Atlas IP, LLC v. Medtronic, Inc., et al

Filing 258

ORDER granting in part and denying in part 139 Motion for Summary Judgment. Signed by Judge Cecilia M. Altonaga on 10/15/2014. (ps1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
CASE NO. 13-23309-CIV-ALTONAGA
ATLAS IP, LLC,
Plaintiff,
v.
MEDTRONIC, INC., et al.,
Defendants.
________________________/
ORDER
THIS CAUSE came before the Court on Plaintiff, Atlas IP, LLC’s (“Atlas[’s]”) Motion
for Summary Judgment that the Asserted Claims of the ’734 Patent Are Not Invalid (“Motion”)
[ECF No. 139], filed August 4, 2014, with a Proposed Statement of Undisputed Facts . . .
(“Plaintiff’s SMF”) [ECF No. 140] and a Declaration of George C. Summerfield (“Summerfield
Declaration”) [ECF No. 141] containing documents supporting the Motion.

Defendants,

Medtronic, Inc.; Medtronic USA, Inc.; and Medtronic Minimed, Inc. (collectively, “Medtronic”),
filed a response in Opposition to Atlas’s Motion for Summary Judgment . . . (“Response”) [ECF
No. 160], accompanied by a Response to Atlas’s Statement of Undisputed Facts (“Defendants’
SMF”) [ECF No. 161]. Atlas filed a Reply . . . (“Reply”) [ECF No. 184]. On September 11,
2014, the Court heard oral argument on the Motion. (See [ECF No. 213]). The Court has
carefully considered the parties’ written submissions, oral arguments, and applicable law.

CASE NO. 13-23309-CIV-ALTONAGA
I. BACKGROUND1
Atlas seeks a summary judgment finding the asserted claims of United States Patent
Number 5,371,734, titled “Medium access control protocol for wireless network” (the “‘734
Patent”) [ECF No. 63-1], are not invalid.2 (Mot. 1).
Claim 21 requires the following limitations:
A communicator for wirelessly transmitting frames to and receiving frames from
at least one additional communicator in accordance with a predetermined medium
access control protocol, the communicators which transmit and receive the frames
constituting a Group, each communicator including a transmitter and a receiver
for transmitting and receiving the frames respectively, the medium access control
protocol controlling each communicator of the Group to effect pre-determined
functions comprising:
designating one of the communicators of the Group as a hub and the
remaining the [sic] communicators of the Group as remotes [the “designating”
limitation];
the hub establishing repeating communication cycles, each of which has
intervals during which the hub and the remotes transmit and receive frames
[the “establishing” limitation”];
the hub transmitting information to the remotes to establish the
communication cycle and a plurality of predeterminable intervals during each
communication cycle, the intervals being ones when the hub is allowed to
transmit frames to the remotes, when the remotes are allowed to transmit
frames to the hub, and when each remote is expected to receive a frame from
the hub [the “transmitting” limitation];
the remotes powering off their transmitters during times other than those
intervals when the remote is allowed to transmit frames to the hub, by using
the information transmitted from the hub;
the remotes powering off their receivers during times other than those
intervals when the remote is expected to receive a frame from the hub, by
using the information transmitted from the hub;
A more detailed factual background is available in the October 8, 2014 Order (“Oct. 8 Order”) [ECF No.
243] granting in part and denying in part Medtronic’s Motion for Summary Judgment.

1

The Court’s analysis pertains to Claim 21, the only remaining claim in the case. (See generally Oct. 8
Order).

2

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CASE NO. 13-23309-CIV-ALTONAGA

the hub transmitting two frames containing information to establish the
plurality of predeterminable intervals during each communication cycle, the
second frame containing the information to established [sic] the plurality of
predeterminable intervals occurring before the intervals in which the remotes
are allowed to transmit frames to the hub [the “two frames” limitation].
(’734 Patent, col. 50, ll. 39–col. 51, ll. 9 (“Claim 21”) (alterations added)).3 Atlas argues there
are no disputed facts Claim 21 is not anticipated, is not obvious, and does not lack written
support or enablement. (See generally Mot.). The Court addresses each of Atlas’s invalidity
arguments in turn.
II. LEGAL STANDARDS
Summary judgment is be rendered if the pleadings, the discovery and disclosure materials
on file, and any affidavits show that there is no genuine issue as to any material fact and that the
movant is entitled to judgment as a matter of law. See FED. R. CIV. P. 56(a), (c). “[A] patent is
presumed valid, and this presumption exists at every stage of the litigation . . . . [W]here the
challenger fails to identify any persuasive evidence of invalidity, the very existence of the patent
satisfies the patentee’s burden on the validity issue.” Canon Computer Sys., Inc. v. Nu-Kote
Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998) (alterations added; citations omitted).
III. ANALYSIS
Atlas asserts it is entitled to summary judgment regarding Medtronic’s invalidity
challenges, including anticipation under 35 U.S.C. section 102; obviousness under 35 U.S.C.
section 103; and lack of written description or enablement under 35 U.S.C. section 112. (See
Mot. 1).

The Court construed the ’734 Patent in the related case Atlas IP, LLC v. St. Jude Medical, Inc., No. 14cv-21006-CMA (S.D. Fla. July 30, 2014) [ECF No. 73] (“July 30 Claim Construction Order”).

3

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CASE NO. 13-23309-CIV-ALTONAGA
A. Anticipation
Atlas argues Claim 21 of the ’734 Patent is not invalid as anticipated. (See Mot. 3–5;
Reply 1–5). A patent is valid if it is not anticipated by prior art in the area. See 35 U.S.C. §
102(a). Invalidation based on anticipation “requires a showing that each element of the claim at
issue, properly construed, is found in a single prior art reference.” Zenith Elecs. Corp. v. PDI
Commc’n. Sys., Inc., 522 F.3d 1348, 1363 (Fed. Cir. 2008). A “prior art reference must disclose
each and every feature of the claimed invention, either explicitly or inherently.” Eli Lilly & Co.
v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375–76 (Fed. Cir. 2006) (citing Glaxo Inc. v.
Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995)).

“Anticipation requires clear and

convincing proof that a single prior art reference ‘not only disclose[s] all of the elements of the
claim within the four corners of the document, but . . . also disclose[s] those elements arranged
as in the claim.’” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,
1351 (Fed. Cir. 2013) (alterations in original) (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1369 (Fed. Cir. 2008)). Anticipation is a question of fact. Beckson Marine, Inc. v.
NFM, Inc., 292 F.3d 718, 723 (Fed. Cir. 2002) (citation omitted).
The parties’ anticipation arguments relate to the establishing limitation of the ’734 Patent,
described as “the hub establishing repeating communication cycles, each of which has intervals
during which the hub and the remotes transmit and receive frames.”4 (Mot. 4 (citing ’734 Patent,
col. 50, ll. 52–54)). Atlas argues the prior art references identified by Medtronic’s expert, Mark
Lanning (“Lanning”), do not anticipate Claim 21 of the ’734 Patent. (See Mot. 1). According to
The parties’ briefing related to the July 30 Claim Construction Order did not specifically request claim
construction of the establishing limitation, including the phrase “each of which,” a phrase now disputed.
Regarding this limitation, the Court construed the words “the hub establishing repeating communication
cycles” to mean “the hub defining in advance the starting time and duration for each repeating
communication cycle” (July 30 Claim Constr. Order 12), with each communication cycle being “a series
of intervals for outbound and inbound communications” (id. 10 n.3).
4

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CASE NO. 13-23309-CIV-ALTONAGA
Atlas, the Patent requires prior art references disclose the establishing limitation to anticipate
Claim 21. (See Mot. 4).
As a preliminary matter, the parties dispute how the establishing limitation should be
defined. Atlas contends the plain meaning of the establishing limitation is “each communication
cycle includes at least one interval in which at least one remote transmits a frame to the hub.”
(Reply 2). Medtronic insists Atlas makes a new claim construction argument by improperly
modifying the claim language with the term “must” to convey “each communication cycle
having intervals during which the hub and remotes must transmit and receive frames.” (Resp. 7
(emphasis in original; citation and internal quotation marks omitted)). Courts generally give
claim terms their plain and ordinary meaning. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 723
F.3d 1363, 1373 (Fed. Cir. 2013) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005)).
The Court previously stated, “the hub defines in advance the starting time and duration
for each repeating communication and transmits to the remotes the information necessary to
know these starting times and durations. Each communication cycle has intervals during which
the hub and the remotes transmit and receive frames.” (July 30 Claim Constr. Order 14 (citations
and internal quotation marks omitted)). In other words, each communication cycle has intervals
(specifically, two or more intervals) (see id. 13–14), and “the hub and the remotes transmit and
receive frames” during the intervals (’734 Patent, col. 50, ll. 53–54).

The plain meaning

necessitates the hub and the remotes transmit and receive frames during each communication
cycle, not that the hub and the remotes simply may do so during a communication cycle as
Medtronic argues. (See Resp. 7).
A prior art reference needs to disclose each claim limitation, including the establishing

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CASE NO. 13-23309-CIV-ALTONAGA
limitation discussed. Turning to the prior art references at issue, Medtronic’s expert opines the
following nine references anticipate the asserted claims of the ’734 Patent (see Mot. 2 (citing
Summerfield Decl., Ex. B, Expert Report of Mark Lanning Regarding Invalidity . . . (“Lanning
Report”), June 9, 2014 [ECF No. 141-2])):
Prior Art References
Patent/Reference

United States
Patent
Number
5,297,144

Date

1

Sheldon L. Gilbert, et al.,
“Reservation-based Polling
Protocol for a Wireless Data
Communications Network”
(“Gilbert”) [ECF No. 14110]

2

Alfred B. Wieczorek, et al.,
“Energy Saving Protocol for
a TDM Radio”
(“Wieczorek”) [ECF No.
141-11]

5,150,361

Sept.
1992

3

Morris A. Moore, “Battery
Saver for a TDM System”
(“Moore”) [ECF No. 141-12]

4,964,121

Oct. 16, 1990 (See Moore, Figure 4a,
Block 300; see also Pl.’s
SMF ¶ 23; Defs.’ SMF ¶
23).

4

Peter J. Mabey, et al.,
“Power Economising in
Multiple User Radio
Systems” (“Mabey”) [ECF
No. 141-13]

5,175,870

Dec.
1992

29, (See Mabey, Figure 2; see
also Pl.’s SMF ¶ 24;
Defs.’ SMF ¶ 24).

5

Brian D. Neve, et al.,
“Communication System”
(“Neve”) [ECF No. 141-14]

4,887,266

Dec.
1989

12, (See
Neve,
Cyclical
repeating time slots; see
also Pl.’s SMF ¶ 25;
Defs.’ SMF ¶ 25).

6

Shigeru Otsuka, “Power
Saving System for TimeDivision Multiple Access
Radiocommunication
Network” (“Otsuka”) [ECF

4,577,315

Mar.
1986

18, (See Otsuka, Figure 5; see
also Pl.’s SMF ¶ 26;
Defs.’ SMF ¶ 26).

6

Mar.
1994

Repeating
Communication Cycle
Identified by Lanning
22, (See Gilbert, Figure 3; see
also Pl.’s SMF ¶ 21;
Defs.’ SMF ¶ 21).

22, (See Wieczorek, Figure 4,
Channels A & B; see also
Pl.’s SMF ¶ 22; Defs.’
SMF ¶ 22).

CASE NO. 13-23309-CIV-ALTONAGA
No. 141-15]
7

Kadathur S. Natarajan, et al.,
“Battery Efficient Operation
of Scheduled Access
Protocol” (“Natarajan”)
[ECF No. 141-16]

5,241,542

Aug.
1993

31, (See Natarajan, Figure 4;
see also Pl.’s SMF ¶ 27;
Defs.’ SMF ¶ 27).

8

Kadathur S. Natarajan, et al.,
“Medium Access Control
Protocol for Wireless LANs
(An Update)” (“Natarajan
article”) [ECF No. 141-17]

N/A

Mar. 9, 1992

9

Richard W. Baker,
“Pacemaker Programmer
with Telemetric Functions”
(“Baker”) [ECF No. 141-18]

4,550,370

Oct. 29, 1985 (See Lanning Dep. 70:2–
5; but see Resp. 15 (citing
Lanning Report 54); see
also Pl.’s SMF ¶ 20;
Defs.’ SMF ¶ 20).

(See Natarajan Article,
Figure 1; see also Pl.’s
SMF ¶ 28; Defs.’ SMF ¶
28).

Atlas stresses each of the prior art references, except the Baker reference, does not disclose the
establishing limitation. (See Mot. 4). Medtronic concedes Lanning stated “[i]t is possible to
have a communication cycle . . . where no frames are sent from the remotes to the hub” in eight
of the nine prior art references. (Pl.’s SMF ¶ 29 (alterations added) (citing Summerfield Decl.,
Ex. M, Oral Deposition Mark Lanning (“Lanning Deposition”), July 17, 2014, 45:19–22 [ECF
No. 141-20]); Defs.’ SMF ¶ 29; see Pl.’s SMF ¶¶ 30–36 (citations omitted); Defs.’ SMF ¶¶ 30–
36). Medtronic does not refute these eight prior art references fail to anticipate the plain
meaning of the establishing limitation — that the hub and the remotes transmit and receive
frames during each communication cycle.5 (See Resp. 6–14; Reply 1–4).
Medtronic’s only argument is a prior art reference need not invalidate under all
embodiments or anticipate all of the time in order to invalidate. (See Resp. 11). Medtronic
compares this case to Upsher-Smith Labs, Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1320–21 (Fed.
5

Medtronic’s Response focuses on claim construction of the establishing limitation.

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CASE NO. 13-23309-CIV-ALTONAGA
Cir. 2005), in which “a prior art composition that optionally includes an ingredient anticipates a
claim for the same composition that expressly excludes that ingredient.”

(Resp. 11 (internal

quotation marks omitted) (quoting Upsher-Smith Labs, Inc., 412 F.3d at 1320–21)). That case,
involving ingredients in a vitamin supplement, is distinguishable. See Upsher-Smith Labs, Inc.,
412 F.3d at 1322 (analyzing whether a vitamin patent that contains every element of the asserted
claim except the limitation, “essentially free of antioxidants” — because it optionally includes
antioxidants — anticipated a vitamin patent that generally excluded antioxidants). Here, the
establishing limitation is a key component of how the technology operates, and the limitation
expressly requires that the hub and the remotes transmit and receive frames during each
communication cycle. (See Reply 4–5). As “[a]nticipation requires a showing that each element
of the claim at issue, properly construed, is found in a single prior art reference[,]” Zenith Elecs.
Corp., 522 F.3d at 1363 (alterations added), Medtronic’s interpretation that a prior art reference
need only disclose “in at least some situations” to anticipate the asserted claim fails to persuade
(Resp. 11). The eight prior art references identified by Medtronic thus do not anticipate each
limitation of Claim 21.
Regarding the ninth Baker prior art reference, Atlas argues Lanning did not identify
repeating communication cycles for the Baker reference. (See Mot. 4). Further, Atlas contends
Lanning failed to identify a medium access control protocol, a required limitation to anticipate
Claim 21. (See id. 3–4). For support, Atlas cites Lanning’s Deposition testimony (see Reply 5):
Q:

What are the communication cycles you’ve identified in Baker?

A:

Baker only identifies at most one cycle. There is [sic] not two cycles
identified by Baker.

(Lanning Dep. 70:2–5 (alteration added)).
Nevertheless, Medtronic argues Lanning stated in his Report “the programmer and
8

CASE NO. 13-23309-CIV-ALTONAGA
pacemaker disclosed in Baker communicate during predeterminable intervals of time in
repeating communication cycles using a switching circuit and a voltage-controlled oscillator.”
(Resp. 15 (emphasis omitted) (quoting Lanning Report 54)). Although Lanning’s Report cites to
certain sections of the Baker Patent in an effort to demonstrate Baker’s claims satisfy the
repeating communication cycle limitation (see Resp. 16 (citing Baker, col. 13, ll. 36–52)),
nothing in those sections of the Patent expressly identifies repeating communication cycles in
Baker (see Baker, col. 13, ll. 36–52).

Lanning’s statement that Baker has repeating

communication cycles seems rather conclusory.

Further, the only evidence in support of

Medtronic’s position is from Lanning’s Report, which Atlas argues is unsworn and cannot be
relied upon in summary judgment. (See Reply 5 (citing Carr v. Tatangelo, 338 F.3d 1259, 1273
n.27 (11th Cir. 2003)). At the September 24 hearing, Medtronic admitted as much.6 (See Sept.
24, 2014 Hr’g Tr. 160:5–20).

As a result, Medtronic has not established a genuine issue of

material fact.7
Thus, even if Baker discloses a medium access control protocol, it does not disclose the
repeating communication cycle limitation. Accordingly, the nine prior art references do not
anticipate each of Claim 21’s limitations, and Atlas is entitled to summary judgment on the
invalidity challenge of anticipation.
B. Obviousness
“An obviousness inquiry assesses ‘the differences between the subject matter sought to
Medtronic stated, “We have cited an unsworn report. I would disagree that we are relying on it. And
that’s our only evidence of that limitation.” (Sept. 24, 2014 Hr’g Tr. 160:7–9). Medtronic did not cite to
other evidence in its briefing or in oral argument regarding the Baker reference.
6

Even if the evidence in Lanning’s Report can be submitted in an admissible form at trial, see Jones v.
UPS Ground Freight, 683 F.3d 1283, 1294–95 (11th Cir. 2012), the inconsistent statements in Lanning’s
Deposition and Report — both made by Medtronic’s own expert — cannot be used to manufacture a
triable issue of fact to avoid summary judgment in favor of Atlas.
7

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CASE NO. 13-23309-CIV-ALTONAGA
be patented and the prior art’ to ascertain whether ‘the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.’” Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 725
(Fed. Cir. 2002) (quoting 35 U.S.C. § 103(a) (1994)). A determination of obviousness considers
the following “underlying factual inquiries”: “‘(1) the scope and content of the prior art; (2) the
level of ordinary skill in the prior art; (3) the differences between the claimed invention and the
prior art; and (4) objective evidence of nonobviousness.’”

Id. at 725–26 (quoting In re

Dembiczak, 175 F.3d 994, 998, (Fed. Cir. 1999)). “Obviousness is a question of law . . .
premised on underlying factual determinations.” Id. at 722 (alterations added; internal and other
citations omitted). “[A] district court properly may grant summary judgment on obviousness or
anticipation only when the underlying factual inquiries present no lingering genuine issues.” Id.
at 723 (alteration added).
Atlas argues the asserted claim is not obvious because eight of the nine prior art
references do not disclose the establishing limitation, and there is no evidence any combination
of references is specifically intended to satisfy this limitation. (See Mot. 5). Medtronic’s
Response does not separately discuss obviousness. Only Lanning’s Report discusses several
“obvious combinations of the prior art” references that Medtronic argues render the asserted
claims invalid. (Lanning Report ¶ 161). The Court, however, does not rely on Lanning’s
unsworn Report.
Even if the Court were to consider Lanning’s Report, the combinations he cites do not
address the establishing limitation. (See id. 66–76). As Atlas observes, “Medtronic does not
dispute that its expert, Mark Lanning, has failed to identify any combination of references that
uniquely satisfies the limitation ‘communication cycles, each of which has intervals during

10

CASE NO. 13-23309-CIV-ALTONAGA
which the hub and the remotes transmit and receive frames.’” (Reply 5). For the same reasons
the nine prior art references do not anticipate Claim 21 of the ’734 Patent, they are not obvious
and no genuine issues of material fact exist precluding summary judgment in favor of Atlas on
the issue of obviousness.
C. Written Description and Enablement
Pursuant to 35 U.S.C. section 112(a), “[t]he specification shall contain a written
description of the invention, and of the manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the same, and shall set forth the best
mode contemplated by the inventor or joint inventor of carrying out the invention.”
(alteration added).

Id.

The statute requires “two separate description requirements: a ‘written

description [i] of the invention, and [ii] of the manner and process of making and using [the
invention].’” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010)
(alterations and emphasis in original) (quoting 35 U.S.C. § 112, ¶ 1). The “written description
requirement [is] separate from enablement . . . .” Id. at 1345. “A determination that a patent is
invalid for failure to meet the written description requirement of 35 U.S.C. [section] 112,
[paragraph one] is a question of fact . . . .” Id. at 1355 (alterations added). “To be enabling, the
specification of a patent must teach those skilled in the art how to make and use the full scope of
the claimed invention without undue experimentation.” ALZA Corp. v. Andrx Pharms., LLC,
603 F.3d 935, 940 (Fed. Cir. 2010) (citation and internal quotation marks omitted). This inquiry
is a question of law based on underlying facts. See id. (citation omitted). Because a patent is
presumed valid, “lack of enablement must be proven by clear and convincing evidence.” Id.
(citations omitted).

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CASE NO. 13-23309-CIV-ALTONAGA
Medtronic argues Atlas’s Motion regarding written description should be denied. (See
Resp. 16).

In particular, Lanning identified the following claim limitations as not being

supported by the specification:
(1) [a] communicator for wirelessly transmitting frames to and receiving frames
from a [sic] least one additional communicator, or communication systems
involving only one remote; (2) designating one of the communicators of the
Group as a hub and the remaining the [sic] communicators of the Group as
remotes; (3) the hub allocating a number of transmission opportunities during at
least one communication cycle which is at least one less in number than the
number of remotes in the Group; (4) the hub establishing repeating
communication cycles, each of which has intervals during which the hub and the
remotes transmit and receive frames; and (5) the hub assigning transmission
opportunities to the remotes.8
(Resp. 16 (alterations in original) (quoting Lanning Report 77–81)).
According to Atlas, “original claims are part of the specification and in many cases will
satisfy the written description requirement.” (Mot. 6 (citing Crown Packaging Tech., Inc. v. Ball
Metal Beverage Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011))).

Atlas stresses

Lanning does not recall whether he considered the original claim language in opining on the
written description requirement. (See id.; Pl.’s SMF ¶ 44; Def.’s SMF ¶ 44). Yet Medtronic
insists “‘[i]f a purported description of an invention does not meet the requirements of the
statute, the fact that it appears as an original claim or in the specification does not save it.’”
(Resp. 16 (alteration added) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968–
69 (Fed. Cir. 2002))). See LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336,
1346 (Fed. Cir. 2005) (“While it is true that an originally filed claim can provide the requisite
written description to satisfy section 112, . . . nothing in claim 21 or the specification constitutes
an adequate and enabling description of all seamless DWTs.” (alteration added; internal citation

8

The Court does not consider the third and fifth limitations (found in Claims 6 and 11), as they are not
applicable to Claim 21 (or the preamble).

12

CASE NO. 13-23309-CIV-ALTONAGA
omitted)). The Federal Circuit has found “a patent can be held invalid for failure to meet the
written description requirement, based solely on the language of the patent specification.” Univ.
Of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927 (Fed. Cir. 2004) (citation omitted). In this
case, that the original claims are included in the specification, without more, is not sufficient to
satisfy the written description requirement. See Enzo Biochem, Inc., 323 F.3d at 968–69.
Medtronic raises two arguments why summary judgment is inappropriate: Atlas fails to
provide any evidence demonstrating the disputed limitations are supported by the ’734 Patent;
and genuine issues of material fact exist as to whether the written description requirement is
satisfied for the asserted claim because the parties’ experts disagree whether the written
description and enablement requirements are satisfied. Medtronic’s reasoning is persuasive.
Beyond stating the limitations were contained in the claims as originally filed in the ’734 Patent,
Atlas does not provide additional support “the disclosure clearly allow[s] persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.” Crown Packaging
Tech., Inc., 635 F.3d at 1380 (alterations in original; internal quotation marks omitted) (quoting
Ariad Pharms., Inc., 598 F.3d at 1351). Although the ’734 Patent is presumed valid, Atlas, as
the moving party, has not sufficiently rebutted Medtronic’s invalidity challenge.
Neither the Lanning Report nor Atlas’s rebuttal expert report of J. Nicholas Laneman
(“Laneman Rebuttal Report”) [ECF No. 160-4], is a sworn report. (See Resp. 19 n.5; Reply 6).
Nonetheless, Medtronic demonstrates a genuine issue of material fact by submitting evidence
that may be supplied in admissible form at trial. Cf. Macuba v. Deboer, 193 F.3d 1316, 1324
n.18 (11th Cir. 1999) (explaining on summary judgment a district court could consider evidence
submitted to establish a genuine issue of material fact where the evidence “could later be given
in admissible form (by the doctor testifying at trial”); see also Jones, 683 F.3d at 1294–95

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CASE NO. 13-23309-CIV-ALTONAGA
(“‘[A] district court may consider a hearsay statement in passing on a motion for summary
judgment if the statement could be reduced to admissible evidence at trial or reduced to
admissible form[,]’” such as having the “declarant testify directly to the matter at trial.”
(alterations added; citations omitted)). The parties’ experts may both testify at trial. Beyond
observing the expert reports are unsworn, neither party has challenged the admissibility of the
expert testimony nor presented any reason why Lanning’s or Laneman’s expert testimony would
not be admissible at trial.
In considering this evidence, the experts disagree about the limitations’ written
descriptions, creating disputed factual issues. (See Resp. 19–20). For example, Lanning and
Laneman dispute the adequacy of the written description for Claim 21’s designating limitation.
(See id. (comparing Lanning Report 79 (“[T]here is no disclosure of a system where the hub and
remote could not serve the alternate function.” (alteration added)), with Laneman Rebuttal
Report 51–52 (“The issue as I understand it is not whether the hub and remote ‘could’ serve
alternate functions, but whether such devices must be able to serve such function . . . . [I]t is clear
that the invention contemplates a ‘hub’ that only functions as a hub . . . . None of the asserted
claims contain these limitations regarding the conversion of a hub to a remote, and vice versa . . .
. As the ‘designating’ language was also part of the claims as originally filed, in my opinion,
such language would satisfy the written description requirement.” (alterations added))). The
experts also disagree on the first limitation found in the preamble and the establishing
limitation.9 (See id. 18–21).
Finally, Atlas contends Lanning’s testimony that the asserted claim is not enabled is
conclusory, explaining Lanning failed to consider the length of time it would take to practice the
9

As discussed in the October 8 Order, a trier of fact may find the accused hubs have the capability to
establish a communication cycle as set out in the establishing limitation. (See Oct. 8 Order 21).

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CASE NO. 13-23309-CIV-ALTONAGA
asserted claim, and whether that amount of time was “undue.” (Mot. 7). Nonetheless, for the
same reasons summary judgment is inappropriate regarding written description, it is likewise
inappropriate as to enablement.

Atlas has not presented sufficient evidence it satisfies

enablement, precluding summary judgment. (See Resp. 20). Further, because factual issues
remain regarding written description, granting summary judgment as to enablement would be
improper where the two issues involve many of the same underlying facts and “usually rise and
fall together,” LizardTech, Inc., 424 F.3d at 1345, even if they involve separate analyses. (See
Resp. 20; Reply 6). While Medtronic has the burden of proof to demonstrate invalidity at trial,
Atlas as the moving party has failed to satisfy its burden to establish no factual issues remain
regarding written description or enablement in order to succeed on its summary judgment
motion.
IV. CONCLUSION
For the foregoing reasons, it is
ORDERED AND ADJUDGED that Atlas’s Motion for Summary Judgment [ECF No.
139] is GRANTED in part and DENIED in part. Summary judgment on invalidity of Claim
21 is granted in Atlas’s favor as to anticipation and obviousness and is denied as to written
description and enablement.
DONE AND ORDERED in Chambers at Miami, Florida this 15th day of October, 2014.

_________________________________
CECILIA M. ALTONAGA
UNITED STATES DISTRICT JUDGE
cc:

counsel of record

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