Guzik Technical Enterprises, Inc. v. Western Digital Corporation et al

Filing 224

ORDER RE CLAIM CONSTRUCTION, MOTIONS FOR PARTIAL SUMMARY JUDGMENT, MOTION UNDER FED. R. CIV. P. 56(D) by Judge Paul S. Grewal granting in part and denying in part 131 Motion for Partial Summary Judgment; granting 132 Motion for Partial Summary Judgment; granting in part and denying in part 137 Motion for Partial Summary Judgment (psglc2, COURT STAFF) (Filed on 7/19/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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GUZIK TECHNICAL ENTERPRISES, INC.,

)
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Plaintiff and Counterclaim Defendant, )
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v.
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WESTERN DIGITAL CORPORATION,
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WESTERN DIGITAL TECHNOLOGIES, INC., )
and WESTERN DIGITAL (FREMONT) INC., )
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Defendants and Counterclaim Plaintiffs, and )
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WESTERN DIGITAL (THAILAND)
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COMPANY LIMITED and WESTERN
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DIGITAL (MALAYSIA) SDN.BHD,
)
)
Defendants.
)
)

Case No.: 11-CV-03786-PSG
ORDER RE: CLAIM
CONSTRUCTION, WESTERN
DIGITAL’S MOTIONS FOR
PARTIAL SUMMARY JUDGMENT,
AND GTE’S MOTION UNDER FED.
R. CIV. P. 56(D)
(Re: Docket Nos. 131, 132, 137)

In this patent infringement case, Defendants Western Digital Corp., et al (collectively,

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“Western Digital”) bring two partial motions for summary judgment on the grounds of

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noninfringement and invalidity based on indefiniteness. Plaintiff Guzik Technical Enterprises

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(“GTE”) opposes and also brings its own motion under Fed. R. Civ. P. 56(d). Having considered

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the parties’ papers and arguments, the court GRANTS-IN-PART Western Digital’s motions and

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GRANTS-IN-PART GTE’s motion. The court also provides the reasoning for its previous

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construction of ten claim terms.

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Case No.: 11-3786
ORDER

I.

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BACKGROUND

The patents in this case describe hard drive disk test components. 1 Hard drives consist of

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magnetic disks on which data is written. Those magnetic disks encircle a motor-driven spindle hub

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that spins the disks. To access the data, the hard drive uses a head-stack assembly (“HSA”) that

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has a head mounted on a pivot-arm module and a magnetic positioner. The module and the

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positioner move the head above the spinning disk so the head can write data onto or read data from

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the disk.

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The accuracy of the heads in accessing data on the disks is essential to the effectiveness of
the hard drive. Increases in the data capacity of the magnetic disks demand even greater precision.

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United States District Court
For the Northern District of California

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GTE purportedly addresses this need with its hard drive testers, which analyze the performance of

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the heads. GTE apparently sold its testers to Read-Rite Corp. (“Read-Rite”), a head manufacturer.

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After Western Digital acquired Read-Rite and its manufacturing facilities, Western Digital

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continued to use GTE’s testers and to purchase new generations of its testers.

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According to GTE, both Read-Rite and Western Digital were subject to agreements that

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prohibited reverse engineering, decompiling, disassembling, or deriving source code from GTE’s

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products. GTE alleges that at some point Western Digital violated the agreement and used GTE’s

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products and intellectual property to develop two testers of its own, the EH-300 and the DCT-400.

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GTE asserts that, like its testers and as protected by its patents, the two Western Digital testers use

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servo burst feedback and a thermal drift-compensated closed-loop positioning system to determine

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the accuracy of the heads.

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GTE proceeded to file this case in August 2011, in which it alleges Western Digital

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infringes claims from two of its patents, U.S. Patent No. 6,023,145 (“’145 Patent”) and U.S. Patent

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No. 6,785,085 (“’085 Patent”). GTE specifically claims that Western Digital’s products infringe

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claims 20, 21, 24, 25, 29, 30, 33, 34, 36, and 39 of the ‘085 Patent and claims 1-19 of the ‘145

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Patent. Western Digital answered and filed a counterclaim alleging that the ‘145 Patent and the

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‘085 Patent are invalid and that GTE infringes U.S. Patent No. 5,640,089 (“’089 Patent”), U.S.

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The court derives these facts from GTE’s complaint. See Docket No. 1.
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Case No.: 11-3786
ORDER

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Patent No. 5,844,420 (“’420 Patent”), U.S. Patent No. 6,891,696 (“’696 Patent”), and U.S. Patent

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No. 7,480,116 (“’116 Patent”), all of which Western Digital owns. 2

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A.

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The Patents
The ‘145 Patent describes a “head/disk tester compris[ing] a thermal-drift compensated

closed-loop positioning system that uses two sources of positioning feedback.” 3 The first source,

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linear encoders, “reflects the position of a magnetic head with respect to the magnetic disk in the

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absence of thermal drift.” 4 The second source, servo burst signals on the disk, “reflects the

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position of the magnetic head with respect to the magnetic disk in any temperature condition.” 5

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The purpose of the invention is “to provide a head/disk tester that effects accurate positioning of a

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United States District Court
For the Northern District of California

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magnetic head with respect to [a] magnetic disk in a tester, even in the case of unstable temperature

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conditions.” 6

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The method at the heart of the ‘085 Patent “provides a reduction in the percentage of the

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area dedicated to read/write head positioning information on a magnetic recording medium by

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employing servo bursts of different frequencies.” 7 Unlike prior art, which “[i]n general . . .

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separate servo bursts in space on the disc media,” the ‘085 Patent describes a method of separating

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the servo bursts by frequency “so that spatial separation is unnecessary.” 8

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The invention in the ‘420 Patent consists of a “novel test fixture and a method for testing a

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[head gimbal assembly] employing a flex interconnect circuit.” 9 The head gimbal assembly

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(“HGA”) is a type of hard drive head, and the ‘420 Patent describes a fixture and a method of

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testing HGAs with flex interconnect circuits, which are more difficult to test than HGAs with the

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See Docket No. 79.

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Docket No. 1 Ex. A at 2:54-56.

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Id. at 2:56-58.

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Id. at 2:62-64.

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Id. at 2:41-44.

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Docket No. 1 Ex. B at 3:19-22.

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Id. at 3:37-39, 3:42-43.

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Docket No. 79 Ex. A at 1:39-41.
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Case No.: 11-3786
ORDER

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more conventional wire leads with attached paddle boards. 10 The test fixture “clamps” the HGA in

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such a way that the flex interconnect circuit “is maintained in its most natural position so as to

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avoid damaging the flex interconnect circuit.” 11

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The ‘089 Patent describes a method of employing a “magnetoresistive element . . . to detect
a surface roughness of an object, such as a magnetic recording medium, a photomask blank, [or] a

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semiconductor wafer.” 12 By moving a unit with the magnetoresistive element over the object, an

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electric signal emerges, and through detection of differences in the signal, the surface roughness of

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the object can be determined. 13 The invention in the ‘696 Patent targets disk flutter in hard drives

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through a structure that reduces the airflow surrounding the disk as it rotates in the hard drive. 14

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United States District Court
For the Northern District of California

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The structure has an “arcuate raised portion” that creates two distances between the disk and the

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base on which it spins, which reduces the airflow. 15 The ‘116 Patent describes a disk drive that

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allows for the creation of a “servo track address” through the combination of a coarse position

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identifier and a read signal from the head. 16

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B.

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The Constructions
On September 25, 2012, the parties appeared for a claim construction hearing, at the end of

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which the court provided its constructions. The court construed five terms from the ‘145 Patent,

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one term from the ‘116 Patent, and two terms each from the ‘696 Patent and the ‘089 Patent,

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although it did not offer the reasoning behind these constructions at that time:

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See id.

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Id. at 2:67 – 3:1.

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Docket No. 79 Ex. B.

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See id. at 9:33-44.

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See Docket No. 79 Ex. C at 1:39-46.

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See id. at 1:59-65.

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See Docket No. 79 Ex. D at 9:39 – 10:17.
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Case No.: 11-3786
ORDER

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Disputed Term 17

Court’s Construction
‘145 Patent
“second feedback means for determining the
Section 112(f) means-plus-function term
position of said magnetic head with respect to
said data track of said magnetic disk in varying
Function: “providing feedback for determining
temperature conditions” (claim 1)
the position of said magnetic head, with respect
to said data track of said magnetic disk in
varying temperature conditions, using servo
burst signals on said magnetic disk at
predetermined positions radially offset from
said track center line.”

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United States District Court
For the Northern District of California

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“means for reading said servo burst at each of
said offsets in generating and storing signals
representative of each read burst associated with
each said offset” (claim 17)

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Function: “reading said servo burst at each of
said offsets and generating and storing signals
representative of each read burst associated with
each of said offsets”
Structure: “servo analyzer, including read
element, read amplifier, detector, analog to
digital converter, average, and the memory of
the position controller”
Plain and ordinary meaning – Section 112(f)
does not apply

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Structure: “servo analyzer, including read
element, read amplifier, detector, analog to
digital converter and averager” 18
Section 112(f) means-plus-function term

“closed loop positioner, responsive to said first
feedback means and said second feedback
means to control said positioning means,
whereby said magnetic head is substantially at
said desired offset from said track center line”
(claim 1)
“means for pre-writing said servo burst signal at Section 112(f) means-plus-function term
a plurality of positions along a track of said
magnetic disk, and for detecting the amplitudes Function: “prewriting said servo burst signals at
of said prewritten burst signals” (claims 6 and 7) a plurality of positions along a track of said
magnetic disks and detecting the amplitudes of
said prewritten burst signals”

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Structure: “gate sequencer, write amplifier,
detector and ADC, write element of the head,
read element of the head, and encoder of
spindle”

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See Docket No. 123 at 128:17 – 131:14 (providing the constructions).

In the transcript, the term “averager” appears as “aperture.” See id. The proper term is
“averager.”
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Case No.: 11-3786
ORDER

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United States District Court
For the Northern District of California

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“means for writing in a time succession as said
Declined to construe on grounds that “relatively
disk rotates two or more servo bursts over a
short time” language may be indefinite.
relatively short time, wherein each of said bursts
is laterally offset from said track center line by a
determined distance” (claim 17)
“writing in a time succession as said disk rotates
two or more servo bursts over a relatively short
time, wherein each of said bursts is laterally
offset from said track center line by a
determined distance” (claim 19)
‘116 Patent
“the coarse position of the actuator arm”
Plain and ordinary meaning of the term
‘089 Patent
“surface roughness”
“one or more protrusions or irregularities on the
surface of the object”
“preparing a magnetic recording medium as said Plain and ordinary meaning
object”
‘696 Patent
“enclosure”
“housing that fully or partially encases”
“arcuate raised portion on the base”
“a curved elevated section that is part of the
base”
Western Digital now moves for partial summary judgment on the grounds of

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noninfringement for all of the claims of the ‘085 Patent that GTE asserted against it and for claims

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1-9, 11-16, and 17-18 of the ‘145 Patent. Western Digital also moves for summary judgment

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regarding three claims of the ‘145 Patent on the grounds of invalidity. GTE opposes both motions

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and further responds with a Rule 56(d) summary judgment request.

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In addition to addressing the summary judgment motions, the court also provides its

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reasoning for the constructions. Because the outcome of the summary judgment motions turns on

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the constructions, the court begins with an explanation of its reasoning.
II.

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A.

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CLAIM CONSTRUCTION

Legal Standard
“To construe a claim term, the trial court must determine the meaning of any disputed

words from the perspective of one of ordinary skill in the pertinent art at the time of filing.” 19 This

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Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008).
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Case No.: 11-3786
ORDER

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requires a careful review of the intrinsic record, comprised of the claim terms, written description,

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and prosecution history of the patent. 20 While claim terms “are generally given their ordinary and

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customary meaning,” the claims themselves and the context in which the terms appear “provide

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substantial guidance as to the meaning of particular claim terms.” Indeed, a patent’s specification

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“is always highly relevant to the claim construction analysis.” 21 Claims “must be read in view of

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the specification, of which they are part.” 22

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Although the patent’s prosecution history “lacks the clarity of the specification and thus is

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less useful for claim construction purposes,” it “can often inform the meaning of the claim

United States District Court
For the Northern District of California

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language by demonstrating how the inventor understood the invention and whether the inventor

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limited the invention in the course of prosecution, making the claim scope narrower than it would

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otherwise be.” 23 The court also has the discretion to consider extrinsic evidence, including

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dictionaries, scientific treatises, and testimony from experts and inventors. Such evidence,
however, is “less significant than the intrinsic record in determining the legally operative meaning

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of claim language.” 24

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Id.; Phillips v. AWH Corp, 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal citations omitted).

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Phillips, 415 F.3d at 1312-15.

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Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517
U.S. 370 (1996). See also Ultimax Cement Mfg. Corp v. CTS Cement Mfg. Corp., 587 F. 3d 1339,
1347 (Fed. Cir. 2009).
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Phillips, 415 F.3d at 1317 (internal quotations omitted).

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Id. (internal quotations omitted).

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Case No.: 11-3786
ORDER

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B.

‘145 Patent
1.

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“second feedback means for determining the position of said magnetic head
with respect to said data track of said magnetic disk in varying temperature
conditions, said second feedback means being responsive to servo burst signals
on said magnetic disk at predetermined positions radially offset from said
track center line” (claim 1(f))

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Western Digital’s Construction
Governed by 35 U.S.C. §112(6). 25

GTE’s Construction
Governed by 35 U.S.C. §112(6).

Function:
Determining the position of said magnetic head
with respect to said data track of said magnetic
disk in varying temperature conditions using
feedback responsive to servo burst signals on
said magnetic disk at predetermined positions
radially offset from said track center line 26
Structure:
servo analyzer including: read element, read
amplifier, detector, analog-to-digital converter,
averager, position controller, and spindle
encoder.

Function:
Providing feedback for determining the position
of said magnetic head with respect to said data
track of said magnetic disk in varying
temperature conditions

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United States District Court
For the Northern District of California

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Structure(s):
Servo analyzer, read element of magnetic
head and encoder of spindle in Figure 2.

Both parties agreed that this term falls under the rubric of 35 U.S.C. § 112(f). For such

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means-plus-function terms, the court engages in a two-step process, first to determine the proper

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function and then to ascertain the structure identified to perform that function. 27 Section 112(f)

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“does not permit limitation of a means-plus-function claim by adopting a function different from
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that explicitly recited in the claim.” 28 “Correctly identifying the claimed function is critical,

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The parties refer to 35 U.S.C. § 112(6) or § 112 & 6. In a prior version of Section 112, the
subsections were not labeled and so the means-plus-function paragraph was commonly referred to
as & 6. As part of the America Invents Act, Pub. L. 112-29, the statute was amended to enumerate
the subsections. The means-plus-function subsection, formerly & 6, is now subsection (f).
Consistent with that change, the court uses “Section 112(f)” in its discussion but where it quotes
from the parties, it will use their label for the means-plus-function section.

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Western Digital offered a different function to GTE in the exchange of their proposed
constructions. See Docket No. 98 at 4 n.2. After reviewing GTE’s brief, it amended its position
regarding the structure and the function to “more closely track the language of the claim.” Id.

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See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1087 (Fed. Cir. 2003).

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Id.
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Case No.: 11-3786
ORDER

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because an error in identification of the function can improperly alter the identification of the
structure . . . corresponding to that function.” 29
a.

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Function

GTE asserts that its proposed construction encapsulates the claimed function because at
issue is only a “feedback means.” According to GTE, construing the function to include only
“providing feedback for determining the position” of the magnetic head aligns with the claim

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language. Western Digital argues that GTE’s proffered construction ignores the limitation in the
claim language, namely that the “feedback means” must be “responsive to servo burst signals.”

United States District Court
For the Northern District of California

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According to Western Digital, GTE’s proposal impermissibly widens the claimed function to

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include any feedback mechanism.

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Western Digital asserts that its construction aligns with the function and the limitations
claimed in the ‘145 Patent. Unlike GTE, which considers the function as a “feedback means,”

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Western Digital frames the function as “means for determining” and thereby argues the function is
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“determining.” GTE objects to Western Digital’s construction on two grounds. GTE first opines

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that Western Digital’s proposal, “determining the position,” fundamentally changes the claimed

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function because the claim language states a “feedback means,” not “means for determining.”

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GTE also asserts that the addition of the “using feedback responsive to servo burst signals”

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language is unnecessary because it is not the claimed function. GTE argues that the function is

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“providing feedback” and that the additional element of the “responsive to servo burst signals” may

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be necessary to establish infringement but is unnecessary to aid the jury in understanding the term.
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The court agrees that the claimed function is a “feedback means,” not a “means for

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determining” as Western Digital argues. The written description provides that the invention uses

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Id.
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Case No.: 11-3786
ORDER

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“two sources of feedback for head positioning operations,” 30 and that language appears at several

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other points in the description. 31 Western Digital’s construction ignores the “feedback” language

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in the term and contradicts the description. To that end, the court construes the term as “providing

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feedback” and not “determining.”

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But GTE’s proposed function is incomplete. As Western Digital highlights, the claimed
function is not just “a feedback means for determining the position” of the magnetic head; the

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claimed function includes a limitation that the “second feedback means” be “responsive to servo
burst signals on said magnetic disk at predetermined positions radially offset from said track center

United States District Court
For the Northern District of California

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line.” 32 GTE ignores this second part of the claimed function with its construction. The court,

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however, must maintain its analytical focus “on the language of the claims themselves.” 33 The

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language provides that the feedback means is “responsive to servo burst signals,” not just that it

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provides feedback generally.

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The court thus construes the function as “providing feedback for determining the position of
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said magnetic head, with respect to said data track of said magnetic disk in varying temperature

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conditions, using servo burst signals on said magnetic disk at predetermined positions radially

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offset from said track center line.”

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b.

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Structure

Having determined the proper function, the court turns to construing the appropriate
structure. The parties agree that a servo analyzer at least in part performs the function of providing

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the feedback. They dispute whether the disclosed structure is a generic servo analyzer or whether
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Docket No. 1 Ex. A at 5:3-4.

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See, e.g., id. at 5:44-45, 6:29-30, 6:48-50, 7:7-12, 7:22-23.

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Id. at 8:54-56.

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ACTV, Inc., 346 F.3d at 1088.
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Case No.: 11-3786
ORDER

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the elements of the servo analyzer identified in the patent are also required. At issue is the block

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diagram of Figure 4, which the ‘145 Patent describes alternatively as “a functional block diagram

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of the servo analyzer” 34 and then as showing “a servo analyzer in block diagram form which

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processes the information from the two feedback sources.” 35

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United States District Court
For the Northern District of California

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GTE, which argues that a generic servo analyzer is all that is necessary, points to the

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language stating “a servo analyzer in block diagram form” with certain components 36 and asserts

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that the indefinite article reveals that the servo analyzer described is a preferred embodiment. GTE

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maintains that importing the description of the preferred embodiment into the required structure

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would be improper. GTE also provides declarations from an expert who states that there are

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various forms of servo analyzers depending in part on the number of servo bursts to be analyzed
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but that regardless a person of ordinary skill in the art would understand a servo analyzer to

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34

Docket No. 1 Ex. 1 at 3:15.

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Id. at 5:43-45.

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Docket No. 1 Ex. 1 at 5:43.
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Case No.: 11-3786
ORDER

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perform the “providing feedback” function. 37 The internal structures may enable the servo

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analyzer to perform the function but, relying on Asyst Technologies, Inc. v. Empak, Inc., 38 GTE

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argues that enabling features should not be included in the structure. GTE argues that because a

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patentee need only disclose a “class of structures . . . identifiable by a person of ordinary skill in the

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art,” the court should construe the required structure as only a servo analyzer rather than the

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internal components identified in Figure 4 and in the patent language itself.

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GTE further asserts that the structure of the ‘145 Patent supports its proposed construction

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because dependent claims 4 and 5 prescribes functions that the preferred embodiment performs.

United States District Court
For the Northern District of California

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Claim 4 describes the “head/disk tester of claim 1, wherein said second feedback means includes a

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detector that detects the amplitudes of said servo burst signals prewritten on said magnetic disk.” 39

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Claim 5 in turn teaches the “head/disk tester of claim 4, wherein said second feedback means

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further includes an averager that samples the amplitudes of said detected servo burst signals and
determines an average of said prewritten burst signals.” 40 Relying on the doctrine of claim

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differentiation, 41 GTE argues that because claims 4 and 5 disclose feedback means employing a
detector and an average respectively independent claim 1 requires only a generic servo analyzer.

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Western Digital argues that the ‘145 Patent does not describe a generic servo analyzer but

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rather a servo analyzer with specific structures that permit it to not only read servo bursts but also

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output the analysis to a position controller. It asserts that the identified structures do not merely

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enable the servo analyzer but in fact are part of the analyzer and are necessary to allow it to

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perform the claimed function. Western Digital’s expert opines that absent the read amplifier 61,
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See Docket No. 94 Ex. 8 at && 38-39.

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See 268 F.3d 1364, 1370 (Fed. Cir. 2001).

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Docket No. 1 Ex. 1 at 9:5-8.

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Id. at 9:9-12.

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See Versa Corp. v. Ag-Bag Intern. Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004).
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Case No.: 11-3786
ORDER

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detector 62, analog-to-digital converter (“ADC”) 63, and averager 64 the servo analyzer could not

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supply the necessary signal from the read element of the head to the position controller to allow for

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the invention to work.

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Western Digital maintains that the ‘145 Patent does not in fact disclose a generic servo
analyzer, the indefinite article notwithstanding. It further objects to GTE’s reliance on claim
differentiation given that the ‘145 Patent discloses only Figure 4 as the embodiment of the servo

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United States District Court
For the Northern District of California

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analyzer to be used in the invention. According to Western Digital, claim differentiation does not
unseat the requirements of Section 112(f) that a means-plus-function claim must include a structure
identified in the specification.

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Because the court identified the function of claim 1 to be “providing feedback . . . using
servo burst signals,” the court finds that the structure for performing this function requires a servo
analyzer with the components identified in Figure 4 and further described in the written

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description. As shown above, Figure 4 classifies several components within the servo analyzer 45:
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the read amplifier 61, the detector 62, the ADC 63, the averager 64, the sequencer 65, and the write

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amplifier 66. The text describes how the servo analyzer provides the feedback to the position

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controller: “[t]he read element of head 34 generates a read signal which is amplified by read

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amplifier 61 of the servo analyzer 45”; the signal then gets filtered by the detector 62, which

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“produces a signal representative of the envelope of the read signal”; the signal gets “sampled and

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digitized” by the ADC 63; and the averager 64 averages the ADC’s digital output, once

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synchronized with the read servo gate, to “provide[] statistical estimates of the servo burst
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amplitudes of servo bursts . . . at the outputs of servo analyzer 45.” 42
GTE’s argument that this description is only a preferred embodiment and a generic servo

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analyzer is the only required structure lacks merit. As GTE points out, a patentee need not disclose

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Docket No. 1 Ex. 1 5:49 – 6:14.
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Case No.: 11-3786
ORDER

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a specific structure if a generic structure suffices, 43 and if the specification identifies more than one

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possible structure, the construction should not be limited to a preferred embodiment. 44 GTE points

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to the generalized “servo analyzer” in Figure 2 and the use of the indefinite article in “a servo

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analyzer” in describing Figure 4 to support that the specification identifies more than one structure

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of the servo analyzer, namely a generic servo analyzer and the specific preferred embodiment.

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United States District Court
For the Northern District of California

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43

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28

See Telcordia Tech., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir. 2010).

See Micro Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258-59 (Fed. Cir. 1999)
(“When multiple embodiments in the specification correspond to the claimed function, proper
application of § 112 & 6 generally reads the claim element to embrace each of those
embodiments.”).
14
Case No.: 11-3786
ORDER

GTE, however, conflates the two rules. It is true that where a patentee identifies only a

1
2

generic structure that an ordinary person skilled in the arts nevertheless would understand to

3

perform the function, the generic structure is sufficient. 45 But GTE provides no case law to support

4

that where a patentee specifically describes the components of an otherwise generically-labeled

5

structure identified earlier in the patent the court is obligated to interpret the two drawings as two

6

different structures.

7
At least one court in fact held the opposite. The patent at issue in Faroudja Laboratories,

8
9

Inc. v. Dwin Electronics, Inc. included a figure identifying the specific components of a “field

United States District Court
For the Northern District of California

10

comparator” that was referenced generally in the specification and in an earlier figure. 46 The

11

patentee argued that the proper structure should be just a generic “field comparator” rather than the

12

field comparator composed of the internal components identified. 47 The court disagreed, noting

13
14

that the generic identification of a “field comparator” was insufficient to disclose alternative
embodiments of the structure. 48 Noting that “interpretation of a means-plus-function element

15
16

requires [the] court to consult the structure disclosed in the specification, which often, . . . describes

17

little more than the preferred embodiment,” 49 the court found that the single disclosed embodiment

18

– the field comparator with specific internal components – was the proper structure for the Section

19

112(f) claim. 50 This court sees no reason to depart from that logic.

20
21

GTE’s reliance on Asyst likewise is misguided. In Asyst, the Federal Circuit opined that
devices that enable a structure to perform the claimed function should not be included in construing

22
23

45

See Telcordia, 612 F.3d at 1377.

24

46

See 76 F. Supp. 2d 999, 1012-13 (N.D. Cal. 1999).

25

47

See id.

26

48

Id. at 1013.

27

49

Id. (quoting Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999)).

28

50

See id.
15

Case No.: 11-3786
ORDER

1

the required structure; only devices that “actually perform” the function constitute the structure. 51

2

GTE argues that the internal components identified in Figure 4 only enable the servo analyzer to

3

perform the “second feedback means” function, but that logic is imprecise. To use Asyst’s

4

example, an electrical outlet may not be part of a toaster because it only enables the toaster to

5

work, but the heat coils inside of the toaster that also “enable” the toaster to work do not become

6

separate from the structure because they perform that duty. In other words, the relevant inquiry is

7
8
9

whether a component is part of the structure performing the function, and all that Asyst provided
was that “enabling” did not make a component part of the structure – the component must in some

United States District Court
For the Northern District of California

10

way perform the function. Here, the fact that the various components also perform derivative

11

functions as part of their overall role in allowing the servo analyzer to “provide feedback . . . using

12

servo burst signals” does not mean they are separate devices. As identified in the patent text and in

13

Figure 4, the components are part of the servo analyzer performing the function that is claimed.

14
The claim differentiation argument likewise is unavailing. Section 112(f) requires
15
16

identification of a structure to perform the function. Here, the structure identified is the servo

17

analyzer, accompanied by the description of the internal components that allow the servo analyzer

18

to provide feedback through the use of servo burst signals. Claims 4 and 5 may specifically

19

identify the components necessary to perform the function of claim 1, but a “means-plus-function

20

limitation is not made open-ended by the presence of another claim specifically claiming the

21

disclosed structure which underlies the means clause or an equivalent of that structure.” 52

22
Although “an interpretation of a claim should be avoided if it would make the claim read like
23
24

another one,” 53 the specification identifies only one structure to perform the function of claim 1: a

25
26

51

See 268 F.3d at 1371.

27

52

Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991).

28

53

Id. (internal citations and quotations omitted).
16

Case No.: 11-3786
ORDER

1
2

servo analyzer with particular components. And claims 4 and 5 can be reconciled with claim 1
because they exclude any equivalents to the structure identified in claim 1. 54

3

The servo analyzer and its identified internal components are necessary but not sufficient

4

structures. The read element of the head also must be included in the structure that performs the

5

“second feedback means” function. The read element is the component that provides the servo

6
7
8
9

burst signal to the servo analyzer, where the signal is then processed through the various internal
components and then sent to the position controller. 55 In its announced construction, the court
included the read element as part of the servo analyzer. Having reviewed the patent further, the

United States District Court
For the Northern District of California

10

court clarifies that the read element is properly part of the head but is also essential to the structure

11

that performs the function.

12
13

As to Western Digital’s argument that the position controller should be included in the
structure, the court notes that Western Digital’s premise relies on the function being defined as

14
“determining” rather than “providing feedback.” Western Digital admitted at the hearing that the
15
16

position controller is properly understood to be an instrument that determines the position of the

17

head. Because the function of “second feedback means” is “providing feedback” and not

18

“determining,” including the position controller would add a device to the structure that does not

19

perform the function.

20
21

The court also notes that the parties agreed that the spindle encoder 44 was a necessary
component to the structure. In its construction, the court did not include the spindle encoder 44

22
because, unlike the servo analyzer’s internal components which perform the function, the spindle
23
24
25

encoder in fact only enables the servo analyzer and the read element to “provide feedback . . . using
servo bursts.” The spindle encoder 44 “generates a sequence of sector pulses at uniform time

26
54

27

See id. (explaining that Section 112(f) claims literally allow for the identified structure and
equivalents but dependent claims that identify the specific structure are limited to that structure).

28

55

See Docket No. 1 Ex. 1 5:35-40.
17

Case No.: 11-3786
ORDER

1

intervals,” which are then applied to the sequencer 65. The sequencer 65 “generates two control

2

signals, ‘write servo gate’ and ‘read servo gate,’” and the “read servo gate” in turn synchronizes the

3

averager 64 with the servo bursts. Unlike the other internal components identified in Figure 4 of

4

the servo analyzer that collectively perform the function of “providing feedback” from the servo

5

bursts, the read servo gate instead “enables” those components to perform the function by acting as

6

a control feature to ensure the averager 64 is synchronized. Even if the read servo gate were

7
8
9

essential to performing the function, the spindle encoder 44 is further removed because it does not
generate the read servo gate – it only enables that signal by providing pulses to the sequencer 65.

United States District Court
For the Northern District of California

10

Like the electrical outlet in Asyst, the spindle encoder may allow the servo analyzer to perform the

11

function, but it is not performing the function itself – providing feedback using servo bursts.

12
13

The court thus finds that the structure identified to perform the function claimed in claim 1
is “the read element of magnetic head and servo analyzer, including read amplifier, detector, analog

14
to digital converter and averager.”
15
16
17
18

2.

“means for reading said servo bursts at each of said offsets, and generating and
storing signals representative of each read burst associated with each of said
offsets” (claim 17)

Western Digital’s Construction
Governed by 35 U.S.C. §112(6).

GTE’s Construction
Governed by 35 U.S.C. §112(6).

Function:
Reading said servo bursts at each of said offsets,
and generating and storing signals
representative of each read burst associated with
each of said offsets
Structures:
Servo analyzer including: read element 34, read
amplifier 61, detector 62, analog-to-digital
converter 63, averager 64, position controller
49 and spindle encoder 44.

Function:
for reading said servo bursts at each of said
offsets, and generating and storing signals
representative of each read burst associated with
each of said offsets
Structures:
servo analyzer 45, the read element of the
magnetic head 34, and the position controller 49
in Figure 2

19
20
21
22
23
24
25
26
27

The parties agree that this term is governed by Section 112(f), and they also agree about the
function of the claim. The court concurs that the proper function is “reading said servo bursts at

28
18
Case No.: 11-3786
ORDER

1
2

each of said offsets, and generating and storing signals representative of each read burst associated
with each of said offsets.”
In arguments that mirror their dispute about claim 1, the parties disagree about the proper

3
4

structure for the function. GTE once again argues that only a generic servo analyzer, the read

5

element of the magnetic head 34, and the position controller 49 are necessary. Western Digital

6

continues to assert that the internal components of the servo analyzer 45, specifically the read

7
8
9

amplifier 61, detector 62, analog-to-digital converter 63, and averager 64, as well as the position
controller 49 and spindle encoder 44 are necessary.
Claim 17 describes a “[s]ystem for generating and storing signals for positioning a

United States District Court
For the Northern District of California

10
11

magnetic read/write head with respect to a data track on a magnetic disk, said data track having

12

width T and extending along a circular track center line disposed about a disk axis, comprising:

13

A.

a base,

B.

a disk support assembly affixed to said base for rotatably supporting said magnetic
disk about said disk axis,

C.

a head support assembly affixed to said base, including a magnetic read/write head,
said read/write head having a write width T, and including an associated positioning
assembly for selectively positioning said head to a nominal locations with respect to
said track center line,

D.

a controller for successively positioning said read/write head to one or more
positions characterized by an associated desired offset with respect to said track
center line, including:

14
15
16
17
18
19
20
21

i.

means for writing in a time succession as said disk rotates two or more servo
bursts over a relatively short time, wherein each of said bursts is laterally
offset from said track center line by a predetermined distance, and

ii.

means for reading said servo bursts at each of said offsets, and generating
and storing signals representative of each read burst associated with each of
said offsets.” 56

22
23
24
25
26
27
28

56

See Docket No. 1 Ex. A at
19

Case No.: 11-3786
ORDER

The patent discloses only one structure for reading and generating “signals representative of

1
2

each read burst,” namely the servo analyzer 45 coupled with the read element of magnetic head 34.

3

As the court explained at length above, the disclosed servo analyzer includes the internal

4

components provided in Figure 4 and described in the text. The court adopts the same reasoning

5

here and likewise includes the read amplifier, detector, ADC, and the averager in its construction of

6

the structure for the “means for reading” function.

7
The parties both included the position controller 49 as part of the necessary structure. The

8
9

court disagrees. The identified functions indicate that the position controller is not the correct

United States District Court
For the Northern District of California

10

structure. At issue are “reading” the bursts, “generating” signals representative of the bursts, and

11

“storing” those signals. The combination of the servo analyzer 49 and the read element of the

12

magnetic head 34 perform the first two functions of “reading” the bursts and then “generating” the

13
14

signals. The memory 82 within the position controller 49 actually stores the signals representing
the servo bursts: “[w]hen the positioning error goes to zero, the controller 71 57 saves the ratios of

15
16

the amplitudes for the servo bursts A and B . . . into an array of the memory 82 for all sectors.”

17

The proper structure, therefore, is not the position controller generally but the memory 82 of the

18

position controller.
The structure for the “means for reading” function is “read element of magnetic head 34, 58

19
20
21

servo analyzer, including read amplifier 61, detector 62, analog-to-digital converter 63, averager
64, and the memory of the position controller 82.”

22
23
24

57

26

The ‘145 Patent describes two controllers: (1) the position controller 49 that “is used to perform .
. . positioning operations” of moving the head 34 to “different (radial) offsets with respect to a
track center line”; and (2) a controller 71 within the position controller 49 that “moves switches 76
and 81” and “saves the ratios of the amplitudes for the servo bursts . . . into an array of the memory
82 for all sectors.”

27

58

25

28

As with claim 1, the court initially construed the servo analyzer to include the read element of
the magnetic head, and as it did with claim 1, the court clarifies here that the read element appears
on the head not in the servo analyzer.
20
Case No.: 11-3786
ORDER

3.

1
2
3
4
5
6
7
8
9

“closed-loop positioner responsive to said first feedback means and said second
feedback means to control said positioning means” (claim 1)

Western Digital’s Construction
Governed by 35 U.S.C. §112(6).
Function:
Using both first and second feedback means to
provide feedback in the same closed loop
Structure:
Controller 71, three adders 72, 73, and 80,
proportional integral derivative (PID) closed
loop control unit 74, amplifier 75, position
averager 78, divider 79, memory 82, scaler 77,
and two switches 76 and 81.

GTE’s Construction
This phrase should be construed to have its plain
and ordinary meaning, which is facially
apparent from the text of the phrase as drafted.
No construction is necessary or required.

United States District Court
For the Northern District of California

10

Western Digital asserts that “closed-loop positioner” is a means-plus-function term that

11

requires construction of both the function and the structure. GTE disagrees that Section 112(f)

12

applies and further argues that the term requires no construction because its plain and ordinary

13
meaning is sufficient.
14
“[A] claim term that does not use ‘means’ will trigger the rebuttable presumption that § 112

15
16

& 6 does not apply.” 59 That presumption “can be overcome if it is demonstrated that the claim

17

term fails to recite sufficiently definite structure or else recites function without reciting sufficient

18

structure for performing that function.” 60 But the presumption against applying means-plus-

19

function requirements on terms that do not employ the “means” language is “a strong one that is

20

not readily overcome.” 61

21
The determination of whether the claim has sufficient structure to avoid Section 112(f)

22
23

treatment is not the same as the inquiry about the specificity of the structure once Section 112(f)

24
25
59

26

Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (internal
citations and quotations omitted).

27

60

Id. (internal citations and quotations omitted).

28

61

Id.
21

Case No.: 11-3786
ORDER

1

attaches. 62 “[I]t is sufficient if the claim term is used in common parlance or by persons of skill in

2

the pertinent art to designate structure, even if the term covers a broad class of structures and even

3

if the term identifies the structures by their function.” 63 Certain “nonce” words, such as “device”

4

or “element,” may suggest that the claim term is really a substitute for “means” and should be

5

interpreted as a means-plus-function term. 64 But that guidance provides only an aid to the central

6
7
8

inquiry: “whether the claim as properly construed recites sufficiently definite structure to avoid the
ambit of § 112 & 6.” 65
Western Digital asserts that the term “positioner” insufficiently describes the structure of

9

United States District Court
For the Northern District of California

10

the claim such that Section 112(f) should apply. In support of its argument Western Digital points

11

to the description of the invention and the abstract, which lack the term “positioner” but use

12

“positioning means” to describe how the carriage and the head are moved across the magnetic disk

13

and “positioning system” to describe the nature of the invention. Western Digital also relies on its

14
expert William Messner (“Messner”) who submitted a declaration stating that “[w]ithout referring
15
16

to the structures appearing in the specification, it is unclear how to combine the signals from the

17

first feedback means and the second feedback to achieve the stated goal of keeping head

18

substantially at a desired offset form the data track center line under varying temperature

19

conditions.” 66 He further concludes that the determination by GTE’s expert Stanley Hendryx

20

(“Hendryx”) that “the plain meaning of a ‘positioner’ is a device that ‘positions’ an object . . . only

21
22
23
62

See id. at 1359.

63

Id. at 1359-60.

24
25
64

26

See id. at 1360; Personalized Media Comm., LLC v. Int’l Trade Comm’n, 161 F.3d 696, 704
(Fed. Cir. 1998).

27

65

Personalized Media, 161 F.3d at 704.

28

66

Docket No. 98 Ex. 2 at & 52.
22

Case No.: 11-3786
ORDER

1
2

describes the function of many potential such devices and does not connote any specific structure
to one of ordinary skill in the art.” 67
GTE responds with its expert Hendryx, who states that a person of ordinary skill in the art

3
4

would understand a “positioner” to be a “device for moving an object into position and

5

automatically keeping it there.” 68 GTE also asserts that Western Digital ignores the actual term,

6

which is “closed-loop positioner,” not just “positioner.” According to GTE, the combination of the

7
8
9

two terms provides sufficient information to a person of ordinary skill to determine what class of
structures satisfies the claim.
The court finds “closed-loop positioner” discloses sufficient structure to avoid Section

United States District Court
For the Northern District of California

10
11

112(f) treatment. As Hendryx notes and as defined by the Oxford English Dictionary, 69 the term

12

“positioner” describes a “device or machine for mechanically moving an object into position and

13

keeping it there.” 70 The addition of “closed-loop” to describe the positioner further refines the

14
class of structures necessary to meet the claim. As Hendryx describes, a “closed-loop system is so
15
16

called because the controlled parameter is sensed and fed back to the controller to be compared

17

with the desired value, [thereby] forming [a] loop.” 71 The combination of the two terms reveals

18

that a “closed-loop positioner” discloses a class of structures that position an object and that the

19

positioning is subject to the feedback of the closed loop. “Closed-loop positioner” therefore is

20
21
22

67

Id.

23

68

Docket No. 94 Ex. 8.

24

69

25

The Federal Circuit has endorsed looking to dictionaries to determine whether the term “has
achieved recognition as a noun denoting structure, even if the noun is derived from the function
performed.” Lighting World, 382 F.3d at 1360.

26

70

27

Oxford English Dictionary, available at
http://www.oed.com/view/Entry/148317?redirectedFrom=positioner#eid (last visited July 19,
2013).

28

71

See id. at & 36.
23

Case No.: 11-3786
ORDER

1
2

more akin to “connector assembly,” 72 “digital detector,” 73 and “reciprocating member,” 74 all of
which the Federal Circuit has held were sufficiently structural to avoid Section 112(f).

3

Messner’s opinion that “closed-loop positioner” does not denote a “specific structure” to a

4

person of ordinary skill does not require a different result. “The fact that more than one structure

5

may be described by” the term closed-loop positioner or that it “may encompass a multitude of

6

structures, does not make the term . . . any less a name for structure.” 75 Western Digital has not

7
8

overcome the presumption against applying Section 112(f) to this term.
The court further finds that the term does not require construction. Because the structure is

9

United States District Court
For the Northern District of California

10

defined at least in part by its function, “positioner” does not require further explanation. As for the

11

“closed-loop” modifier, the court finds that no construction is necessary because the parties do not

12

appear to dispute its meaning and because the court finds its meaning is readily available from the

13

term itself.

14
4.
15
16
17
18
19
20
21

“means for pre-writing said servo burst signal at a plurality of positions along
a track of said magnetic disk, and for detecting the amplitudes of said
prewritten burst signals” (claims 6 and 7)

Western Digital’s Construction
Claim 6
Governed by 35 U.S.C. §112(6).

GTE’s Construction
Claim 6
Governed by 35 U.S.C. §112(6).

Function:
Prewriting said servo burst signals at a plurality
of positions along a track of said magnetic disk,
and detecting the amplitudes of said prewritten
burst signals

Function:
Prewriting said servo burst signals at a plurality
of positions along a track of said magnetic disk
and detecting the amplitudes of said prewritten
burst signals

Structure(s):
Indefinite

Structure(s):
Gate sequencer 65, write amplifier 66, detector

22
23
24
25

72

See Lighting World, Inc., 382 F.3d at 1360.

26

73

See Personalized Media Comm. v. Int’l Trade Comm’n, 161 F.3d 696, 704 (Fed. Cir. 1998).

27

74

See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).

28

75

Lighting World, Inc., 382 F.3d at 1361.
24

Case No.: 11-3786
ORDER

Claim 7
Governed by 35 U.S.C. §112(6).

62 and ADC 63 in FIG. 4, write element of the
head 34, read element of the head 34, and
encoder of spindle 44 in FIG. 2.
Claim 7
Governed by 35 U.S.C. §112(6).

Function:
prewriting said servo burst signals at a plurality
of offsets from the center of a track of said
magnetic disk, and detecting the amplitudes of
said prewritten burst signals

Function:
pre-writing said servo burst signals at a plurality
of offsets from the center of a track of said
magnetic disk and detecting the amplitudes of
said prewritten burst signals

Structure(s):
Indefinite

Structure(s):
Gate sequencer 65, write amplifier
66, detector 62 and ADC 63 in FIG.
4, write element of the head 34, read
element of the head 34, and encoder
of spindle 44 in FIG. 2.

1
2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11

The parties do not dispute that the term “means for pre-writing” is a means-plus-function

12
13

limitation governed by Section 112(f), nor do they dispute the function of the term. Western

14

Digital asserts that the specification fails to provide a structure for the function because the

15

description of the invention disclaims that the disclosed structure for “writing” the servo bursts also

16

“pre-writes” them. GTE responds that Western Digital’s interpretation of the ‘145 Patent is

17

erroneous, and that because “writing” and “pre-writing” the servo bursts are essentially the same,

18
the same structure applies for both functions.
19
“[A] means-plus-function clause is indefinite if a person of ordinary skill in the art would

20
21

be unable to recognize the structure in the specification and associate it with the corresponding

22

function in the claim.” 76 “Whether the written description adequately sets forth the structure

23

corresponding to the claimed function must be considered from the perspective of a person skilled

24

in the art.” 77 “The question is not whether one of skill in the art would be capable of implementing

25
26
27

76

28

77

AllVoice Computing PLC v. Nuance Comms., Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007).

Telcordia Tech., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376 (Fed. Cir. 2010).
25
Case No.: 11-3786
ORDER

1
2

a structure to perform the function, but whether that person would understand the written
description itself to disclose such a structure.” 78
The parties’ dispute centers on the difference, if any, between “writing” the servo bursts

3
4

and “pre-writing” the servo bursts. GTE argues that the only difference between the two functions

5

is temporal – “writing” occurs during the test whereas “pre-writing” occurs before the test.

6

Because the ‘145 Patent describes that “[b]efore testing starts, those servo bursts are written in the

7
8
9

beginning of each sector,” the patent sufficiently links the “pre-writing” function to the structure
provided in Figure 4 for “writing” servo bursts.
Western Digital points to the ‘145 Patent’s statement that “the system may be adapted for

United States District Court
For the Northern District of California

10
11

disks with servo bursts pre-written thereon; in such forms of the invention, the servo burst write

12

operation is not needed.” According to Western Digital, this statement reflects a disclaimer that

13

the write operation disclosed in the patent does not perform pre-writing of servo bursts. Because

14
that structure is the only one disclosed in the patent that could possibly perform the function,
15
16

Western Digital concludes, the means-plus-function term is indefinite.
The statement on which it relies does not serve as the disclaimer Western Digital suggests.

17
18

The ‘145 Patent describes two operations of the invention: (1) the head writes the servo bursts

19

immediately before conducting the test during which it reads those bursts; and (2) the head reads

20

servo bursts “pre-written” on the disk. In this second mode, where the servo bursts have been pre-

21

written, the write operation is disabled during the test. But nothing in that statement or in the

22
patent suggests that write operation of the head cannot serve to pre-write the servo bursts when the
23
24

invention operates in the second mode.
As described in the patent, the functions “pre-writing” and “writing” are identical other than

25
26

their timing. The patent does not distinguish between the terms in any meaningful way other than

27
28

78

Id. (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008)).
26
Case No.: 11-3786
ORDER

1

to distinguish whether the servo bursts are written immediately before the test or at some other

2

earlier time. Because the only difference between the functions is their temporal separation, the

3

court finds that a person of ordinary skill in the art would understand that the write operation

4

structure disclosed in Figure 4 and including the components GTE identified is the structure

5

performing the “means for pre-writing” function. The court thus construes the structure for the

6

“means for pre-writing” function to be “gate sequencer, write amplifier, detector and ADC, write

7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

element of the head, read element of the head, and encoder of the spindle.”
5.

“means for writing in a time succession as said disk rotates two or more servo
bursts over a relatively short time, wherein each of said bursts is laterally offset
from said track center line by a determined distance” (claim 17) and “writing
in a time succession as said disk rotates two or more servo bursts over a
relatively short period of time, wherein each of said bursts is written at
locations laterally offset from said track center line by a predetermined
distance” (claim 19)

Western Digital’s Construction
Indefinite as to “relatively short time”
OR
Governed by 35 U.S.C. §112(6).

GTE’s Construction
Function:
writing in a time succession as said disk rotates
two or more servo bursts over a relatively short
time

Function:
writing servo bursts one immediately after
another at locations laterally offset from the
centerline where the beginning of the servo
burst is offset from the track centerline at a
predetermined distance

Structures:
Gate sequencer 65 and write amplifier 66, in
Figure 4, and the write element of magnetic
head 34 and encoder of spindle 44 in Fig. 2

Structures:
Structure: servo analyzer including: sequencer
65, write amplifier 66, write element 34,
position controller 49 and spindle encoder 44.
Western Digital asserts that the phrase “relatively short time” and “relatively short period of
time” renders the term “writing servo bursts” in claims 17 and 19 indefinite. GTE responds that a

25
26
27
28
27
Case No.: 11-3786
ORDER

1
2

person of ordinary skill in the art would understand that “relatively short time” refers to “the
reference period of a rotation of the disk.” 79
The court agrees with Western Digital that the term raises indefiniteness issues, and at the

3
4

hearing it declined to construe the term and invited Western Digital to move for summary

5

judgment on the issue. Because the court addresses that issue in detail below, it provides here only

6

the outcome of that particular construction dispute.

7
8

C.

1.

9

United States District Court
For the Northern District of California

10

‘116 Patent
“coarse position of the actuator arm”

Western Digital’s Construction
Plain and ordinary meaning

11
12

GTE’s Construction
Address information identifying a servo track
band

Alternatively, the position of the actuator arm
effected by a coarse positioner

13
14

The disputed term appears in claims 1 and 3 of the ‘116 Patent. Claim 1 states:

15

1.

16

A disk drive comprising:
(a)

17

a disk comprising a plurality of servo sectors having servo bursts for
defining a plurality of servo tracks, wherein:
the servo tracks are banded together to form a plurality of servo track bands;
and

18
19

each servo sector comprises a fine track address that identifies one of the
servo tracks;

20
21

(b)

an actuator arm;

(c)

a head attached to a distal end of the actuator arm operable to generate a read
signal by reading the disk;

(d)

a mechanical position sensor operable to detect a coarse position of the
actuator arm; and

(e)

control circuitry operable to:

22
23
24
25
26
27
28

79

Docket No. 94.
28

Case No.: 11-3786
ORDER

process the coarse position to identify one of the servo track bands;

1

process the read signal to detect one of the fine track addresses, wherein the
detected fine track address identifies a servo track within the identified servo
track band; and

2
3
4

combine the identified servo track band with the detected fine track address
to generate a servo track address. 80

5

GTE argues that the “coarse position of the actuator arm” should be construed to mean

6
7
8
9

“address information identifying a servo track band” because the coarse position of the arm must
be processed to identify the servo track band. GTE asserts that this construction will aid the jury in
understanding the term “coarse position” in light of the ‘116 Patent.
Western Digital responds that no construction is necessary because the meaning of the term

United States District Court
For the Northern District of California

10
11
12
13
14

“coarse position of the actuator arm” is apparent, namely that the term indicates an imprecise
measurement of the position of the arm. Western Digital further argues that GTE’s proposed
construction conflates two separate steps of the claims, “detect[ing]” the coarse position and
“process[ing]” the coarse position with the goal of identifying the servo track bands.
The court agrees that GTE’s proposed construction conflates two steps of the claim. The

15
16
17
18
19
20
21
22
23

claim language reflects that in step (d) the mechanical position sensor “detect[s] a coarse position
of the actuator arm” 81 and then in step (e) the control circuitry “process[es] the coarse position to
identify one of the servo track bands.” 82 From this language, it is clear that the coarse position is
the information inputted to the control circuitry to generate the servo track band. Nothing in that
language, or in the specification, suggests that the coarse position must be itself “address
information” as GTE suggests. Within the descriptions of the various embodiments, the patent
describes how the coarse position, as detected by the mechanical position sensor, provides the
feedback to the control circuitry, which then generates the address servo track address. 83 That the

24
25

80

Docket No. 79 Ex. D at 9:39 – 10:17.

26

81

Id. at 10:6-7.

27

82

Id. at 10:9-10.

28

83

See, e.g., id. at 2:25-31, 2:64-66, 4:29-34.
29

Case No.: 11-3786
ORDER

1

coarse position is used to aid in generating the address does not suffice to convert it into “address

2

information.”

3

The court further finds that the term does not need further construction. The claim language

4

differentiates between the “coarse position” of the actuator arm and the “fine track address” as

5

detected by the “read signal” generated by the head. 84 The two terms – “coarse position” and “fine

6

track address” – are paired throughout the patent to describe how the two data sources are

7

processed by the control circuitry to generate the servo track address. 85 The specification also

8

describes how the mechanical position sensor “may be more or less accurate.” 86 Given this

9

pairing, the court finds that a jury would understand from the term itself its meaning and so no

United States District Court
For the Northern District of California

10

construction is necessary.

11

D.

12
13
14

‘089 Patent
1.

“surface roughness”

Western Digital’s Construction
One or more protrusions or irregularities on the
surface of the object

15
16
17

The ‘089 Patent describes a method and an apparatus for detecting surface roughness

18
19

GTE’s Construction
Protrusions or irregularities extending a
sufficient distance from the surface of the object
such that physical contact between the
magnetoresistive element and the protrusions or
irregularities is made during movement of the
motion unit along the object

through the use of magnetoresistive element. Claim 1, the method claim, states:
A method of detecting a surface roughness on an object which is a selected one of a
nonmagnetic medium and a magnetic recording medium, the method comprising the steps
of:

20
21
22

placing a motion unit which has a magnetoresistive element with said element
adjacent said object;

23
24
25
26

84

See id. at 2:6-10.

27

85

See, e.g., id. at 2:6-10, 2:25-31, 2:64 – 3:1, 10:9-15, 10:33-38.

28

86

Id. at 5:18-19.
30

Case No.: 11-3786
ORDER

2

moving said motion unit along said object to derive an electric signal which is
varied due to a mechanical deformation of the magnetoresistive element caused
during moving the motion unit along the object; and

3

detecting said surface roughness from said electric signal. 87

1

4

Claim 7, the apparatus claim, states:

5

A surface roughness detecting device for use in detecting a surface roughness on an object
which is a selected one of a nonmagnetic medium and a magnetic recording medium, said
detecting device comprising:

6
7

a motion unit which is movable along said object and which includes a
magnetoresistive element which varies an electric signal due to a mechanical
deformation caused during moving the motion unit over the object, to produce said
electric signal; and

8
9

United States District Court
For the Northern District of California

10

an electric circuit electrically coupled to said magnetoresistive element for detecting
the surface roughness from said electric signal. 88

11
12

GTE asserts that because of Western Digital’s disclaimers during examination of the ‘089
13
Patent, the term “surface roughness” must be construed as including only protrusions or
14
irregularities “extending a sufficient distance from the surface of the object” that the
15
magnetoresistive element of the invention makes physical contact with the protrusion. To support
16
its position, GTE points to the prosecution history of the ‘089 Patent. In response to the
17
examiner’s concerns, Western Digital indicated that unlike prior art, the ‘089 Patent teaches that
18
the magnetoresistive element of the head can detect surface roughness through the “collision
19

between the magnetoresistive element and protrusions” that thereby vary the magnetic current. 89

20
According to GTE, because Western Digital indicated to the examiner that the invention depended
21
on “collisions,” the “surface roughness” identified in the claims must include only protrusions that
22
actually collide with the magnetoresistive element.
23
GTE’s proposed construction, however, imports the detection feature of the invention into
24
the definition of the object to be detected. As claim 1 describes, for example, the method of
25
26

87

Docket No. 79 Ex. B at 9:33-44.

27

88

Id. at 10:3-15.

28

89

Docket No. 93 Ex. 1 at 81-82.
31

Case No.: 11-3786
ORDER

1

“detecting a surface roughness” requires in part “moving said motion unit along said object to

2

derive an electric signal which is varied due to a mechanical deformation of the magnetoresistive

3

element caused during moving the motion unit along the object.” 90 The invention thus requires

4

that for the magnetoresistive element to detect surface roughness, the protrusion it encounters must

5

create a “mechanical deformation.” Surface roughness, however, is the object to be detected, and it

6

can exist whether the magnetoresistive element is sensitive enough to detect it. GTE’s additional

7

limitation is redundant of the inventive element of the patent.

8

The specification further supports that “surface roughness” should not be limited. The
background of the invention describes that “protrusions, recessions, and/or damages . . . determine

10
United States District Court
For the Northern District of California

9

a surface roughness on a surface.” 91 Western Digital’s proposed construction aligns more closely

11

with the patent’s specification. The court therefore construes “surface roughness” as “one or more

12

protrusions or irregularities on the surface of the object.”

13
14
15
16
17

2.

“preparing a magnetic recording medium as said object”

Western Digital’s Construction
Plain and ordinary meaning.

GTE’s Construction
Indefinite under 35 U.S.C. § 112(b).

Alternatively, if a specific construction is
necessary: “readying a magnetic recording
medium for use as said object.”

Manufacturing an object having surface
properties suitable for recording, such as a
magnetic tape or a magnetic disk

18

The disputed term appears in dependent claim 6, which states:

19

A surface roughness detecting method as claimed in claim 1, further comprising the steps
of:

20
21

preparing a magnetic recording medium as said object;

22

providing said motion unit which comprises a head unit operable as both a recording
head and a reproducing head including said magnetoresistive element;

23

putting said recording head into an active state to record a predetermined reference
signal on said magnetic recording medium; and

24
25
26
27

90

Docket No. 79 Ex. B at 9:39-42.

28

91

Id. 1:19-21.
32

Case No.: 11-3786
ORDER

reproducing said predetermined reference signal as a reproduced signal from said
magnetic recording medium by driving said reproducing head included in the
motion unit to produce said electric signal and to detect the surface roughness from
said electric signal. 92

1
2
3
4
5
6
7

GTE argues that the term “preparing a magnetic recording medium as said object” is
indefinite and should not be construed, and alternatively if it is not indefinite, it should be
construed as “manufacturing an object having surface properties suitable for recording, such as
magnetic tape or a magnetic disk.” For its indefiniteness argument, GTE points out that during the
prosecution of the patent, the term “preparing” was used in independent claim 1 in the same

8

manner as in dependent claim 6. 93 The examiner rejected claim 1 in part because “it is not clear in

9

what way the motion unit and object are prepared.” 94 Western Digital amended claim 1 to say

United States District Court
For the Northern District of California

10
11

“placing a motion unit” but did not change claim 6. 95 GTE asserts that, as with the original version
of claim 1, claim 6 is not sufficiently specific.

12
13
14
15
16
17

To support its alternative construction, GTE highlights a statement in the background of the
invention, which states that to ensure that the head slider and the magnetic recording medium are
not destroyed by protrusions on the surface, “the surface roughness of the magnetic recording
medium should be precisely tested or monitored after the magnetic recording is manufactured.” 96
This statement, GTE asserts, reveals that the ‘089 Patent in fact teaches a method that begins with
the manufacture of a magnetic recording medium.

18
19
20
21
22

Western Digital responds that “preparing a magnetic recording medium” does not require
construction because its meaning is obvious from the term itself. Western Digital also relies on the
prosecution history to argue that “preparing” in claim 6 means essentially the same thing as
“placing” in claim 1, given that the two claims used the same term before examination. It further
asserts that GTE’s alternative construction improperly adds a limitation into the claim.

23
24

92

Docket No. 79 Ex. B at 9:54-66.

25

93

Docket No. 93 Ex. 1 at 78.

26

94

Id. at 72.

27

95

See id. at 78.

28

96

Docket No. 79 Ex. B at 1:39-42.
33

Case No.: 11-3786
ORDER

1

The term is not so “insolubly ambiguous” or “not amenable to construction” as to be

2

indefinite. 97 The term “preparing” as used in claim 6 sufficiently notifies a person of ordinary skill

3

that the magnetic recording medium should be readied as the first step in the dependent claim.

4

Claim 6 describes a detection method on a magnetic recording medium using a “reference signal”

5

recorded on the magnetic recording medium. 98 Read in the context of independent claim 1, which

6

provides that “an object which is a selected one of a nonmagnetic medium and a magnetic

7

recording medium,” 99 the term “preparing a magnetic recording medium as said object” in claim 6

8

sufficiently discloses that the “object” to be used is a “magnetic recording medium” rather than a

9

“nonmagnetic medium” and is not so ambiguous as to be indefinite.

United States District Court
For the Northern District of California

10

The court rejects GTE’s alternative invitation to read into the term a limitation that the

11

magnetic recording medium is “manufactured” as the first step of the method, GTE’s site to the

12

background of the invention notwithstanding. In its proper context, that statement merely explains

13

that to prevent destruction of the head slider or the medium, the medium should be tested after it is

14

manufactured. Nothing in that statement suggests that only in the method in dependent claim 6

15

should a magnetic recording medium be manufactured first and then subjected to the detection

16

method described in the claim.

17

The court further finds that no construction in fact is needed for this term. As just

18

explained, claim 6 depends on claim 1 and read in that context, the term “preparing a magnetic

19

recording medium as said object” requires no further explanation. It discloses the first step in the

20

method: preparing the magnetic recording medium. Construction would serve only to muddy a

21

term that already makes the inventor’s intentions known.

22
23
24
25
26

97

Halliburton Energy Serv., Inc. v. M-I LLC, 514 F.3d 1244, 1249-59 (Fed. Cir. 2008).

27

98

See Docket No. 79 Ex. B at 9:54-66.

28

99

Id. at 9:33-35.
34

Case No.: 11-3786
ORDER

1

E.

2
3
4

‘696 Patent
1.

“enclosure”

Western Digital’s Construction
Housing that fully or partially encases

GTE’s Construction
A completely surrounding structure

5
The term “enclosure” appears in claim 1 of the ‘696 Patent. The relevant part of claim 1

6
7

states “a disk drive comprising: an enclosure having a cover and a base.” 100 GTE argues that

8

“enclosure” should be construed as a “completely surrounding structure” and points to Figure 1,

9

which shows “a perspective view of a disk drive . . . the cover partially broken away to illustrate

United States District Court
For the Northern District of California

10

internal components.” 101 GTE also asserts that for the ‘696 Patent to successfully perform the

11

invention it describes, the disk drive would necessarily need to be entirely enclosed to ensure the

12

disk drive’s proper operation. GTE further argues that because none of the embodiments in the

13

‘696 Patent shows a partially enclosed structure, Western Digital’s proposed construction is

14

inconsistent with the patent’s teaching.
Western Digital contends that the common meaning of the term “enclosure” does not

15
16

support GTE’s argument. Using an analogy to a fence, Western Digital asserts that an enclosure

17

can encase an object with fully and completely surrounding it. Western Digital points to a

18

statement in the background of the invention that provides that “[e]ach of the foregoing disk drive

19

components at least partially is housed within an enclosure that usually includes a base and a

20

cover.” 102 Western Digital further argues that GTE seeks to import limitations from the

21

embodiments in contradiction of claim construction principles.
Western Digital’s exclusive reliance on the statement in the background section of the

22
23

patent is misplaced. That statement describes related art, not necessarily the invention itself.

24

Having said that, GTE’s argument likewise is an improper interpretation of the patent. GTE relies

25
26

100

See Docket No. 79 Ex. C at 7:7-8.

27

101

Id. at 2:64-67.

28

102

Id. at 1:29-31.
35

Case No.: 11-3786
ORDER

1

on Figure 1, the only figure to display the cover at all, to suggest that the “enclosure” in claim 1

2

requires a “completely surrounding structure.” GTE notably points to no language in the claims or

3

in the rest of the patent that describes “enclosure” as “completely surrounding.”

4

The resolution of this issue depends then on the meaning of the term “enclosure.” The

5

court finds Western Digital’s proffer – that like a fence an enclosure can encase without entirely

6

sealing its contents – to be more persuasive and to avoid importing any limitations from the

7

embodiments. 103 The court therefore construes “enclosure” as “housing that fully or partially

8

encases.”

9

2.

United States District Court
For the Northern District of California

10
11
12

“arcuate raised portion on the base”

Western Digital’s Construction
A curved elevated structure that is part of or
connected to the base

GTE’s Construction
A curved elevated section that is part of the base

13
The term “arcuate raised portion on the base” also appears in claim 1 of the ‘696 Patent.
14
The relevant section states:
15
an arcuate raised portion on the base substantially parallel to the disk and spaced apart from
the disk by a second clearance distance that is less than the first clearance distance, at least a
portion of the disk superposed over at least a portion of the arcuate raised portion, wherein
the arcuate raised portion subtends a central angle of at least about 180 degrees. 104

16
17
18
19
20
21
22
23

The parties dispute whether the “arcuate raised portion” must be a part of the base or
whether it can be merely connected to the base. Western Digital, who proposes that connection to
the base is sufficient, argues that the embodiments and the specification make clear that the
inventive feature of the ‘696 Patent is the difference in the distances from the raised portion to the
disk and from the base to the disk. That difference aids in stabilizing the disk, thereby avoiding
disk flutter and track misregistration (“TMR”). 105 Because that is the inventive feature, Western

24
103

25
26
27

See Oxford English Dictionary, available at
http://www.oed.com/view/Entry/61738?redirectedFrom=enclosure#eid (last visited July 19, 2013)
(defining “enclosure” as “[t]he action of surrounding or marking off (land) with a fence or
boundary,” “[a]n encompassing fence or barrier,” “[a]n outer covering or case,” and “[a] space
included within or marked off by boundaries.”)
104

28

Id. at 7:20-26.
36

Case No.: 11-3786
ORDER

1

Digital asserts, the patent requires the raised portion only to be “on the base,” and an arcuate

2

portion “connected to” would also be “on the base.” GTE responds that Western Digital’s

3

construction ignores the embodiments, language in the description of the invention that indicate the

4

“arcuate portion” is part of the base, and the use of similar language in subsequent claims.

5

The claim language “arcuate portion on the base” does not offer a solid answer to this

6

dispute, because as the parties point out “portion” suggests “part of” but “on” suggests that

7

separation between the “arcuate portion” and the base may be permissible. The intrinsic evidence,

8

however, better supports GTE’s proposed construction. Figure 3 reflects that the arcuate portion

9

136 is part of the base 30 – the slanted lines continue through both parts of the structure.

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21

The description of the invention also supports that the arcuate portion 136 in fact is part of

22

the base, noting that “[i]n general, where the base 30 includes an arcuate raised portion 136, at least

23

a portion of the disk 45 is superposed over at least a portion of the arcuate raised portion.” 106 This

24

statement not only reveals that the inventor contemplated that the arcuate portion was part of the

25

base but also that the inventor used the term “portion” when referencing parts of a whole.

26
105

See id. at 1:38-49.

106

Id. at 5:66 – 6:1.

27
28

37
Case No.: 11-3786
ORDER

1

Considering that Western Digital has pointed to nothing in the specification, the embodiments, or

2

the claim language other than the preposition “on” in claim 1 suggesting that the arcuate portion

3

can be separate from the base, and that several statements within the patent support that the arcuate

4

portion in fact is part of the base, the court construes “arcuate raised portion on the base” as “a

5

curved elevated section that is part of the base.”

6

III.

7

SUMMARY JUDGMENT

Western Digital brings two motions for summary judgment: (1) for noninfringement of

8

several claims of the ‘085 Patent and the ‘145 Patent; and (2) for invalidity for indefiniteness of

9

claims 17 and 19 of the ‘145 Patent. GTE in turn moves under Fed. R. Civ. P. 56(d). The court

United States District Court
For the Northern District of California

10

considers the indefiniteness argument first and then addresses the noninfringement and Rule 56(d)

11

motions.

12

A.

13
14

Legal Standard
Summary judgment is appropriate only if there is “no genuine dispute as to any material

fact and the movant is entitled to judgment as a matter of law.” 107 The moving party bears the

15
initial burden of production by identifying those portions of the pleadings, discovery and affidavits
16
17

which demonstrate the absence of a triable issue of material fact. 108 If, as here, the moving party is

18

the defendant, he may do so in two ways: by proffering “affirmative evidence negating an element

19

of the non-moving party’s claim,” or by showing the non-moving party has insufficient evidence to

20

establish an “essential element of the non-moving party’s claim.” 109 If met by the moving party,

21

the burden of production then shifts to the non-moving party, who must then provide specific facts

22

showing a genuine issue of material fact for trial. 110 The ultimate burden of persuasion, however,

23
24

107

See Fed. R. Civ. P. 56(a).

25

108

See Fed. R. Civ. P. 56(c)(1); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).

26

109

Celotex Corp., 477 U.S. at 331.

27

110

28

See id. at 330; T.W. Elec. Service, Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 630, 630 (9th
Cir. 1987).
38
Case No.: 11-3786
ORDER

1

remains on the moving party. 111 In reviewing the record, the court must construe the evidence and

2

the inferences to be drawn from the underlying evidence in the light most favorable to the non-

3

moving party. 112

4

Patent infringement is a two-step process: first, the court must construe the asserted claims;

5

then, the court must compare the accused products with the construed claims and determine

6

whether the products contain each limitation of the claims, either literally or equivalently. 113 A

7
8
9

product literally infringes if it contains each element and limitation of the patent claim as
construed. 114 A product may also infringe under the doctrine of equivalents, which applies if the

United States District Court
For the Northern District of California

10

element in the accused device performs substantially the same function, in substantially the same

11

way, to obtain substantially the same result as the element claimed in the patent. 115

12
13

Under Fed. R. Civ. P. 56(d), if the party opposing summary judgment cannot, for specified
reasons, present facts essential to justify its opposition to the motion, “the court may (1) defer

14
considering the motion or deny it; (2) allow time to obtain affidavits or declarations or to take
15
16

discovery; or (3) issue any other appropriate order.” 116 This requires the nonmoving party to show

17

“(1) the specific facts that they hope to elicit from further discovery, (2) that the facts sought exist,

18

and (3) that these sought-after facts are ‘essential’ to resist the summary judgment motion.” 117 A

19

district court should continue the motion if there is “a good faith showing by affidavit that the

20
21

111

22

112

23

Id.

See Anderson, 477 U.S. at 248; Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475
U.S. 574, 587 (1986).

113

See Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1356-57 (Fed. Cir. 2005).

114

See id. at 1357.

115

See Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, 1296-97 (Fed. Cir. 2009).

116

See Fed. R. Civ. P. 56(d).

117

See McCormick v. Fund American Cos., 26 F.3d 869, 885 (9th Cir.1994).

24
25
26
27
28

39
Case No.: 11-3786
ORDER

1

continuance is needed to obtain facts essential to preclude summary judgment,” 118 and where there

2

has been no meaningful opportunity for discovery before a move for summary judgment. 119

3

B.

4
5
6

Indefiniteness of Claims 17 and 19 of the ‘145 Patent
As it noted earlier, the court declined to construe terms from claims 17 and 19 because of its

concern that the phrase “relatively short (period of) time” was indefinite and invited Western
Digital to move for summary judgment. Claim 17 provides, in part:

7
D.

8
9

i.

means for writing in a time succession as said disk rotates two or more servo
bursts over a relatively short time, wherein each of said bursts is laterally
offset from said track center line by a predetermined distance, and

ii.

10
United States District Court
For the Northern District of California

a controller for successively positioning said read/write head to one or more
positions characterized by an associated desired offset with respect to said track
center line, including:

means for reading said servo bursts at each of said offsets, and generating
and storing signals representative of each read burst associated with each of
said offsets.

11
12
13
14

Claim 19, in turn, states:

15
Method for positioning a magnetic read/write head with respect to a data track on a
magnetic disk, said read/write head having a write width T, and said data track having
width T and extending along a circular track center line disposed about a disk axis,
comprising the steps of:

16
17
18

A.

writing in a time succession as said disk rotates, two or more servo bursts on said
disk over a relatively short period of time, wherein each of said bursts is written at
locations laterally offset from said track center line by a predetermined distance,

B.

positioning said read/write head to a plurality of desired offsets with respect to said
track center line, and at each of said offsets, reading said servo bursts in succession
and determining an amplitude value representative of said bursts at each of said
desired offsets,

C.

storing said amplitude values in connection with said respective ones of desired
offsets, and

19
20
21
22
23
24
25
118

26

See State of Cal. ex rel. Cal. Dep't of Toxic Substances Control v. Campbell, 138 F.3d 772, 779
(9th Cir.1998) (citing McCormick v. Fund American Cos., 26 F.3d 869, 885 (9th Cir.1994)).

27

119

28

See Kremen v. Cohen, Case No. 5:11-05411-LHK, 2012 WL2919332 at *5 (citing Burlington
N. Santa Fe R. Co. v. Assiniboine & Sioux Tribes of Fort Peck Reservation, 323 F.3d 767, 773 (9th
Cir.2003)).
40
Case No.: 11-3786
ORDER

D.

1
2

in a closed loop manner, using the respective ones of said stored values to reposition
said magnetic read/write head to selected ones at said desired offsets.

The court now affirms its earlier suspicion that claims 17 and 19 are invalid on indefiniteness

3
grounds.
4
“A claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in

5
6

the art could determine whether a particular composition infringes or not.” 120 “[W]here an accused

7

infringer shows by clear and convincing evidence that a skilled artisan could not discern the

8

boundaries of the claim based on the claim language, the specification, and the prosecution history,

9

as well as her knowledge of the relevant art area,” the accused infringer satisfies the “exacting

United States District Court
For the Northern District of California

10

standard” of showing indefiniteness. 121 “Only claims not amenable to construction or insolubly

11
12

ambiguous are indefinite.” 122 As relevant to these claim terms, “[w]hen a word of degree is used

13

the district court must determine whether the patent’s specification provides some standard for

14

measuring that degree.” 123

15

At both claim construction and in its motion for summary judgment, Western Digital has

16

argued that the phrase “relatively short” has a multiplicity of meanings, that it is unconnected to

17

any reference point in the ‘145 Patent, and that as a result a person of ordinary skill in the art would

18
be unable to determine the requirements for the invention. GTE responds that the term is not
19
20
21

indefinite because the patent teaches a person of ordinary skill in the art to understand that
“relatively short time” refers to “the reference period of a rotation of the disk.” 124

22
23

120

Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003).

24

121

Halliburton Energy Serv., Inc. v. M-I LLC, 514 F.3d 1244, 1249-59 (Fed. Cir. 2008).

25

122

Id. (internal quotations omitted).

26

123

Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).

27

124

28

Docket No. 94. Because the parties’ respective summary judgment positions overlap with their
claim construction positions, and because they reference the claim construction positions in their
summary judgment motions, the court draws from papers and evidence submitted in both disputes.
41
Case No.: 11-3786
ORDER

The language in the ‘145 Patent on which GTE relies does not provide a sufficient

1
2

definition of “relatively short time.” GTE points, for example, to the text of claim 19 itself to

3

argue that “relatively short time” refers to one rotation of the disk. The relevant language provides

4

“writing in a time succession as said disk rotates, two or more servo bursts on said disk over a

5

relatively short period of time.” GTE argues that the phrase “writing in a time succession as said

6

disk rotates” “directly links” the disk’s rotation to the writing of the servo bursts. GTE misreads

7
8
9

the claim language. The first “time” reference – “time succession” – reveals that the servo bursts
must be written sequentially in time and that the sequence occurs simultaneously with the disk’s

United States District Court
For the Northern District of California

10

rotation. The second “time” reference – “relatively short period of time” – provides the duration of

11

the operation. Claim 19 thus instructs only that while the disk rotates, the servo bursts must be

12

written sequentially in time, and that the process must happen within a “relatively short period of

13

time.” The language does not supply a relationship between the duration of the process and the

14
number of rotations of the disk.
15
GTE next points to the detailed description of the invention, particularly the statement that

16
17

“as a disk rotates past a radially extending reference axis, the spatial position of servo bursts and a

18

data track can be expressed as a function of time (which corresponds to the rotation of the

19

disk).” 125 According to GTE, this sentence reveals that “relatively short period of time” also refers

20

to the rotation of the disk. GTE again conflates two different uses of the term “time.” The

21

statement GTE points to describes only how the size and dimension of a servo burst (i.e., the

22
burst’s length along the track center line) can be a function of time. In other words, the rate of
23
24
25

rotation of the disk and a defined period of time combine to provide the size of each servo burst
signal. But as explained already, “relatively short period of time” describes the total duration of

26
27
125

28

Docket No. 1 Ex. A at 4:28-31.
42

Case No.: 11-3786
ORDER

1
2

the write operation for the servo bursts, not the size of each individual servo burst, as the “function
of time” phrase describes.

3

GTE maintains that, because the size of servo bursts can be expressed as functions of time,

4

the patent nevertheless adequately discloses that “relatively short period of time” means something

5

shorter than a single rotation of a disk. This argument fails for several reasons. It relies on the

6

“two or more servo bursts” in claims 17 and 19 referring in fact to two or more servo bursts set at

7
8
9

the same lateral offset, rather than referring to two or more servo bursts set at two or more different
lateral offsets. In the first scenario, the write operation might be able to be completed within one

United States District Court
For the Northern District of California

10

rotation. But in the second scenario, the parties agree that the write operation would take at least

11

three rotations. 126 The inventiveness of claims 17 and 19 lies in this second scenario, with the

12

servo bursts written at different lateral offsets, and given that at least claim 19, a method claim,

13

describes only one write operation, at least claim 19 would appear to require an interpretation that

14
the “two or more servo bursts” refers to servo bursts set at different lateral offsets. Figure 3 further
15
16

underscores that the two bursts involved sit at different lateral offsets.

17
18
19
20
21
22
23
24
25
26
27
28

126

One rotation to write servo burst A, a second rotation to reset the head, and a third rotation to
write servo burst B. See Docket Nos. 132, 134.
43
Case No.: 11-3786
ORDER

Even if “relatively short period of time” refers to something shorter than a rotation of the

1
2

disk, the patent fails to disclose how much shorter falls within “relatively short.” It provides no

3

reference for the necessary rate of rotation or the time to write the servo bursts. Tying the duration

4

of the write operation to the disk rotation still fails to provide a person of ordinary skill in the art

5

any admonition about what ratio within the disk rotation is infringing and what ratio is not. 127

6

To the extent that GTE argues that one rotation equals a “relatively short period of time,”

7
8
9

rather than some period of time less than one rotation, the court is not persuaded. If the two
metrics were equal, the inventor could just as easily have used “one disk rotation” or “three disk

United States District Court
For the Northern District of California

10

rotations.” The inventor instead used “relatively short period of time” without providing sufficient

11

information within the patent to disclose the meaning of that phrase.

12
13
14

GTE expert Hendryx also fails to support that the phrase in fact refers to one rotation of the
disk. Hendryx states that the term “in the context of these claims is well understood by a person of
ordinary skill in the art . . . [to] refer[] to the duration of a time interval and that duration is less

15
16

than some reference duration.” 128 The reference duration, in turn, “is the period of rotation of the

17

disk.” 129 To support his opinion, Hendryx looks to the function itself and argues that the claim

18

describes that “the head is positioned to a desired offset of a track for a desired servo burst pattern

19

and then a servo burst is written in each sector as the disk rotates, writing in all sectors in one

20

rotation.” 130 Because “[t]here are typically 200 sectors in a track in such testers,” Hendryx asserts,

21

a person of ordinary skill would understand that a servo burst “would be written every 1/200 of the

22
23
24
25

127

See Halliburton, 514 F.3d at 1251.

26

128

Docket No. 94 Ex. 8 & 68.

27

129

Id.

28

130

Id. & 69.
44

Case No.: 11-3786
ORDER

1
2

period of rotation of the disk, which is well understood to be a relatively short time compared to
the period of rotation of the disk.” 131

3

Hendryx may be right that a person of ordinary skill in the art would think that 1/200 of a

4

period of rotation of the disk is a “relatively short period of time,” but his opinion fails to connect

5

the reference time duration to the rotation of the disk. Given that the inventiveness of the patent

6

relies on servo bursts set at different offsets, Hendryx’s opinion that the reference is one rotation,

7
8
9

rather than three further undermines his explanation. And again, if the reference duration was the
rotation of the disk, the inventor could have said so.

United States District Court
For the Northern District of California

10

As Western Digital expert Messner observes, the term “could mean many things such as the

11

time of one servo sector passage; the rise time or time constant of the read/write circuit or the ‘seek

12

time’ or ‘access time’ necessary to move the read/write head to a new location or track; one

13
14

immediately after another as proposed by Western Digital or even a time interval whose duration is
less than the period of rotation of the disk as proposed by GTE.” 132 Messner further explains that

15
16
17

“one skilled in the art would not be able to understand which of these potential meanings . . . is
envisioned by the ‘145 Patent.” 133
Given the tenuous link between the phrase “relatively short period of time” and the rotation

18
19

of the disk, and given that even if that connection were stronger nothing in the patent elucidates

20

how much shorter than one rotation the period of time must be, the court finds that “relatively short

21

period of time” is indefinite and renders claims 17 and 19 invalid. 134

22
23
24

131

Id.

25

132

Docket No. 98 Ex. 2 & 77.

26

133

Id. & 78.

27

134

28

Cf. Storm Prods., Inc. v. Ebonite Int’l, Inc., 638 F. Supp. 2d 1307, 1312 (D. Utah 2009), aff’d
374 Fed. Appx. 983 (Fed. Cir. 2010) (concluding that “relatively small number of bowling balls”
was indefinite).
45
Case No.: 11-3786
ORDER

1
2

C.

Noninfringement of the ‘085 Patent and the ‘145 Patent
Western Digital next moves for summary judgment on the grounds of noninfringement for

3

claims 20 and 29 of the ‘085 Patent and claims 1-9 and 11-18 of the ‘145 Patent. GTE opposes the

4

motion and responds with a request under Rule 56(d) to deny summary judgment until GTE can

5

perform further discovery. Most of the underlying arguments in Western Digital’s motion overlap

6

with those raised by GTE’s Rule 56(d) request, save for one issue regarding claims 20 and 29 of

7
8
9

the ‘085 Patent. The court begins with its resolution of that issue before turning to whether more
discovery is warranted before determining Western Digital’s motion.

United States District Court
For the Northern District of California

10

1.

11

Western Digital asserts that its testers do not infringe claims 20 and 29, which depend on

12
13

Claims 20 and 29 of the ‘085 Patent

claims 19 and 28 respectively, because they do not include a “magnetic disc medium” with the
components required by claims 19 and 28. Claim 19 provides:

14
15
16
17
18
19
20
21
22
23
24
25
26

A system for positioning a read/write head with respect to a track on a magnetic disc
medium, wherein the disc medium includes a servo burst pattern having (i) a first servo
burst disposed on the track, characterized by a first frequency, and (ii) a second servo burst
disposed on the track, characterized by a second frequency, said magnetic disc medium
comprising:
a multi-frequency filter for receiving a composite readback signal from the
read/write head and for separating the composite readback signal into a first
readback signal corresponding to the first servo burst and a second readback signal
corresponding to the second servo burst;
an envelope detector for providing a first amplitude signal corresponding to an
amplitude of the first readback signal, and for providing a second amplitude signal
corresponding to an amplitude of the second readback signal;
a comparator for comparing the first amplitude signal to the second amplitude
signal, and for providing an error signal corresponding to a difference between the
first amplitude signal and the second amplitude signal;
a servo control system for receiving the error signal and generating a drive signal
therefrom; and,

27
28
46
Case No.: 11-3786
ORDER

a positioner assembly, coupled to the read/write head, for adjusting the position of
the read/write head with respect to the track, as a function of the drive signal. 135

1
2

Claim 20 describes “[a] system according to claim 19, further including a band pass filter

3
for receiving the readback signal from the read/write head, filtering an out-of-band noise
4
5
6

component from the readback signal so as to produce a filtered readback signal, and providing the
filtered readback signal to the multi-frequency filter.” 136

7

Claim 28 in turn provides:

8

A system for positioning a read/write head with respect to a track on a magnetic disc
medium, wherein the disc medium includes a servo burst pattern having (i) a first set of
servo bursts adjacently disposed on the tracks along a first axis perpendicular to the
centerlines, wherein each of the first set of servo bursts is disposed on an individual track,
from the inside track edge to the outside track edge, and a frequency characteristic
associated with each of the servo bursts alternates between a first frequency and a second
frequency for consecutive servo bursts, and (ii) a second set of servo bursts adjacently
disposed on the tracks along a second axis perpendicular to the centerlines and parallel to
the first axis, wherein each of the second set of servo bursts is disposed on two adjacent
tracks, from the centerline of one track to the centerline of a next adjacent track, and a
frequency characteristic associated with each of the second set of servo bursts alternates
between the first frequency and the second frequency for consecutive servo bursts, said
magnetic disc medium comprising:

9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16

a multi-frequency filter for receiving a composite readback signal from the
read/write head and for separating the composite readback signal into a first
readback signal corresponding to servo bursts characterized by the first frequency
and a second readback signal corresponding to servo bursts characterized by the
second frequency;

17
18
19

an envelope detector for providing a first amplitude signal corresponding to an
amplitude of the first readback signal, and for providing a second amplitude signal
corresponding to an amplitude of the second readback signal;

20
21

a comparator for comparing the first amplitude signal to the second amplitude
signal, and for providing an error signal corresponding to a difference between the
first amplitude signal and the second amplitude signal;

22
23
24

a servo control system for receiving the error signal and generating a drive signal
therefrom; and,

25
26
27

135

Docket No. 1 Ex. B at 14:19-46.

28

136

Id. at 14:47-52.
47

Case No.: 11-3786
ORDER

a positioner assembly, coupled to the read/write head, for adjusting the position of
the read/write head with respect to the track, as a function of the drive signal. 137

1
2

Claim 29 describes “[a] system according to claim 28, further including a band pass filter

3
for receiving the readback signal form the read/write head, filtering an out-of-band noise
4
5
6

component from the readback signal so as to produce a filtered readbackg signal, and providing the
filtered readback signal to the multi-frequency filter.” 138
GTE responds in its opposition to Western Digital’s motion for summary judgment that the

7
8

references in the preambles to a “magnetic disc medium comprising” the various components are

9

merely clerical errors that the court can correct even in the absence of a certificate of correction

United States District Court
For the Northern District of California

10

from the USPTO. GTE asserts that instead of “magnetic disc medium comprising,” the court

11
12

should read claims 19 and 28 to say “system comprising.” GTE argues that the specification

13

supports this correction and that nothing in the prosecution history suggests that the inventor

14

sought to describe a magnetic disc medium with the various components identified in claims 19

15

and 28.

16
17

Both district courts and the USPTO have the ability to correct errors in patents, but the
scope of that power differs. Pursuant to 35 U.S.C. § 255, the USPTO may correct through issuance

18
of a certificate of correction, “a mistake of a clerical or typographical nature, or of minor character
19
20

. . . if the correction does not involve such changes in the patent as would constitute new matter or

21

would require re-examination.” This authority “is not limited to obvious errors,” but in fact

22

“extends even to broadening corrections, so long as it is clearly evident from the specification,

23

drawings, and prosecution history how the error should appropriately be corrected.” 139 The

24

USPTO’s correction, however, applies only prospectively. 140

25
26
137

Id. at 15:51 – 16:23.

138

Id. at 16:24-29.

27
28

48
Case No.: 11-3786
ORDER

District courts, on the other hand, may apply corrections retroactively, but their authority is

1
2

limited to situations where (1) “the correction is not subject to reasonable debate based on

3

consideration of the claim language and the specification” and (2) “the prosecution history does not

4

suggest a different interpretation of the claims.” 141 Courts are further limited to correcting “an

5

obvious error in a patent claim” 142 that involves only “minor typographical and clerical errors in

6

patents.” 143 “[M]ajor errors” on the other hand “are subject only to correction by the PTO.” 144 The

7
8
9

court must make the determination of the presence of an error – and any correction – “from the
point of view of one skilled in the art.” 145 Further weighing on the court’s consideration is the

United States District Court
For the Northern District of California

10

underlying purpose of patents, namely that they serve as notice of the metes and bounds of the

11

intellectual property into which others may not trespass. Accordingly, “post-issuance judicial

12

corrections which have a retroactive effect must be carefully scrutinized.” 146

13
14

The court first must ascertain whether the “magnetic disc medium” language presents an
error that it has the authority to correct, namely whether the correction GTE suggests is of the

15
16
17
139

18

Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1356-57 (Fed. Cir. 2003).

140

19
20
21

See 35 U.S.C. § 255 (“Such patent, together with the certificate, shall have the same effect and
operation in law on the trial of actions for causes thereafter arising as if the same had been
originally issued in such corrected form.”); see also Novo Indus., 350 F.3d at 1356 (noting that
Section 255 “deal[s] only with the authority of the PTO to make prospectively effect corrections,
and the PTO was given no authority to correct the claims retroactively”).
141

22

Id. at 1357.

142

23

CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011) (citing
I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442 (1926)).

24

143

Novo Indus., 350 F.3d at 1357.

25

144

Id.

26

145

27

Id. (quoting Ultimax Cement Manuf. Corp. v. CTS Cement Manuf. Corp., 587 F.3d 1339, 1353
(Fed. Cir. 2009)).

146

28

Fujitsu Limited v. Tellabs Operations, Inc., Case No. 08 C 3379, 2011 WL 1303358, at *12
(N.D. Ill. Mar. 31, 2011).
49
Case No.: 11-3786
ORDER

1

“obvious minor typographical and clerical error” form or whether it is a “major error.” 147 GTE

2

asserts that a magnetic disc medium cannot contain the components listed in claims 19 and 28, and

3

so a person of ordinary skill in the art would know that “magnetic disc medium comprising” is

4

obviously erroneous. In support of that position, GTE offers a statement from Hendryx, who

5

provides that “a magnetic disc medium is a disc of glass ceramic or metal with a magnetic coating

6

on one or both sides, and that such a disc is a part of the system.” 148 According to Hendryx, a

7
8
9

person of ordinary skill in the art would understand that “[t]here is no possible interpretation of the
term . . . in which a magnetic disc medium would comprise the recited elements, so the drafting

United States District Court
For the Northern District of California

10

error would not be confusing.” 149 A person with the requisite skill instead would understand that

11

claims 19 and 28 in fact disclose “a system for positioning a read/write head with respect to a track

12

on a magnetic disk medium that includes the recited components . . . rather than a magnetic disc

13

medium that includes the recited components.” 150

14
Western Digital maintains that the language does not provide an “obvious error” because it
15
16

is possible to include other components onto or within a disk, and so the language does not provide

17

notice to a person of ordinary skill in the art that the claim text is wrong. To support its position,

18

Western Digital offers three examples of inventions in which a disk included other components.

19

United States Patent Application Publication US 2006/0062137 describes in part a “compact disk .

20

. . comprising: (a) a compact disk substrate . . . (b) a microprocessor operatively connected to said

21
22

substrate . . . (c) an optical interface device operatively connected to said substrate and to said
microprocessor” and other components. 151 United States Patent No. 7,385,284 describes a device,

23
24

147

Novo Indus., 350 F.3d at 1357.

25

148

Docket No. 198-1 ¶ 15.

26

149

Id.

27

150

Id. ¶ 17.

28

151

Docket No. 144-2 Ex. B.
50

Case No.: 11-3786
ORDER

1

such as a CD or DVD, with an “integrated circuit chip,” such as an RFID chip, that is incorporated

2

or embedded into the substrate of the CD or DVD. 152 United States Patent Application Publication

3

US 2004/0052202 discloses “an information disk comprising: an annular disk structure having a

4

surface with a metalized data storage area . . . an antenna coupled to said annular disk surface . . .a

5

radio frequency identification processor coupled to said annular disk surface and the antenna; and a

6

protective coating coupled to at least one of the processor or the antenna.” 153

7
GTE relies on the seeming impossibility of a magnetic disc medium containing the

8
9

necessary components to argue that the error is clerical, minor, and sufficiently easy for the court to

United States District Court
For the Northern District of California

10

correct. But the inventions that Western Digital offers provide some support that at least on its

11

face, the term “magnetic disc medium” as used in claims 19 and 28 would be not obviously

12

erroneous to a person of ordinary skill in the art. The patent and the patent applications show that

13

it is possible to incorporate other components into or onto disks, and they undermine Hendryx’s

14
assertion that the claims as described are inherently impossible such that they provide notice to a
15
16

person with the requisite skill that a substitution of terms must take place. 154
GTE also points to the specification and the embodiments within the ‘085 Patent, which it

17
18

argues disclose that the magnetic disc medium does not include the components identified in

19

claims 19 and 28. According to GTE, the specification and the embodiments distinguish between

20

the disk and the components that purportedly constitute the system GTE suggests is really

21
22
23

152

See id. Ex. C.

24

153

Id. Ex. D.

25

154

26
27
28

Cf. Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir.
2009) (adding comma to a formula when the formula without the comma did not correspond to any
known mineral); Nova Measuring Instruments, Ltd. v. Nanometrics, Inc., No. C 05-0986 MMC,
2006 U.S. Dist. LEXIS 90736, at *10-11 (N.D. Cal. Dec. 1, 2006) (changing claim language
reciting “collecting light reflected from the illuminated water” to “collecting light reflected from
the illuminated wafer”).
51
Case No.: 11-3786
ORDER

1
2

described in claims 19 and 28. That distinction, GTE argues, illustrates that “magnetic disc
medium” is a clerical error that the court can replace with “system.”
The court acknowledges the inconsistency between the claim language and the specification

3
4

and embodiments. But internal inconsistency is not enough to show that the claim language is

5

impossible to the point that a person of ordinary skill in the art would recognize the error and in

6

fact interpret the claim language in the manner GTE proffers. The inconsistency suggests that the

7
8
9

inventor may have wanted to claim a “system comprising” the components in claims 19 and 28, but
the language instead discloses a “magnetic disc medium comprising.” The invention perhaps is not

United States District Court
For the Northern District of California

10

what the inventor intended to describe, but it is not so impossible that persons with the requisite

11

skill would necessarily know that the inventor meant “system” instead.

12
13

More importantly, the court cannot say that substituting “system” for “magnetic disc
medium” is sufficiently minor that it has the authority to undertake the correction. As the Federal

14
Circuit highlighted in Novo Industries, L.P. v. Micro Molds Corp, district courts are authorized to
15
16

correct patents for the purpose of giving effect to the claim language and assuring that the patentee

17

may protect the same scope of the claim as she intended to preserve. 155 But where the error is not

18

obvious, where the clerical error in fact can or should broaden the scope of the claim, the USPTO

19

has the requisite expertise to engage in consideration of the correction. 156 The USPTO, unlike the

20

court, has the experience to examine the patent and to ascertain whether the change that GTE offers

21

conflicts with earlier or later granted patents.

22
It is true that Western Digital does not offer any other possible corrections to dispute GTE’s
23
24

solution, but that is because Western Digital’s argument is more fundamental – that there is not an

25

obvious error in the first place and so any change, even from “magnetic disc medium” to “system”

26

necessarily changes the scope of the ‘085 Patent’s protection. The court agrees. Here, a clerical

27

155

See 350 F.3d at 1356.

28

156

See id.
52

Case No.: 11-3786
ORDER

1

error in fact may have occurred, but that error and its proper substitute is not so obvious that a

2

person of ordinary skill in the art easily could recognize it and more importantly replace it. As a

3

result, the court cannot ascertain whether the substitute GTE offers maintains the proper scope of

4

the claim. The USPTO is the proper entity to make this determination.

5
6

Because the court finds that GTE has not met its burden to show that correction of claims
19 and 28 is warranted, the court also finds that Western Digital’s motion for summary judgment is

7
8
9

well-taken. Claims 20 and 29 depend on claims 19 and 28, and Western Digital has stated, and
GTE does not suggest otherwise, that its products do not include a “magnetic disc medium

United States District Court
For the Northern District of California

10

comprising” the components listed in claims 19 and 28. Because Western Digital’s testers do not

11

practice the claims, they do not infringe. Summary judgment on claims 20 and 29 of the ‘085

12

Patent is GRANTED.

13

2.

Claims 1-9 and 11-18 of the ‘145 Patent

14
Western Digital asserts that its testers do not infringe claims 1-9 or 11-18 of the ‘145 Patent
15
16

because they do not have the various components and structures required by the claims. For

17

independent claims 1 and 17 (and claims 2-9 and 18, which depend on claims 1 and 17), as

18

explained in detail above, the court construed the means-plus-function term “second feedback

19

means” to require as its structure “the read element of magnetic head and servo analyzer, including

20

read amplifier, detector, analog to digital converter and averager.” In its infringement contentions,

21

GTE apparently identified the M8 and M9 servo decoders and their control boxes as the structures

22
within the EH-300 and DCT-400 testers respectively that perform the “second feedback means”
23
24

function. Western Digital asserts that the M8 and M9 servo decoders and corresponding control

25

boxes do not contain an ADC or an averager, and as support it offers the schematics from the M8

26

and M9 servo decoders that purportedly reveal that no averager or ADC is present.

27
28
53
Case No.: 11-3786
ORDER

GTE responds that even if the M8 and M9 do not themselves contain the averager and the

1
2

ADC, the testers in fact have both components. Pointing to an RMS detector and an ADC on a

3

separate board, GTE argues that the testers contain the relevant structure and perform the “second

4

feedback means” function. GTE also requests relief under Rule 56(d) so that its expert Hendryx

5

can inspect Western Digital’s testers to determine how the identified components perform the

6

feedback function. GTE further argues that Rule 56(d) relief is appropriate because it needs to

7
8
9

inspect source code and take Fed. R. Civ. P. 30(b)(6) depositions to navigate Western Digital’s
testers and obtain further evidence of its infringement theories. Western Digital replies that GTE’s

United States District Court
For the Northern District of California

10

theories as presented in its opposition do not comply with its infringement contentions, on which

11

Western Digital relied, and that GTE has failed to show that the new discovery either could allow it

12

to rely on its original theories or support amending its contentions.

13

As to independent claim 11 and dependent claims 12-16 of the ‘145 Patent, Western Digital

14
asserts that its testers do not meet the claim limitation because they do not calculate a “ratio of
15
16

servo burst signals . . . to determine the position of the said magnetic head with respect to said

17

magnetic disk.” 157 Western Digital posits that its testers instead use an analog subtractor that

18

subtracts the amplitude of one servo burst from the other and adjusts the head if the difference is

19

greater than zero. The ‘145 Patent, in contrast, describes calculating a ratio from the two servo

20

bursts – in other words, dividing rather than subtracting. GTE again seeks to defer summary

21

judgment until it has taken more discovery but also posits that the means by which Western

22
Digital’s testers determine the position of the head is sufficiently similar to fall under the doctrine
23
24

of equivalents for claim 11 and dependent claims 12-16.
GTE’s and Western Digital’s competing requests highlight the bustling intersection of

25
26

infringement contentions under this district’s Patent Local Rules, discovery, and summary

27

judgment. Under Patent L.R. 3-1, early in the case GTE had to proffer infringement contentions to

28

157

Docket No. 131-3 Ex. B at 9:54 – 10:12.
54

Case No.: 11-3786
ORDER

1

Western Digital with the theories of infringement that it could support at that time. Relying on

2

those infringement contentions, Western Digital produced discovery, progressed through claim

3

construction, and then moved for summary judgment once it believed it could assert that its

4

products did not infringe in the manner that GTE had theorized. Western Digital contends that

5

throughout this process, it sought amended contentions from GTE, and that GTE refused. GTE for

6

its part asserts that it could not amend its contentions until it was able to obtain better discovery

7
8
9

United States District Court
For the Northern District of California

10

from Western Digital and that summary judgment is not appropriate not only because of the need
for more discovery but because GTE believes its alternative theories of infringement present at
least a question of material facts.

11
12
13

The court finds that deferring ruling on Western Digital’s motion for summary judgment as
to noninfringement of claims 1-9 and 11-18 of the ‘145 Patent is appropriate. At the time of
Western Digital’s motion, GTE had not had an opportunity to inspect the testers themselves and it

14
apparently had trouble with interpreting Western Digital’s schematics. Through Hendryx’s
15
16

declaration, GTE sufficiently shows that inspecting Western Digital’s testers could allow it to

17

uncover facts that could aid it in opposing Western Digital’s summary judgment request on the

18

grounds of noninfringement.

19
20
21
22

The court observes, however, that to the extent that the discovery GTE requires would lead
to new theories of infringement, rather than merely supporting the theories in its contentions,
amendment at this stage most likely would prove problematic. It is true that while these motions
were pending, GTE attempted to amend its infringement contentions. 158 But GTE never offered to

23
24
25

the court or to Western Digital its new contentions, and so the court denied the request, albeit
noting that it had made no determination about whether the amendments were supported by good

26
27
158

28

See Docket No. 181.
55

Case No.: 11-3786
ORDER

1

cause or whether they would unduly prejudice Western Digital. 159 Following that denial, GTE has

2

not sought any further leave to amend its contentions. And so, although in its papers, it suggests

3

that amendment of its contentions is likely in light of the discovery it seeks, GTE has not followed

4

through on that assertion. At this point, fact discovery and expert discovery have closed and

5

dispositive motions are set to be heard on August 27, 2013. 160 Amendment at this stage would be

6

very late indeed.

7
The court shall hear further argument on Western Digital’s motion in light of the new

8
9

discovery GTE has obtained on August 27, 2013. No later than July 30, 2013, GTE may file a

United States District Court
For the Northern District of California

10

brief not exceeding fifteen pages explaining how the discovery it has taken supports its opposition

11

to Western Digital’s summary judgment motion. Western Digital may file any response not

12

exceeding fifteen pages no later than August 6, 2013.

13

IV.

14

CONCLUSION

Western Digital’s motions for summary judgment for invalidity of claims 17 and 19 of the
15
16

‘145 Patent and for noninfringement of claims 20 and 29 of the ‘085 Patent are GRANTED.

17

Pursuant to GTE’s Rule 56(d) request, the court defers ruling on Western Digital’s motion for

18

summary judgment for noninfringement of claims 1-9 and 11-18 of the ‘145 Patent until after GTE

19

has provided to the court the evidence it obtained following inspection of Western Digital’s testers

20

and source code.

21
22
23

IT IS SO ORDERED.
Dated: July 19, 2013

_________________________________
PAUL S. GREWAL
United States Magistrate Judge

24
25
26
27

159

See Docket No. 194.

28

160

See Docket No. 143.
56

Case No.: 11-3786
ORDER