal Circuit has quite clearly held that it is “neither necessary nor appropriate for a court to declare a patent valid. A trial court is required by Congress ... to say

*1328

only whether the patent challenger carried its burden of establishing invalidity in the particular case before the court.”

Panduit Corp. v. Dennison Mfg. Co.,

810 F.2d 1561, 1569 (Fed.Cir.1987) (citations and footnote omitted).

Part Eight

ClearCube’s Failure to Provide Evidence of Invalidity Under 35 U.S.C. §§ 102 and 112

Avocent moves for a partial summary judgment declaring that “ClearCube has failed to provide any evidence of invalidity under 35 U.S.C. §§ 102 and 112.”

168

ClearCube concedes these issues: it does not contend that “any reference meets all of the limitations of the patents-in-suit so as to anticipate the claims at issue” under § 102,

169

or that the patents-in-suit are invalid under § 112.

170

This aspect of Avo-cent’s motion, therefore, is due to be granted.

Part Nine

The Issues of Whether the ’997 Patent is Prior Art to the Asserted Claims of the ’919 Patent, and, Whether the %0I Patent is Prior Art to Both the ’997 and ’919 Patents

In the motion for partial summary judgment docketed as doc. no. 136, ClearCube asks this court to declare that the ’404 patent constitutes “prior art” for both of the patents-in-suit, and, that the ’997 patent is prior art for the asserted claims of the ’919 patent. Conversely, sub-parts (3) and (5) of Avocent’s motion for partial summary judgment (doc. no. 142) ask this court to declare that “the ’997 patent is

not

prior art to the asserted claims of the ’919 patent,” and that “Robert Asprey is the sole inventor of the ’997 patent claims and the asserted claims of the ’919 patent

(ie.,

claims 1, 6, and 16-18).”

The ’101 Patent Is Prior Art to the ’997 and ’919 Patents

Avocent did not contest ClearCube’s contention that the ’404 patent constitutes prior art for both of the patents-in-suit, characterizing it as a “red herring argument.”

171

Therefore, ClearCube’s motion

*1329

for summary judgment is due to be granted,

172

and the ’404 patent will be deemed prior art to the asserted claims of both patents-in-suit.

Is the ’997 Patent Prior Art to the ’919 Patent?

The term “prior art” is not expressly defined in Title 35.

See In re Wertheim,

646 F.2d 527, 532 (Cust. & Pat.App.1981). Nevertheless, the Federal Circuit has construed the term, as it is used in § 103, as referring “at least to the statutory materials named in 35 U.S.C. § 102 .”

Riverwood International Corp. v. R.A. Jones & Company, Inc.,

324 F.3d 1346, 1354 (Fed.Cir. 2003) (citing

In re Wertheim,

646 F.2d at 532 ).

173

Both parties point to § 102(e) as the pertinent provision for determining whether the subject matter recited in numbered claim 1 of the ’997 patent constitutes § 103 prior art to the asserted claims of the ’919 patent (ie., claims 1, 6, and 16-18).

The pertinent part of § 102(e) provides that a person is

not

entitled to a patent

“the invention was described in ... a patent granted on an application for patent

by another

filed in the United States before the invention by the applicant for patent.” 35 U.S.C. § 102 (e)(2) (emphasis supplied). A careful parsing of § 102(e)(2)’s language yields four elements that must be satisfied before the numbered claims of a reference patent may be deemed “prior art” under that provision, when read in conjunction with § 103: ie., “there must be (1) an application for a patent (2) which issues as a patent, (3) filed by another (4) before the invention thereof by the applicant.”

In re Ornitz,

54 C.C.P.A. 1304 , 376 F.2d 330, 333 (Cust. & Pat.App.1967).

174

All four of these re

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quirements must be satisfied before a reference may be characterized as “prior art” for determining the validity of a later patent that is challenged as invalid on the ground of “obviousness.”

The first and second requirements of § 102(e)(2)

It is undisputed that the first and second requirements of § 102(e)(2) are satisfied with respect to the ’997 patent. The ’697 application was filed on October 31, 1996, satisfying the first requirement that there be “an application for a patent.” The application issued as the ’997 patent on November 21, 2000, satisfying the second requirement that the application “issuef ] as a patent.”

175

The fourth requirement of § 102(e)(2)

It also is clear that the fourth element of § 102(e)(2) — the requirement that the ’697 application that issued as the ’997 patent be filed “before the invention thereof by the applicant” — is satisfied.

When analyzed through the lens of § 102(e)(2), the effective filing date of a § 103 prior art reference “is the

application

filing date,

not

the

patent issuance

date.”

In re Bartfeld,

925 F.2d 1450 , 1451 n. 4 (Fed.Cir.1991) (emphasis supplied) (citing

Hazeltine Research, Inc. v. Brenner,

382 U.S. 252 , 86 S.Ct. 335 , 15 L.Ed.2d 304 (1965)).

It is not unusual, however, for a reference patent to issue after a

series

of patent applications.

See, e.g., In re Wertheim,

646 F.2d 527 (Cust. & Pat.App.1981). That fact gives rise to the question of which application filing date should apply to the reference patent.

See, e.g., id.

at 533 (“[T]he next question confronting the courts was what filing date was to be accorded a reference patent which issues after a series of applications. How far back can one extend the effective date of a reference patent as ‘prior art’ in such a case?”).

The ’697 application that issued as the ’997 patent was a continuation-in-part of the ’442 application,

176

to which the Pat

*1331

ent and Trademark Office assigned a filing date of January 5, 1994. Avocent expressly admits — but only for purposes of the present, “prior art” analysis — that, due to the common subject matter between the ’442 application and numbered claim 1 of the ’997 patent, the effective filing date for claim 1 is January 5, 1994.

177

See, e.g.,

35 U.S.C. § 120 ;

In re Wertheim,

646 F.2d 527 (Cust. & Pat.App.1981). That date was “before” the inventions now challenged by ClearCube for obviousness.

The ’076 application, which was filed on

June S, 1996,

issued as the ’919 patent. While the ’076 application also was a continuation-in-part application, it is undisputed that the asserted claims of the ’919 patent involved the use of “twisted pair conductors” — a term that did not arise in earlier patent applications filed by Cybex. Avocent therefore admits that the appropriate filing date for claims 1, 6, and 16-18 of the ’919 patent is June 3, 1996.

See, e.g., Augustine Medical, Inc. v. Gaymar Industries, Inc.,

181 F.3d 1291, 1302 (Fed. Cir.1999) (“Subject matter that arises for the first time in the [continuation-in-part] application does not receive the benefit of the filing date of the parent application.”).

178

The third requirement of§ 102(e)(2)

Thus, ClearCube’s contention that the subject-matter recited in numbered claim 1 of the ’997 patent constitutes prior art to claims 1, 6, and 16-18 of the ’919 patent comes down to, and hinges upon, the third element of § 102(e)(2), which may be paraphrased as follows; Was the sole inventor named on the ’697 application that issued as the ’997 patent (Robert Asprey)

also

the inventor responsible for numbered claims 1, 6, and 16-18 in the ’076 application that issued as the ’919 patent? In other words, were the relevant inventive entities the same, or different (legally “another”)?

a. Common versus disparate inventors

To qualify as “prior art” under § 102(e), the inventive entity responsible for the subject matter of a prior reference must be different from the inventive entity of the subject matter that is alleged to be

*1332

invalid on grounds of “obviousness.” Common inventorship precludes prior art status.

See

35 U.S.C. § 102 (e)(2) (explicitly stating that the prior art reference at issue must be “by another”);

Riverwood International Corp. v. R.A. Jones & Co., Inc.,

324 F.3d 1346, 1356 (Fed.Cir.2003) (holding that “an application issued to the same inventive entity cannot be prior art under section 102(e)”) (quoting

In re Costello,

717 F.2d 1346, 1349 (Fed.Cir.1983) (“An applicant may also overcome a reference by showing that the relevant disclosure is a description of the applicant’s own work. The pertinent inquiry is under 35 U.S.C. § 102 (e).”)).

Section 111 provides that “[a]n application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.” 35 U.S.C. § 111 (a)(1). Section 116 elaborates that requirement in the following manner:

When an invention is made by two or more persons jointly, they shall apply for patent jointly

and each make the required oath, except as otherwise provided in this title.

Inventors may apply for a patent jointly even though

(1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution,

(3)

each did not make a contribution to the subject matter of every claim of the patent.

35 U.S.C. § 116 (emphasis supplied).

Robert R. Asprey, a former Cybex employee, was the sole inventor of the claims recited in the ’997 patent.

179

In contrast, the ’919 patent identifies Asprey, Philip M. Kirshtein, and Thomas V. Lusk as inventors. These facts give rise to at least a suggestion, if not an inference or presumption, of separate inventive entities.

See In re Land,

54 C.C.P.A. 806 , 368 F.2d 866, 881 (Cust. & Pat.App.1966) (observing that “[i]t is certainly in accord with the weight of authority to regard Land and Rogers

individually

as separate legal entities from Land and Rogers as

joint inventors

”) (emphasis supplied) (footnote omitted).

Even so, for purposes of determining § 103 prior art status under § 102(e), the court must probe beyond the names of the inventors listed on the patents. “What is significant is not merely the differences in the listed inventors,

but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Riverwood,

324 F.3d at 1356 (emphasis supplied) (citing

In re De-Baun,

687 F.2d 459, 462 (Cust.

Pat.App. 1982)).

On this issue, ClearCube offers little beyond the names of the inventors listed on the patents. Assuming, but not deciding, that this is sufficient “proof’ to establish a

prima facie

case that the inventive entities were not the same, but “another,” Avocent has come forward with evidence that Robert R. Asprey was the sole inventor of the subject matter that is claimed in the ’442 application, the ’997 patent, and, numbered claims 1, 6, and 16-18 of the ’919 patent.

180

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The opinion of the Court of Customs and Patent Appeals in

DeBaun

teaches that, when one of two (or more) inventors named on a patent contends that certain elements of the patent claims were his own work, as opposed to that of the other named inventor(s), he must “provide satisfactory evidence, in light of the total circumstances of the case, that the reference reflected is his own work.” 687 F.2d at 463 (citing

In re Facius,

56 C.C.P A. 1348, 408 F.2d 1396, 1406 (Cust. & Pat.App. 1969), and

In re Land,

54 C.C.P A. 806, 368 F.2d 866, 879-80 (Cust. & PatApp. 1966)). An “unequivocal declaration” submitted by the inventor may suffice,

181

provided it is corroborated.

182

The ’919 patent contains twenty claims, but of those, only claims 1, 6 and 16-18 are alleged by Avocent to have been infringed by ClearCube. Focusing on those claims, Avocent has submitted the sworn declarations of Robert Asprey and Philip Kirsh-tein, two of the three inventors named in the ’919 patent. Asprey, who now is deceased, declared that he was “the

sole inventor

of the subject matter recited in

claims 1, 6, and 16

— 18

of the ’919 patent.”

183

Asprey described the contributions of Philip Kirshtein and Thomas Lusk to the claims in the ’919 patent as follows:

I note that the ’919 patent also names Mr. Philip Kirshtein and Mr. Thomas Lusk as co-inventors. I worked with Mr. Kirshtein and Mr. Lusk when I was an employee of Avocent (then Cybex). In the context of the ’919 patent, Mr. Kirshtein and Mr. Lusk worked on the sync signal aspect of that patent.

Those aspects are recited in claims 2 and 3 of the ’919 patent, and in the last paragraph of claim 19. Thus, I believe that they are the inventors of the additional subject matter recited in claims 2 and 3, and the sync signal subject matter of claim

19.

184

Asprey’s statements are wholly corroborated by the declaration of Philip Kirsh-tein, who swore:

I did not invent the subject matter recited in claim 1, 6, and 16-18 of the ’919

*1334

patent.

In fact, to my knowledge, Mr. Robert Asprey, who is a former co-worker of mine, was the sole inventor of the subject matter recited in claims 1, 6 and 16-18.

Mr. Thomas Lusk (also a co-inventor of the ’919 patent) and I worked on the video sync signals and how those signals would be processed in the context of Mr. Asprey’s video signal transmission system.

As a result of my work, I believe that Mr. Lusk and I are the inventors of subject matter recited in claims 2 and 8 of the ’919 patent, and the sync signal aspect of claim

19.

185

Significantly, ClearCube offers no evidence to rebut the declarations of Asprey and Kirshtein.

In response to a contention raised by ClearCube,

186

the court finds that the evidence submitted by Avocent rises to the level of clear and convincing proof.

187

As-prey unequivocally testified that he was the sole inventor of the relevant claims. Kirshtein corroborated Asprey’s testimony in all respects. Kirshtein’s testimony cannot reasonably be called into doubt. In an attempt to impeach, ClearCube notes that Kirshtein is an employee of Avocent, but there is no specific evidence that he stands to benefit directly from his corroboration of Asprey’s testimony. Whatever indirect benefits Kirshtein

may

receive would be

de minimis

when compared to the penalties of perjury, under which his declaration was submitted.

ClearCube also notes that the record does not include the testimonial evidence of Thomas Lusk, the third inventor named in the ’919 patent. The court finds that the absence of Lusk’s testimony does not render the totality of Avocent’s evidence to be less than clear and convincing. “It is sufficient if the picture painted by all of the evidence taken collectively gives the [court] ‘an abiding conviction’ that [As-prey’s] assertion of prior conception is ‘highly probable.’ ”

Price v. Symsek,

988 F.2d 1187, 1196 (Fed.Cir.1993) (quoting

Buildex, Inc. v. Kason Industries, Inc.,

849 F.2d 1461, 1463 (Fed.Cir.1988)).

Conclusion: The ’997 patent is not prior art to the asserted claims of the ’919 patent, due to Robert As-prey’s common inventorship

Based upon the foregoing, the court concludes that Avocent has produced more than “satisfactory evidence, in light of the total circumstances of the case,” that Robert Asprey was the sole inventor of not only the ’997 patent, but also the subject matter recited in claims 1, 6 and 16-18 of the ’919 patent.

DeBaun,

687 F.2d at 463 . Accordingly, the ’997 patent is

not

“prior art” to the asserted claims of the ’919 patent.

Part Ten

ClearCube’s Contention That The Patents-in-Suit Are Invalid For “Obviousness”

Avocent moves for a partial summary judgment declaring that “Clear-Cube’s affirmative defenses under 35 U.S.C. § 103 are defective as a matter of

*1335

law because ClearCube has failed to identify evidence of a proper motivation, teaching or suggestion for combining the prior art references.”

188

Only valid patents give the patent owner the right to exclude others from making or using the patented invention; conversely, an invalid patent cannot be infringed.

See, e.g., Ever-Wear, Inc. v. Wieboldt Stores, Inc.,

427 F.2d 373, 376 (7th Cir.1970). It follows, therefore, that an alleged infringer who shows that the patents asserted against him are invalid, because it would have been “obvious” to a person of ordinary skill in the relevant art to combine elements found in prior art references and thereby produce the claimed inventions, cannot be liable for infringement.

See

35 U.S.C. § 103 . An assertion of invalidity is an affirmative defense.

See

35 U.S.C. § 282 .

The Patent Requirement of “Non-Obviousness”

The three, fundamental requirements for the issuance of a patent are novelty, utility, and nonobviousness.

See

35 U.S.C. §§ 101 , 102, 103.

See also Graham v. John Deere Company of Kansas City,

383 U.S. 1, 12 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966) (“[Patentability is dependent upon three explicit conditions: novelty and utility as articulated and defined in § 101 and § 102, and nonobviousness ... as set out in § 103.”).

The first two of these requirements are suggested by the Constitutional provision vesting Congress with the power to “promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their respective ... Discoveries.” U.S. Const, art I, § 8, cl. 8. The phrase “promote the Progress of’ clearly implies that, to be worthy of a patent, an invention must be “new,” or possess

novelty.

This term has been construed as meaning that the invention, with all of its parts and claimed elements, cannot be found in

a single piece of

“prior art.”

See, e,g., RCA Corp. v. Applied Digital Data Systems, Inc.,

730 F.2d 1440 , 1444 (Fed.Cir.1984). The requirement that an inventor’s “Art” be “useful” in order to merit a patent means that the invention must have

utility;

in other words, it must, at the very least, work.

See, e.g., Process Control Corp. v. HydRe-claim Corp.,

190 F.3d 1350, 1358 (Fed.Cir. 1999) (“The utility requirement of 35 U.S.C. § 101 mandates that any patentable invention be useful and, accordingly, the subject matter of the claim must be operable.”).

The fact that an inventor’s product or process is both novel and useful will not alone merit the issuance of a patent, however. Instead, the invention also must not have been “obvious” to other persons possessing ordinary skill in the same field of relevant art. Thus, if such persons, looking at the same problem addressed by an inventor, would have reached the inventor’s solution, the invention is said to be “obvious,” and it cannot become the subject of a valid patent. Stated differently, a novel and useful product or process cannot become the subject of a valid patent

unless

the invention was “non-obvious” when made.

See, e.g., Graham,

383 U.S. at 14 , 86 S.Ct. 684 (holding that patentability also depends “upon the ‘non-obvious’ nature of the ‘subject matter sought to be patented’ to a person having ordinary skill in the pertinent art”) (citing 35 U.S.C. § 103 ). Congress incorporated this requirement into Section 103, providing that:

A patent may not be obtained though the invention is not identically disclosed

*1336

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.

Patentability shall not be negatived by the manner in which the invention was made.

35 U.S.C. § 103 (a) (emphasis supplied).

189

Obviousness is a question of law

The issue of whether a challenged patent would, or would not, have been “obvious” to a person skilled in the relevant art “is a question of law based on factual inquiries which include: (1) the scope and content of the prior art; (2) the difference between prior art and the claims at stake; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness (secondary factors).”

Akzo N.V. v. United States International Trade Commission,

808 F.2d 1471, 1480 (Fed.Cir.1986);