Tellabs Operations, Inc. v. Fujitsu Limited et al

Filing 524

WRITTEN Opinion entered by the Honorable James F. Holderman on 7/27/2012: Tellabs, Inc.'s, Tellabs Operations, Inc.'s and Tellabs North America, Inc.'s Motion for Summary Judgment of Invalidity of U.S. Patent No. 7,227,681 #444 is denied in light of disputed questions of material fact regarding the date when the invention disclosed by the '681 Patent was reduced to practice. Signed by the Honorable James F. Holderman on 7/27/2012: Mailed notice (am)

Order Form (01/2005)

United States District Court, Northern District of Illinois
Name of Assigned Judge
or Magistrate Judge

James F. Holderman

CASE NUMBER

08 C 3379

CASE
TITLE

Sitting Judge if Other
than Assigned Judge

DATE

7/27/2012

Tellabs Operations, Inc. v. Fujitsu Limited

DOCKET ENTRY TEXT

“Tellabs, Inc.’s, Tellabs Operations, Inc.’s and Tellabs North America, Inc.’s Motion for Summary Judgment
of Invalidity of U.S. Patent No. 7,227,681” [444] is denied in light of disputed questions of material fact
regarding the date when the invention disclosed by the ‘681 Patent was reduced to practice.

O[ For further details see text below.]

Notices mailed by Judicial staff.

STATEMENT
Pending before the court is “Tellabs, Inc.’s, Tellabs Operations, Inc.’s and Tellabs North America,
Inc.’s Motion for Summary Judgment of Invalidity of U.S. Patent No. 7,227,681.” (Dkt. No. 444.)
Tellabs has moved for summary judgment of invalidity, arguing that each of the asserted claims of the
‘681 Patent is “invalid over the prior art as a result of anticipation and/or obviousness.” (Dkt. No. 444
(“Tellabs’s Mot.”) at 2.) Specifically, Tellabs argues that U.S. Patent No. 6,055,092 (“‘092 Patent”) and
Japanese Patent Application Kokai Publication No. 8-248455 (“JP455”) are prior art that anticipated the
asserted claims of the ‘681 Patent under 35 U.S.C. § 102.
Fujitsu argues that both the ‘092 Patent and JP455 cannot be considered prior art in light of Fujitsu’s
evidence that the ‘681 Patent was conceived and reduced to practice prior to their respective dates of
publication.
“The presumption of validity . . . requires those challenging validity to introduce clear and convincing
evidence on all issues relating to the status of a particular reference as prior art.” Sandt Technology, Ltd. v.
Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001). To qualify as prior art under either §
102(a) or § 102(e), the claimed prior art must have been published before the invention at issue. See 35
U.S.C. §§ 102(a), 102(e)(1). Thus, the party seeking to establish invalidity ultimately bears the burden of
proving, by clear and convincing evidence, that “[the inventor of the patent-in-suit] did not conceive and
reduce his invention to practice before the publication date [of the alleged prior art].” Mahurar v. C.R. Bard,
Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996). “Although anticipation is a question of fact, it still may be
decided on summary judgment if the record reveals no genuine dispute of material fact.” Telemac Cellular
Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001) (citing General Elec. Co. v. Nintendo Co.,
08C3379 Tellabs Operations, Inc. v. Fujitsu Limited

Page 1 of 3

STATEMENT
Ltd., 179 F.3d 1350, 1353 (Fed. Cir. 1999)). “Summary judgment is inappropriate if a trier of fact applying
the clear and convincing standard could find for either party.” Oney v. Ratliff, 182 F.3d 893, 895 (Fed. Cir.
1999).
The ‘681 Patent on its face claims relation to “a division of application No. 08/845,847, filed on Apr.
28, 1997, now Pat. No. 6,025,947.” (‘681 Patent ¶ 60.) Accordingly, Tellabs argues that “the earliest
possible priority date for the ‘681 Patent [is] April 28, 1997.” (Dkt. No. 445 (“Tellabs’s Mem.”) at 19.)
It is undisputed that the application for the ‘092 Patent was filed on May 28, 1996, and that JP455
was published in Japan on September 27, 1996. Because both the ‘092 Patent and JP455 were published
before April 28, 1997, Tellabs contends that each publication qualifies as prior art with respect to the ‘681
Patent.
Fujitsu argues that the ‘681 Patent was not anticipated by the ‘092 Patent and JP455, because the
invention disclosed by the ‘681 Patent had already been reduced to practice “as early as March 18, 1996, and
no later than May 21, 1996.” (Dkt. No. 487 (“Fujitsu’s Opp.”) at 37.) Fujitsu argues that the “working
prototype optical amplifier” developed and implemented by Dr. Susumu Kinoshita and Mr. Yasushi Sugaya
between February 1995 and March 18, 1996, “contained each of the elements set forth in the claims of the
‘681 Patent and worked for its intended purpose.” (Id. at 38.)
“[T]o establish an actual reduction to practice, the inventor must prove that: (1) he constructed an
embodiment or performed a process that met all the limitations of the interference count; and (2) he
determined that the invention would work for its intended purpose.” Taskett v. Dentlinger, 344 F.3d 1337,
1340 (Fed. Cir. 2003). “It is well-established . . . that a party claiming his own prior inventorship must
proffer evidence corroborating his testimony.” Sandt Technology, 264 F.3d at 1350.
In this case, Fujitsu has offered evidence corroborating the testimony of Mr. Sugaya, the inventor, in
the form of a March 18, 1996 technical report prepared by Mr. Sugaya, Dr. Kinoshita, Miki Takeda, and
Chihiro Ohshima. (Dkt. No. 491-2, 491-3 FILED UNDER SEAL (“March 18, 1996 Technical Report”).)
Whether the March 18, 1996 Technical Report discloses “an optical filter which makes the gain
substantially flat or even” — a point contested by Tellabs in its reply brief — is a disputed question of fact.
Because this court finds that “a trier of fact applying the clear and convincing standard could find for either
party,” Oney, 182 F.3d at 895, summary judgment is not appropriate.
Additionally, the court is not persuaded that as a matter of law the ‘681 Patent claims are obvious
under 35 U.S.C. § 103. Tellabs cites four patent references to “show that a [person of ordinary skill in the
art] would clearly have known optical transmission systems at the time had a variable number of channels.”
(Dkt. No. 502 (“Tellabs’s Reply”) at 6.) Tellabs has not, however, argued that any of the four cited
references “proposes the solution taught and claimed by the ‘681 Patent.” (Fujitsu’s Opp. at 33 (emphasis
added).) “[O]bviousness requires . . . showing that a person of ordinary skill at the time of the invention
would have selected and combined . . . prior art elements in the normal course of research and development
to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011).
The court therefore denies Tellabs’s motion for summary judgment of invalidity on the grounds of
obviousness.

08C3379 Tellabs Operations, Inc. v. Fujitsu Limited

Page 2 of 3

08C3379 Tellabs Operations, Inc. v. Fujitsu Limited

Page 3 of 3