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

Filing 445

ORDER RE: WESTERN DIGITAL'S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON NONINFRINGEMENT by Judge Paul S. Grewal denying 131 , 234 , and 235 ; granting-in-part 260 , 262 , and 276 (psglc2, COURT STAFF) (Filed on 11/19/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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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, et al., )
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Defendants and Counterclaim Plaintiffs,
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and
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WESTERN DIGITAL (THAILAND)
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COMPANY LIMITED and
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WESTERN DIGITAL (MALAYSIA)
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SDN.BHD,
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Defendants.
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)

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S
MOTIONS FOR PARTIAL
SUMMARY JUDGMENT ON
NONINFRINGEMENT
(Re: Docket Nos. 131, 234, 235, 260, 262,
and 276)

Among its claims, Plaintiff Guzik Technical Enterprises (“GTE”) accuses Defendants
Western Digital Corp., et al. (collectively, “Western Digital”) of infringing U.S. Patent No.

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6,023,145 (“the ’145 patent”). Before the court are several motions brought by both parties:
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(1) Western Digital’s January 15, 2013, motion for partial summary judgment of noninfringement
of the ’145 patent (“January 15 MPSJ”), 1 (2) Western Digital’s July 23, 2013, motion for partial

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See Docket No. 131.

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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summary judgment of noninfringement of the ’145 patent (“July 23 MPSJ”), 2 (3) Western Digital’s

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motion for summary judgment on GTE’s breach of contract claim, 3 (4) GTE’s motion for summary

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judgment that the ’145 patent is not anticipated or obvious, 4 and (5) GTE’s motion to strike three

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of Western Digital’s expert witnesses. 5 The parties appeared for a hearing on these motions.

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In this order, the court considers only Western Digital’s noninfringement summary
judgment motions and the parties’ motions to file related documents under seal. 6 The court

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considers the balance of the motions in companion orders.
Having considered the papers and the parties’ oral arguments, the court DENIES both of

United States District Court
For the Northern District of California

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Western Digital’s motions for summary judgment of noninfringement. The court

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GRANTS-IN-PART the parties’ motions to seal.

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I. BACKGROUND
A.

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Factual Background
The patents in this case describe hard drive disk test components. 7 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”) with a

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

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move the head above the spinning disk enabling the head to write data onto, or read data from, the

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disk.

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See Docket No. 235.

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See Docket No. 237.

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See Docket No. 238-2.

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See Docket No. 233.

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See Docket Nos. 238 and 251.

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Except where otherwise noted, the court derives these facts from GTE’s complaint.
See Docket No. 1.
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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

The accuracy of the heads in accessing data on the disks is essential to the effectiveness of

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the hard drive. Increases in the data capacity of the magnetic disks demand even greater precision.

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

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

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Western Digital, which used to purchase disk drive heads from Read-Rite, eventually acquired

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Read-Rite’s assets. 8

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GTE argues both Read-Rite and Western Digital were subject to agreements that prohibited

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United States District Court
For the Northern District of California

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

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According to GTE, Western Digital violated the agreements and used GTE’s testers and

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

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

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determine the accuracy of the heads.

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At issue in this order is the ’145 patent. The ’145 patent describes a “head/disk tester
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compris[ing] a thermal-drift compensated closed-loop positioning system that uses two sources of

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positioning feedback.” 9 The first source, linear encoders, “reflects the position of a magnetic head

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with respect to the magnetic disk in the absence of thermal drift.” 10 The second source, servo burst

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signals on the disk, “reflects the position of the magnetic head with respect to the magnetic disk in

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any temperature condition.” 11 The purpose of the invention is “to provide a head/disk tester that

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See Docket No. 79 at ¶ 19.

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Docket No. 1, Ex. A at 2.

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Id.

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Id.

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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effects accurate positioning of a magnetic head with respect to [a] magnetic disk in a tester, even in
the case of unstable temperature conditions.” 12
The court has construed five terms from the ’145 patent. 13

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United States District Court
For the Northern District of California

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Id.

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See Docket No. 224.

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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Disputed Term 14

Court’s Construction

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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” (claim 1)

Section 112(f) means-plus-function term
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, using servo
burst signals on said magnetic disk at
predetermined positions radially offset from
said track center line.”
Structure: “the read element of magnetic head
and servo analyzer, including read element, read
amplifier, detector, analog to digital converter
and averager”

“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)

Section 112(f) means-plus-function term
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”

“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)

Plain and ordinary meaning – Section 112(f)
does not apply

“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)

Section 112(f) means-plus-function term
Function: “prewriting said servo burst signals at
a plurality of positions along a track of said
magnetic disks and detecting the amplitudes of
said prewritten burst signals”
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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For the Northern District of California

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See Docket No. 123 at 128-31 (providing the constructions).
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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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B.

Procedural Background
In August 2011, GTE filed this patent suit against Western Digital alleging infringement of

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U.S. Patent Nos. 6,023,145 (“the ’145 patent”) and 6,785,085 (“the ’085 patent”). The complaint

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alleged Western Digital’s products infringe claims 1-19 of the ’145 patent and claims 20, 21, 24,

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25, 29, 30, 33, 34, 36, and 39 of the ’085 patent. Western Digital answered and filed a
counterclaim alleging that the ’145 patent and the ’085 patent are invalid and that GTE infringes

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For the Northern District of California

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four Western Digital patents: U.S. Patent Nos. 5,640,089 (“the ’089 patent”),
5,844,420 (“the ’420 patent”), 6,891,696 (“the ’696 patent”), and 7,480,116 (“the ’116 patent”). 15
The court denied Western Digital’s motion to dismiss and set a case management

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schedule 16 with a February 10, 2012, deadline for GTE to serve infringement contentions on

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Western Digital and related documents in compliance with Patent L.R. 3-1 and 3-2. 17 The court

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held a claims construction hearing on September 25, 2012, and issued its constructions from the
bench.

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On January 15, 2013, Western Digital first moved for partial summary judgment of

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(1) invalidity and (2) noninfringement of claims 1-9, 11-16, and 17-18 of the ’145 patent as well as

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(3) noninfringement of claims 20 and 29 of the ’085 patent. GTE opposed Western Digital’s

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motion and moved for relief under Rule 56(d). On March 12, 2013, the court heard arguments

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regarding the parties’ summary judgment motions.

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See Docket No. 79.

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See Docket No. 48.

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See Docket No. 57.

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

On February 6, 2013, the parties agreed to modify the case scheduling order: delaying the

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close of fact and expert discovery and the related deadline for dispositive motion practice. The

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trial date was continued from October 28, 2013, to December 2, 2013. 18

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On April 30, 2013, GTE sought leave on shortened time to amend its infringement
contentions. GTE asserted that recently discovered evidence provided the requisite good cause for
leave to amend. GTE, however, did not offer its proposed amended infringement contentions to

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For the Northern District of California

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the court or Western Digital. Instead, GTE sought leave only on the grounds that it had good cause
and Western Digital would not be prejudiced based on its own assessment of its contentions.

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On May 14, 2013, the court heard argument regarding GTE’s motion for leave to amend its

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contentions and the court issued its order the same day denying GTE’s request for leave. The court

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made no finding regarding either GTE’s proffer of good cause or possible prejudice to Western

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Digital because, absent a review of the proposed infringement contentions, the court could not
evaluate good cause or possible prejudice. 19

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On July 19, 2013, the court issued an order addressing the summary judgment motions and

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providing the court’s reasoning for its earlier-issued claim constructions. 20 In the July 19 order, the

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court held that the term “relatively short period of time” was indefinite and thus rendered claims 17

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and 19 of the ’145 patent invalid. 21 The court also granted summary judgment in Western Digital’s

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favor on noninfringement grounds on claims 20 and 29 of the ’085 patent. 22 Finding GTE’s

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See Docket No 143.

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See Docket No. 194.

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See Docket No. 224.

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See 35 U.S.C. § 112(b) (“The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
regards as the invention.”).
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In Western Digital’s original motion, Western Digital moved for summary judgment of claims
20, 21, 24, 25, 29, 30, 33, 34, 36, and 39. See Docket No. 131-1. In GTE’s opposition, GTE
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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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Rule 56(d) request persuasive, the court declined to rule on Western Digital’s motion for summary

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judgment on the issue of noninfringement of claims 1-9, 11-16, and 17-18 of the ’145 patent,

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instead deferring the issue until the court addressed the parties’ respective dispositive motions filed

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in July 2013. The court invited both GTE and Western Digital to submit additional briefing (now

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before the court) regarding how GTE’s subsequent discovery affected Western Digital’s

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noninfringement arguments.

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On July 29, 2013, the parties stipulated to dismissal of certain claims and counterclaims. 23

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United States District Court
For the Northern District of California

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Western Digital agreed to dismiss with prejudice Counts V, VI, VII, and VIII of its counterclaims –

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specifically its claims that GTE infringed the ’089 patent, the ’420 patent, the ’696 patent, and

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the ’116 patent. In turn, GTE agreed to dismiss without prejudice Counts One, Two, Three, Four,

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Five, Six, Seven, and Eight of its counterclaims, in which it sought declaratory judgment of

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noninfringement and invalidity of Western Digital’s four patents at issue. GTE also agreed to

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dismiss with prejudice its trade secret misappropriation claim against Western Digital. GTE
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dropped all remaining claims from the ’085 patent.
This case has significantly narrowed from the parties’ original claims and counterclaims.

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For clarity, the court identifies the remaining claims: (1) GTE’s infringement claim spanning

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claims 1-16 of the ’145 patent, (2) Western Digital’s claim for declaratory judgment of

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noninfringement and invalidity of the ’085 and ’145 patents, and (3) GTE’s breach of contract

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claim. 24

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addressed only claims 20 and 29 because GTE dropped claims of infringement regarding claims
21, 24, 25, 30, 33, 34, 36, and 39. See Docket No. 222 at 8, n.3. The court thus addressed only
claims 20 and 29 of the ’085 Patent in its order. See Docket No. 224.
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See Docket No. 248.

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See Docket No. 79.

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

The court now turns to Western Digital’s summary judgment motions regarding

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noninfringement of claims 1, 3-7, 11-13, and 15-16 of the ’145 Patent.
II. LEGAL STANDARDS

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A.

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Summary Judgment
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.” 25 The moving party bears the

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For the Northern District of California

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initial burden of production by identifying those portions of the pleadings, discovery, and affidavits
which demonstrate the absence of a triable issue of material fact. 26 If the moving party is the

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defendant, he may do so in two ways: by proffering “affirmative evidence that negates an essential

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element” of the nonmoving party’s claim, or by demonstrating “the nonmoving party’s evidence is

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insufficient to establish an essential element of the nonmoving party’s claim.” 27 If met by the

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moving party, the burden of production then shifts to the non-moving party, who must then provide
specific facts showing a genuine issue of material fact for trial. 28 The ultimate burden of

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persuasion, however, remains on the moving party. 29 In reviewing the record, the court must

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construe the evidence and the inferences to be drawn from the underlying evidence in the light

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most favorable to the nonmoving party. 30

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

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

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Celotex, 477 U.S. at 331.

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See id. at 330; T.W. Elec. Service, Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630
(9th Cir. 1987) (“Rule 56 provides that summary judgment ‘shall be rendered forthwith if the
pleadings, depositions, answers to interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any material fact and that the moving
party is entitled to judgment as a matter of law.’” (quoting Fed. R. Civ. P. 56(c)).
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Celotex, 477 U.S. at 330 (the “ultimate burden of persuasion” always “remains on the moving
party”).
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See Anderson v. Liberty Lobby, Inc.,, 477 U.S. 242, 248 (1986) (noting that “all evidence must
be construed in the light most favorable to the party opposing summary judgment”);
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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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B.

Sealing Motions
“Historically, courts have recognized a ‘general right to inspect and copy public records and

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documents, including judicial records and documents.’” 31 Accordingly, when considering a

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sealing request, “a ‘strong presumption in favor of access’ is the starting point.” 32 Parties seeking

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to seal judicial records relating to dispositive motions bear the burden of overcoming the
presumption with “compelling reasons” that outweigh the general history of access and the public
policies favoring disclosure. 33
Records attached to nondispositive motions, however, are not subject to the strong

United States District Court
For the Northern District of California

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presumption of access. 34 Because the documents attached to nondispositive motions “are often

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unrelated, or only tangentially related, to the underlying cause of action,” parties moving to seal

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must meet the lower “good cause” standard of Rule 26(c). 35 As with dispositive motions, the

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standard applicable to nondispositive motions requires a “particularized showing” 36 that “specific

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prejudice or harm will result” if the information is disclosed. 37 “Broad allegations of harm,

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unsubstantiated by specific examples of articulated reasoning” will not suffice. 38 A protective

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Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (on “summary
judgment the inferences to be drawn from the underlying facts” must “be viewed in the light most
favorable to the party opposing the motion” (citations and quotations omitted)).
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Kamakana v. City & County of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006)
(quoting Nixon v. Warner Commc’ns, Inc., 435 U.S. 589, 597 & n.7 (1978)).

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Id. (quoting Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1122, 1135 (9th Cir. 2003)).

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Id. at 1178-79.

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See id. at 1180.

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Id. at 1179 (internal quotations and citations omitted).

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Id.

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Phillips ex rel. Estates of Byrd v. Gen. Motors Corp., 307 F.3d 1206, 1210-11 (9th Cir. 2002);
see Fed. R. Civ. P. 26(c).
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Beckman Indus., Inc. v. Int’l Ins. Co., 966 F.2d 470, 476 (9th Cir. 1992).
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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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order sealing the documents during discovery may reflect the court’s previous determination that

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good cause exists to keep the documents sealed, 39 but a blanket protective order that allows the

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parties to designate confidential documents does not provide sufficient judicial scrutiny to

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determine whether each particular document should remain sealed. 40

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In addition to making particularized showings of good cause, parties moving to seal
documents must comply with the procedures established by Civ. L.R. 79-5. Pursuant to

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For the Northern District of California

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Civ. L.R. 79-5(b), a sealing order is appropriate only upon a request that establishes the document
is “sealable,” or “privileged or protectable as a trade secret or otherwise entitled to protection under

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the law.” “The request must be narrowly tailored to seek sealing only of sealable material, and

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must conform with Civil L.R. 79-5(d).” 41 “Within 4 days of the filing of the Administrative

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Motion to File Under Seal, the Designating Party must file a declaration as required by subsection

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79-5(d)(1)(A) establishing that all of the designated material is sealable.” 42

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III. DISCUSSION
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In the January 15 motion for partial summary judgment, Western Digital offers two grounds

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for finding that its testers do not infringe claims from the ’145 patent. Western Digital first argues

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that its testers do not infringe independent claim 1 (and claims 3-7, which depend on claim 1)

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See Kamakana, 447 F.3d at 1179-80.

See Civ. L.R. 79-5(d)(1)(A) (“Reference to a stipulation or protective order that allows a party to
designate certain documents as confidential is not sufficient to establish that a document, or
portions thereof, are sealable.”).
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Civ. L.R. 79-5(b). In part, Civ. L.R. 79-5(d)(1) requires the submitting party to attach a
“proposed order that is narrowly tailored to seal only the sealable material” which “lists in table
format each document or portion thereof that is sought to be sealed” and an “unredacted version of
the document” that indicates “by highlighting or other clear method, the portions of the document
that have been omitted” from the redacted version.
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Civ. L.R. 79-5(e)(1). The Civil Local Rules have recently been amended shortening the time
available to the designating party to file a supporting declaration from seven days to four days. As
this rule change was only recently implemented the court applies the prior form of Civ. L.R. 79-5
for the purposes of this order.
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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

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because Western Digital’s testers do not include all of the components that the court identified as

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the requisite structure in its claim construction. The court construed the means-plus-function term

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in claim 1(f), “second feedback means,” to require as its structure “the read element of magnetic

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head and servo analyzer, including read amplifier, detector, analog to digital converter and

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averager.” 43 Western Digital asserts that its testers do not have an analog to digital converter

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(“ADC”) or an averager and thus do not infringe.

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Western Digital next argues that its testers do not infringe claim 11 (and claims 12-13 and

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For the Northern District of California

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15-16, which depend on claim 11) because the testers do not calculate a “ratio of servo burst

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signals” to “determine the position of the said magnetic head with respect to said magnetic disk” as

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required by claim 11. 44 Western Digital claims its testers instead use an analog subtractor that

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subtracts the amplitude of one servo burst from the other and adjusts the head if the difference is

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greater than zero. The ’145 patent, in contrast, describes calculating a ratio from the two servo

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bursts – in other words, dividing rather than subtracting.
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In its July 23 motion for partial summary judgment, Western Digital offers two additional

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arguments that its testers do not infringe claims 1 and 3-7 of the ’145 patent. Western Digital

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argues that the testers do not have a detector, an ADC, and an averager in the sequence that the

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court provided in its claim construction and as identified in the patent’s specification. Western

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Digital also argues that its testers do not have the detector described by the specification of the

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’145 patent.

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Rather than address Western Digital’s arguments motion-by-motion, the court instead
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considers first all of Western Digital’s arguments regarding claims 1 and 3-7 before turning to its
argument regarding claims 11-13 and 15-16.

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Docket No. 224 at 53.

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Docket No. 131-3, Ex. B at 9–10.

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1.

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Noninfringement of Claims 1 and 3-7

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Within the ten briefs proffered by the parties on these claims, 45 the parties have advanced

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numerous arguments regarding whether GTE has offered sufficient evidence to support its claim

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that Western Digital’s testers infringe claims 1 and 3-7 of the ’145 patent. All of these arguments

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center on claim 1(f), the means-plus-function term that the court construed as requiring in part a

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servo analyzer that includes a read amplifier, a detector, an ADC, and an averager. Western Digital

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United States District Court
For the Northern District of California

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argues that its testers do not have a servo analyzer that includes an averager, a detector, and an
ADC and, even if the testers contain the components, the components do not appear in the
sequence that the court identified.

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GTE counters that Western Digital’s testers have a structure for performing the “providing
feedback” function that is equivalent to the structure disclosed in the patent, including an ADC.
GTE offers its expert, Joshua Phinney (“Phinney”), in support of its claim that Western Digital’s

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testers have a read head that qualifies as the read element and a preamplifier that qualifies as a read
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amplifier. Phinney claims that the DCT-400 tester’s M9 servo demodulator “contains the detector

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and averager.” 46 According to Phinney, the M9 servo box has “two bandpass filters and two

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Analog Devices AD8361ARM TruPwr Detectors” that serve as the “detectors.” 47 The bandpass

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filters “are separately centered on the frequency of the servo bursts” and the “output of each

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The briefs at issue: (1) Docket No. 131 (Western Digital’s January 15 Motion for Partial
Summary Judgment of Non-Infringement (“MPSJ”)), (2) Docket No. 137 (GTE’s opposition to the
January 15 MPSJ), (3) Docket No. 144 (Western Digital’s Reply to the January 15 MPSJ),
(4) Docket No. 146 (GTE’s supplemental opposition to the January 15 MPSJ), (5) Docket No. 174
(Western Digital’s supplemental reply to the January 15 MPSJ), (6) Docket No. 222
(GTE’s Second Supplemental Opposition to the January 15 MPSJ), (7) Western Digital’s second
supplemental reply to the January 15 MPSJ, (8) Docket No. 235 (Western Digital’s July 23 MPSJ),
(9) Docket No. 263 (GTE’s opposition to the July 23 MPSJ), and (10) Docket No. 278
(Western Digital’s reply to the July 23 MPSJ).
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Docket No. 263-1, Ex. 8 at 16.

47

Id.

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1

bandpass filter is provided as an input to a respective one of the AD8361ARM Detectors.” 48

2

Phinney further explains that the AD8361ARM Detector “is a mean-responding power detector

3

with an output signal that is proportional to the root-mean-squared (rms) value of the input signal,”

4

which, according to Phinney, provides the same type output value as the averager described in the

5

‘145 Patent. 49 In other words, the AD8361ARM Detector (an RMS detector) is an averager.

6

Phinney also states the structure performing the “providing feedback” function includes an

7
8

United States District Court
For the Northern District of California

9

ADC that is located on a separate board from the M9 servo box. According to Phinney, the board
with the ADC is inserted into a PC running Microsoft Windows that controls the tester. 50 As

10

Phinney describes the function, the servo analyzer “provides two outputs, one analog and one

11

digital,” which are both “representative of the same signal, namely, one sample of the relative

12

magnitude of the servo bursts (the difference A-B, called the PES, or position error signal).” 51 The

13
14

digital representation “is generated by ADC channels” on the board and “is accessible by control
software on the spinstand PC.” 52 The analog representation, on the other hand, “is provided to the

15
16

controller portions of the M9 servo box.” 53 According to Phinney, the position controller includes

17

both the PC that receives the digital output and the M9 servo box that receives the analog output. 54

18

The digital output is stored in the PC’s memory. 55 The ADC in the board in the PC also apparently

19

digitizes the position error signal (i.e. the relative magnitude of the servo bursts, or difference

20
48

Id.

49

Id.

50

Id. at 17.

51

Id.

52

Id.

53

Id.

54

Id.

55

Id.

21
22
23
24
25
26
27
28

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1
2

A-B). 56 The PC uses “pulse timing circuitry within the M9, and synchronized with the spindle
encoder” to establish the “PES sampling window.” 57

3

GTE also points to a test in which the connection between the M9 servo box and the ADC

4

on the PC was cut. Phinney states that as a result of cutting the line, the second feedback function

5

stopped working and an error message appeared. 58 According to GTE, this test reveals that the

6

ADC is part of the structure providing the second feedback. GTE also asserts that an analysis of

7
8

the tester source code revealed that the ADC is part of the second feedback function.
According to GTE, this evidence is at least sufficient to raise a triable issue of fact

United States District Court
For the Northern District of California

9
10

regarding whether Western Digital’s testers have a structure that performs the function of

11

claim 1(f) in the way that the ’145 patent describes and with the same result. GTE suggests that

12

Western Digital’s arguments regarding the function of each component and the sequence of the

13
14

components impermissibly converts the components of the structure into additional claim
limitations. GTE argues that such a component-by-component analysis is erroneous.

15
GTE has a point. “Literal infringement of a § 112, ¶ 6 limitation requires that the relevant

16
17

structure in the accused device perform the identical function recited in the claim and be identical

18

or equivalent to the corresponding structure in the specification.” 59 “Functional identity and either

19

structural identity or equivalence are both necessary.” 60 An analysis of structural equivalence

20

under Section 112(f), like the doctrine of equivalents, “requires a determination of whether the

21

‘way’ the assertedly substitute structure performs the claimed function, and the ‘result’ of that

22
23
56

Id. at 18.

57

Id.

58

See Docket No. 262 at ¶¶ 32-33.

59

Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999).

60

Id.

24
25
26
27
28

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1

performance, is substantially different from the ‘way’ the claimed function is performed by the

2

‘corresponding structure, acts, or materials described in the specification,’ or its ‘result.’” 61 Unlike

3

a doctrine of equivalents analysis, a structural equivalence argument requires identity of

4

functions. 62

5
6
7
8

United States District Court
For the Northern District of California

9

But a determination of structural equivalence does not require a component-by-component
analysis. 63 “The individual components, if any, if an overall structure that corresponds to the
claimed function are not claim limitations.” 64 “Rather, the claim limitation is the overall structure
corresponding to the claimed function.” 65 Accordingly, “a claim limitation written in § 112, ¶ 6

10

form, like all claim limitations, must be met, literally or equivalently, for infringement to lie” and

11

thus “such a limitation is literally met by structure, materials, or acts in the accused device that

12

perform the claimed function in substantially the same way to achieve substantially the same

13

result.” 66

14
As GTE rightly points out, the court’s inquiry is not necessarily limited to whether Western
15
16

Digital’s testers include each of the components of the structure disclosed in the patent but whether

17

Western Digital’s testers have a structure that performs the function of claim 1(f) in the same way

18

with the same result. In other words, Western Digital’s testers could literally infringe the

19

’145 patent if the testers include a structure that provides “feedback for determining the position of

20

said magnetic head” using “servo burst signals” in substantially the same way with substantially

21
22
61

Id.

62

See id.

63

Id. at 1267-68.

64

Id. at 1268.

65

Id.

66

Id.

23
24
25
26
27
28

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Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1
2

the same result as the “read element and servo analyzer, including read amplifier, detector, analog
to digital converter and averager.”

3

Western Digital replies that GTE’s argument may state the law correctly but GTE is

4

offering for the first time in its papers a structural equivalents theory of infringement, one that was

5

not included in its infringement contentions or in GTE’s expert report. According to

6

Western Digital, GTE is foreclosed from asserting any theories that are inconsistent with its

7
8

infringement contentions.
The court does not find GTE’s infringement contentions to be so narrowly described that

United States District Court
For the Northern District of California

9
10

GTE’s current theory of infringement – that the structure for claim 1(f) includes an ADC on a

11

different board than the M8 and M9 servo decoders and that the RMS suffices for the detector and

12

the averager – is inconsistent with its contentions. GTE’s contentions are broadly worded,

13

asserting that the “structures in the EH-300 that perform the second feedback means include

14
components of the M8 servo decoder and control box” and that the “structures in the DCT-400 that
15
16

perform the second feedback means include components of the M9 servo decoder and control

17

box.” 67 As GTE points out, a theory that includes components not in the M8 or M9 decoders is

18

consistent with these contentions.

19
20
21

Western Digital highlights a statement in GTE’s opposition to Western Digital’s
July 23 motion for partial summary judgment that Western Digital asserts is an admission that the
RMS detector is a technology developed after the issuance of the ’145 patent. GTE stated that “at

22
the time that the application for the ’145 patent was filed, acceptable integrated circuit RMS
23
24
25

detectors like those used in the Accused Products were not commercially available.” 68 Western
Digital also points to a statement by Phinney in his declaration that RMS detectors are

26
67

Docket No. 260, Ex. 1 at 16, 19.

68

Docket No. 278 at 13.

27
28

17
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1

“technological advances.” 69 Western Digital argues that, given these statements, GTE concedes

2

that an RMS detector is an after-arising technology that cannot satisfy a structural equivalent

3

theory of literal infringement.

4
5
6
7
8

United States District Court
For the Northern District of California

9
10

Western Digital is right that a “structural equivalent under § 112 must have been available
at the time of the issuance of the claim.” 70 “An equivalent structure or act under § 112 cannot
embrace technology developed after the issuance of the patent because the literal meaning of a
claim is fixed upon its issuance.” 71 “An ‘after arising equivalent’ infringes, if at all, under the
doctrine of equivalents.” 72 Despite the similarity in the analyses, the doctrine of equivalents is
distinct from structural equivalents for means-plus-function claims.

11

But depending on the nature of the structural equivalents and doctrine of equivalents

12

theories, the mistaken assertion of one for the other is not necessarily fatal to a claim. 73 “Both

13

equivalence analyses, after all, apply similar analyses of insubstantiality of the differences.” 74 If

14
“an accused product or process performs the identical function and yet avoids literal infringement
15
16

for lack of a § 112, ¶ 6 structural equivalent, it may well fail to infringe the same functional

17

element under the doctrine of equivalents.” 75 Likewise, when “there is identify of function and no

18

after-arising technology, a means-plus-function claim element that is found to be infringed only

19
20
21

69

Docket No. 262 at ¶ 10 n.2.

22

70

Al-Site Corp. v. VSI Intern. Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999).

23

71

Id.

24

72

Id.

25

73

See id. at 1321.

26

74

Id. (internal quotations omitted).

27

75

Id. at 1322.

28

18
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1

under the doctrine of equivalents . . . is also literally present in the accused device.” 76 Given this

2

overlap in the legal analyses between doctrine of equivalents and structural equivalents, GTE’s

3

mistaken assertion of one theory for the other, more appropriate theory, while hardly a model of

4

clarity, is not fatal to GTE’s claim.

5

2.

6

Noninfringement of Claims 11-13 and 15-16

Western Digital asserts that its testers do not calculate the ratio of the servo bursts as

7
8

United States District Court
For the Northern District of California

9

required by the ’145 patent. The testers instead use subtraction to compare the servo bursts and
thereby determine the position of the head with respect to the offset from the track center line.

10

According to Western Digital, as a result, its testers do not infringe claim 11, a method claim, or

11

claims 12-13 and 15-16, which depend on claim 11.

12
13

GTE does not dispute that Western Digital’s testers do not use a ratio to compare the servo
burst amplitudes. GTE in fact concedes that Western Digital’s testers instead use an analog

14
subtractor. GTE posits in its supplementary opposition that Western Digital interprets the term
15
16

“ratio” too narrowly to require only division of the servo burst signals, rather than a general

17

comparison between the signals. GTE also offers evidence that Western Digital’s testers infringe

18

under the doctrine of equivalents.

19

A reasonable jury could find that a comparison of the accused products meets the ratio

20

requirement of the claims. As GTE’s expert opines, “a given offset” must only be the result of a

21

“mathematical” operation. 77 Whether Western Digital’s testers practice this claim limitation under

22
a doctrine of equivalents theory is a genuine dispute of fact that requires jury determination.
23
24
25
26
76

Id.

77

Docket No. 260-1, ¶ H, Ex. 8.

27
28

19
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

IV. SEALING ANALYSIS

1
2

A.

Western Digital’s Motion for Partial Summary Judgment of Noninfringement

3

Western Digital seeks leave to file Exhibits to the Declaration of Michelle P. Woodhouse

4

(“the Woodhouse Declaration”) under seal. 78 Specifically, Western Digital asks the court to seal

5
6

Exhibits B, D, and E under seal because those documents contain its own confidential information.
The court will address these requests in turn. Western Digital also asks the court to seal Exhibits F

7
8

and G to the Woodhouse Declaration, because they contain GTE’s confidential information.
1.

United States District Court
For the Northern District of California

9

Exhibit B, D and E to the Woodhouse Declaration

Western Digital requests leave to file Exhibit B, D, and E under seal. Western Digital

10
11

represents that Exhibit B, D, and E contain “confidential information about the structure and

12

function of the Accused Products” 79 and makes a blanket assertion that the “parties’ confidentiality

13
14

interest therefore overcomes the right of public access to the record, as a substantial probability
exists that the parties’ overriding confidentiality interest will be prejudiced if the record is not

15
16

sealed.” 80 Western Digital’s representations do not constitute a particularized showing that specific

17

prejudice or harm will result if the information is disclosed that satisfies the compelling reasons

18

standard. Western Digital’s request with respect to Exhibit B, D, and E is DENIED.

19

2.

20

Western Digital requests leave to file Exhibits F and G under seal because they have been

21
22

Exhibits F and G to the Woodhouse Declaration

designated “Highly Confidential – Attorney’s Eyes Only” and “Confidential Information” by GTE
pursuant to the protective order in this case. 81

23
24
78

See Docket No. 234.

79

Docket No. 234-1 at ¶ 2.

80

Id. at ¶ 3.

81

Docket No. 234 at 2.

25
26
27
28

20
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

GTE filed a timely declaration in support of Western Digital’s sealing motion where it

1
2

seeks leave from the court to file Exhibits F and G under seal. These documents purportedly

3

contain “confidential technical information relating to operation of GTE’s products.” 82 GTE has

4

not made a particularized showing that specific prejudice or harm will result if the information is

5
6

disclosed that satisfies the compelling reasons standard. Western Digital’s request with respect to
Exhibit F and G is DENIED.

7
B.

GTE’s Opposition to Western Digital’s Motion for Partial Summary Judgment of
Noninfringement

9
United States District Court
For the Northern District of California

8

GTE requests leave to file documents under seal related to its opposition to

10

Western Digital’s motion for partial summary judgment presently before the court. 83 GTE

11

represents that (1) Exhibits 34-38 to the the Kolassa Declaration contain confidential information

12
designated by GTE as “Confidential” and (2) GTE’s opposition to Western Digital’s motion for
13
14

partial summary judgment, the Phinney Declaration, Exhibits 3-6, 8, 12-28, 31-33 and 39-40 to the

15

Kolassa Declaration, and the Rogaski Declaration as well as Exhibits 1 and 2 to the Rogaski

16

Declaration contain confidential information disclosed by Western Digital pursuant to the

17

protective order in this case. 84 These documents are considered below.

18

1.

19
20
21

Exhibits 34-38 to the Kolassa Declaration

GTE seeks leave to file Exhibits 34-38 to the Kolassa Declaration under seal. These
exhibits contain information designated by GTE as “Confidential.” 85 GTE argues Exhibits 34-36

22
82

23

Docket No. 250 at ¶¶ 6-7.

83

24
25
26

See Docket Nos. 260 and 262 (requesting leave to file GTE’s Opposition to Western Digital’s
Motion for Partial Summary Judgment on Non-Infringement, the supporting declaration of Joshua
W. Phinney (“the Phinney Declaration”), Exhibits 3-6, 8, 12-28 and 31-40 to the supporting
declaration of Scott E. Kolassa (“the Kolassa Declaration”), and the Declaration of Anne Rogaski
(“the Rogaski Declaration”) as well as Exhibits 1 and 2 to the Rogaski Declaration under seal).
84

See Docket No. 262 at 7.

85

See id.

27
28

21
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1

and 38 contain “confidential and proprietary technical information of a non-party,

2

[Texas Instruments], to this action.” GTE has not made a particularized showing that specific

3

prejudice or harm will result if the information is disclosed that satisfies the compelling reasons

4

standard. The court also notes that Texas Instruments has not filed a sealing motion supporting the

5

sealing of these documents. Western Digital’s request with respect to Exhibit 34-36 and 38 is

6

DENIED.

7
GTE also argues that Exhibit 37 “contains sensitive information of GTE, and of third

8

United States District Court
For the Northern District of California

9

parties, whose disclosure would harm GTE’s competitive standing.” 86 After reviewing GTE’s

10

representation and the exhibit itself, the court is convinced that GTE has met the compelling

11

reasons standard as to Exhibit 37. GTE’s request to seal Exhibit 37 to the Kolassa Declaration is

12

GRANTED.

13

2.

15

GTE’s Opposition to Western Digital’s Motion for Partial Summary Judgment
of Noninfringement, the Phinney Declaration, Exhibits 3-6, 8, 12-28, 31-33, and
39-40 to the Kolassa Declaration, and the Rogaski Declaration as well as
Exhibits 1 and 2 to the Rogaski Declaration

16

Western Digital filed two timely declarations supporting GTE’s sealing motions. 87 In those

14

17

declarations Western Digital acknowledges that sealing the Rogaski Declaration is not warranted.

18

Western Digital represents that GTE’s opposition to Western Digital’s motion for partial summary

19

judgment and the Phinney Declaration contain “detailed descriptions and analyses of the design

20
21
22
23
24

and function of Western Digital’s devices and processes, and technical details of Western Digital’s
technology that were disclosed under the parties’ Protective Order.” 88 With regard to Exhibits 3-6,
8, 12-28, 31-33, and 39-40 to the Kolassa Declaration and Exhibits 1 and 2 to the Rogaski
Declaration, Western Digital makes a blanket assertion that these documents contain details about

25
86

Docket No. 262-1 at ¶ 4.

87

See Docket Nos. 271 and 272.

88

Docket No. 272 at ¶¶ 34, 36.

26
27
28

22
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1

the structure, function and/or development of the Western Digital accused products. 89

2

Western Digital claims its “confidentiality interest therefore overcomes the right of public access to

3

the record, as a substantial probability exists that the parties’ overriding confidentiality interest will

4

be prejudiced if the record is not sealed.” 90 Western Digital has not made a particularized showing

5
6

that specific prejudice or harm will result if the information is disclosed that satisfies the
compelling reasons standard. GTE’s request with respect to its opposition to Western Digital’s

7
8

United States District Court
For the Northern District of California

9

motion for partial summary judgment, the Phinney Declaration, Exhibits 3-6, 8, 12-28, 31-33, and
39-40 to the Kolassa Declaration, and the Rogaski Declaration as well as Exhibits 1 and 2 to the

10

Rogaski Declaration is DENIED.

11

C.

Western Digital’s Reply in support of its Motion for Partial Summary Judgment of
Non-infringement

12
Western Digital requests leave to file documents under seal related to its reply in support of
13
14

its motion for partial summary judgment presently before the court. 91 Western Digital represents

15

that (1) Exhibits B and C to the Second Woodhouse Declaration and Exhibits N-P to the Frenkel

16

Declaration contain Western Digital’s confidential information that must be filed under seal

17

pursuant to the parties’ Protective Order in this action and (2) Exhibits D and E to the Woodhouse

18

Declaration contain information designated by GTE as “Highly Confidential – Attorney Eyes Only

19

and Confidential Information” pursuant to the protective order in this case. 92 The court considers

20
21

each group of exhibits in turn.

22
89

See Docket Nos. 271 and 272.

90

Id.

23
24
91

25
26
27

See Docket No. 276 (requesting leave to file Exhibits B-E to the Declaration of Michelle P.
Woodhouse (“the Second Woodhouse Declaration”) in support of Western Digital’s reply and
supplemental reply to its motions for partial summary judgment of noninfringement and
Exhibits N-P to the supporting Declaration of Richard G. Frenkel (“the Frenkel Declaration”)
under seal).
92

28

See Docket No. 276 at 2.

23
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT

1.

1
2

Exhibits B and C to the Woodhouse Declaration and Exhibits N-P to the
Frenkel Declaration

Western Digital requests leave to file Exhibits B and C to the Woodhouse Declaration and

3
Exhibits N-P to the Frenkel Declaration under seal. Western Digital represents that Exhibits B and
4
5

C to the Woodhouse Declaration contain “confidential information about the structure and function

6

of the Accused Products.” 93 Exhibits N-P to the Frenkel Declaration are letters from counsel for

7

GTE to counsel for Western Digital “in regards to the inspection of the Accused Products and

8

contain details about the structure, function and operation of the Accused Products.” 94 As above,

United States District Court
For the Northern District of California

9
10

Western Digital makes the same general, blanket assertion that its “confidentiality interest
therefore overcomes the right of public access to the record, as a substantial probability exists that

11
12
13

the parties’ overriding confidentiality interest will be prejudiced if the record is not sealed.” 95
Again, Western Digital’s request does not satisfy the compelling reasons standard.

14

Western Digital’s request with respect to Exhibits B and C to the Woodhouse Declaration and

15

Exhibits N-P to the Frenkel Declaration is DENIED.

16

2.

17

Exhibits D and E to the Woodhouse Declaration

GTE filed a timely declaration in support of Western Digital’s sealing motion where it

18
acknowledged that sealing is not warranted with regard to Exhibit D to the Woodhouse Declaration
19
20
21

because the particular deposition transcript excerpted in the Exhibit does not contain any
confidential and proprietary information of GTE. 96 GTE does ask the court to seal Exhibit E to the

22
23
24

93

Docket No. 283 at ¶ 2.

25

94

Id.

26

95

Docket No. 283 at ¶ 3.

27

96

See Docket No. 293 at ¶ 4.

28

24
Case No.: 5:11-cv-03786-PSG
ORDER RE: WESTERN DIGITAL’S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON
NONINFRINGEMENT