CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP, LTD. et al

Filing 306

MEMORANDUM OPINION indicating that, for reasons stated within, the Court finds that claims 1-5 of the 839 Patent and claims 1-2 of the 180 Patent are not anticipated under 35 U.S.C. § 102(e), Defendants' Motion for Partial Summary Judgment of Invalidity of U.S. Patent Nos. 6,201,839 and 6,438,180 218 is therefore denied. An appropriate Order Follows. Signed by Judge Nora Barry Fischer on 9/28/11. (jg)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
CARNEGIE MELLON UNIVERSITY,
Plaintiff,
v.
MARVELL TECHNOLOGY GROUP, LTD.,
and MARVELL SEMICONDUCTOR, INC.,
Defendants.

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Civil No. 09-290
Judge Nora Barry Fischer

MEMORANDUM OPINION
I.

Introduction
Carnegie Mellon University (“CMU” or “Plaintiff”) brought this patent infringement

lawsuit against Marvell Technology Group, Ltd. and Marvell Semiconductor, Inc. (collectively,
“Marvell” or “Defendants”). Currently pending before the Court is Marvell‟s “Motion for Partial
Summary Judgment of Invalidity of U.S. Patent Nos. 6,201,839 and 6,438,180.” (Docket No.
218). The Court has considered Marvell‟s motion and accompanying documents, (Docket Nos.
218-222), CMU‟s brief in opposition and accompanying documents, (Docket Nos. 232-234),
Marvell‟s reply and documents, (Docket Nos. 249-251), CMU‟s sur-reply, (Docket Nos. 26465), oral argument presented during two separate hearings, (Docket Nos. 274 and 292),
Marvell‟s supplemental memorandum, (Docket No. 287), and CMU‟s supplemental
memorandum. (Docket No. 291). The motion is fully ripe. Although it was a “close call,” for
reasons stated more fully herein, Marvell‟s motion [218] is DENIED.

II.

Background
a. Factual Background
On March 21, 1995, Seagate filed a patent application on Glen Worstell‟s invention.

(Docket No. 219 at 3). This application matured into U.S. Patent No. 6,282,251 (the “„251
Patent” or “Seagate Patent”), entitled “Modified Viterbi Detector Which Accounts for Correlated
Noise.”1 (Id.). See also „251 Patent. It issued on August 28, 2001. Id. This patent “relates to disc
drives. More particularly, [the invention] relates to a data detector in a disc drive wherein the
data detector accounts for correlated noise.” Id. at col. 1 lns. 4-7.
Doctors Aleksandar Kavcic and Jose M. F. Moura submitted a “Disclosure of Invention”
to the CMU Technology Transfer Office on March 10, 1997. (Docket No. 220-4). The invention
was entitled “Correlation-Sensitive Adaptive Sequence-Detector.” (Id.). The Disclosure listed the
date of conception as “05-96.” (Id. at ¶ 6).
In April 1997, CMU shared the invention disclosure with engineers from Seagate, among
other firms. (See Docket No. 220-7 at KLG 1416-1418). The disclosure found its way to Glen
Worstell, the named inventor on the Seagate patent. In an email, Worstell stated that he had
“reviewed the DSSC „Correlation Sensitive Adaptive Sequence Detector‟ patent proposal.” (Id.
at KLG 1418). Worstell expressly stated that “[a] couple of years ago, I did some work on a
Viterbi detector modification to account for noise correlation. This invention is related, but goes

1

Although the Court did not expressly interpret “Viterbi algorithm,” it did interpret “Viterbilike.” (Docket No. 176 at 2). Given this construction, “Viterbi algorithm” is implicitly construed
as “an iterative algorithm that uses a trellis to determine the best sequence of hidden states (in
this case, written symbols) based on observed events (in this case, observed readings that
represent the written symbols), where the determined sequence is indicated by the best path
through the trellis and is determined using branch metric values calculated for branches of the
trellis.” (See id. at 2).

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beyond my work and is probably more interesting.” (Id.). This email was dated April 4, 1997.
(See id. at KLG 00001418).
On May 9, 1997, CMU filed a provisional patent application on the Kavcic invention. See
U.S. Patent App. No. 60/046,006. This provisional application made no reference to the Seagate
patent. See id. CMU filed a formal utility patent application on April 3, 1998 that claimed
priority to the provisional application. See U.S. Patent App. No. 09/055,033. Both U.S. Patent
Nos. 6,201,839 (the “„839 Patent”) and 6,438,180 (the “„180 Patent”) claim priority to the May
9, 1997 provisional application: the „839 Patent issued from the 09/055,033 application and the
„180 Patent was a continuation-in-part (“CIP”) of the „839 Patent. See „839 Patent; „180 Patent.
Thereafter, the „839 Patent, entitled “Method and Apparatus for Correlation-Sensitive
Adaptive Sequence Detection,” was issued by the United States Patent and Trademark Office
(“PTO”) on March 13, 2001. See „839 Patent. The listed inventors are Aleksandar Kavcic and
Jose M. F. Moura. Id. CMU owns this patent by assignment. Id.
The „180 Patent, which is a CIP of the „839 Patent, is entitled “Soft and Hard Sequence
Detection in ISI Memory Channels.” It was issued by the PTO on August 20, 2002. See „180
Patent. The inventors of this patent are also Kavcic and Moura, and CMU likewise owns this
patent by assignment. Id. Both the „839 and „180 Patents claim a priority date of May 9, 1997.
See „839 Patent col. 1, lns. 7-9; „180 Patent col. 1 lns. 6-9.
b. Procedural Background
CMU filed this case on March 6, 2009, alleging the infringement of the „839 Patent at
Count I and the „180 Patent at Count II. (Docket No. 1). Marvell‟s Amended Answer was filed
on April 29, 2010. (Docket No. 116). The technology at issue in this case is generally related to
methods and devices for reading information off of high density magnetic recording devices, and

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more specifically, high density magnetic recording sequence detectors. See „839 Patent col.1 ln.
20-23.
CMU alleges that Marvell is liable for infringement of both patents, either literally or
under the doctrine of equivalents. (See Docket No. 1 at ¶¶ 15, 22). CMU claims that a number of
Marvell‟s product lines infringe the „839 Patent. (Id. at ¶ 15). CMU also argues that Marvell
infringes the „180 Patent by way of these same product lines. (Id. at ¶ 22).
On January 6, 2010, the parties filed a “Joint Agreed and Disputed Claim Terms Chart”
pursuant to Local Patent Rule 4.2. (Docket No. 74). CMU and Marvell filed their opening claim
construction briefs on January 27, 2010 and February 17, 2010, respectively. (Docket Nos. 78
and 81). After further briefing, (Docket Nos. 89-91, 93-95) and a technology tutorial held on
April 7, 2010, (Docket No. 103), the Court conducted a Markman hearing. (Docket Nos. 105106). After the Markman hearing, the parties filed a “Revised Joint Agreed and Disputed Claim
Terms Chart.” (Docket No. 120). Following supplemental post-Markman hearing briefing,
(Docket Nos. 128-130, 135, 138-139), the Court issued its claim construction opinion. Carnegie
Mellon University v. Marvell Technology Group, Ltd., Civ. No. 09-290, 2010 WL 3937157
(W.D. Pa. Oct. 1, 2010). The Court‟s findings and rulings in that opinion are incorporated herein.
On December 22, 2010, Marvell filed the instant motion and attached documents under
seal. (Docket Nos. 218-22). Thereafter, CMU filed its brief in opposition and accompanying
documents. (Docket Nos. 232-34). Marvell‟s reply, (Docket Nos. 249-51), and CMU‟s sur-reply,
(Docket Nos. 264-65), were filed and the Court heard oral argument on March 31, 2011 and May
17, 2011.2 (Docket Nos. 274, 292). The parties filed supplemental briefing on the matters

2

Experts for both sides, as well as the Court‟s Technical Advisor, were present at both
arguments. (See Docket Nos. 274, 292).

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addressed during these hearings. (Docket Nos. 277-78, 287-88, 291, 295, 298). The motion is
now ripe and ready for disposition, after careful consideration by the Court.

c. The Parties‟ Arguments
The instant motion does not reach all of the asserted claims. Instead, Marvell only moves
for partial summary judgment with respect to claims 1-5 of the „839 Patent and claims 1-2 of the
„180 Patent. (Docket No. 219). Marvell refers to these claims as the “Group I” claims. The
Court‟s analysis will therefore be limited to only these claims, as Marvell expressly states that it
is not presently arguing that the remaining claims3 are invalid. (See Docket No. 219 at n.2).
Marvell argues that the Group I claims are all unambiguously anticipated by the Seagate
patent. (See Docket No. 219 at 5). Therefore, Marvell claims that the Group I claims are invalid
under 35 U.S.C. § 102(e). (See generally Docket No. 219).
CMU responds that there are unresolved questions of fact that foreclose summary
judgment. (See, e.g., Docket No. 232 at 3). CMU disputes Marvell‟s assertions with respect to
several elements of the Group I claims. (See id. at 1-2). Moreover, CMU asserts that there is a
distinction between the Group I claims of the „839 Patent and the „180 Patent. (Id. at 2, 16). It
distinguishes these claims by arguing that claim 1 of the „180 Patent is limited to steps taken “in
a detector.” (Id. at 2, 16). According to CMU, because Marvell has failed to show that the
Seagate patent anticipates any Group I claim elements, summary judgment should be denied.
(Docket No. 232 at 3) (stating that Marvell “cannot carry its burden of showing…that the
[Seagate] patent anticipates the Group I claims.”).
III.

Legal Standard

3

The “Group II” claims are claims 11, 16, 19 and 23 of the „839 Patent and claim 6 of the „180
Patent. (Docket No. 219 at n.2).

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a. Summary Judgment
“The Court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
FED.R.CIV.P. 56(a). Pursuant to Rule 56, a Court must enter summary judgment against a party
“who fails to make a showing sufficient to establish the existence of an element essential to that
party‟s case, and on which that party will bear the burden of proof at trial.” Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986). “Only disputes over facts that might affect the outcome of the
suit under the governing law will properly preclude the entry of summary judgment.” Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Summary judgment may be granted when no “reasonable jury could return a verdict for
the nonmoving party.” Id. Therefore, in performing its analysis, a court should “view the
evidence in a light most favorable to the opposing party and resolve doubts in its favor.” Ethicon
Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998).
b. Anticipation and Invalidity
An issued patent enjoys a presumption of validity. See 35 U.S.C. § 282; SRAM Corp. v.
AD-II Engineering, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006). Due to this presumption,
invalidity must be proved by clear and convincing evidence. Microsoft Corp. v. i4i Ltd.
Partnership, 131 S.Ct. 2238, 2242 (2011). “The burden of establishing invalidity of a patent or
any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. 282 (2006). Even in
instances where the allegedly anticipatory reference was not before the PTO, the clear and
convincing standard remains. i4i, 131 S.Ct. at 2244; Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1050 (Fed. Cir. 1988). However, evidence not considered by the PTO may “carry
more weight” in an infringement action than evidence previously considered by the PTO. i4i,

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131 S.Ct. at 2251; see also Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359
(Fed. Cir. 1984) (Rich, J.). Given that “[c]redibility determinations, the weighing of evidence,
and the drawing of legitimate inferences from the facts are jury functions, not those of a judge,”
Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 150 (2000) (quoting Liberty Lobby,
477 U.S. at 255), it seems to this Court that it should not, at the summary judgment stage,
consider the possible additional weight carried by a piece of prior art not considered by the
PTO.4
The ultimate question of patent validity is one of law. i4i, 131 S.Ct. at 2242-43 (quoting
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966); Great A. & P. Tea Co. v.
Supermarket Equipment Corp., 340 U.S. 147, 155 (1950)). Anticipation, however, is a question
of fact. See, e.g., Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371, 1378-79 (Fed.
Cir. 2001); Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999). Still,
4

The Court notes that, although the Supreme Court‟s i4i decision conclusively established that
the clear and convincing standard is appropriate for proving invalidity, the Supreme Court stated
that evidence not considered by the PTO “may „carry more weight‟” in meeting this burden. i4i,
131 S.Ct. at 2251 (citing American Hoist, 725 F.2d at 1360). However, without more explicit
guidance than that this evidence “may” be more probative, this Court will follow the wellestablished rule that courts should not engage in the weighing of evidence at the summary
judgment stage. See Liberty Lobby, 477 U.S. at 255 (1986 (“Credibility determinations, the
weighing of evidence, and the drawing of legitimate inferences from the facts are jury functions,
not those of a judge, whether [s]he is ruling on a motion for summary judgment or for a directed
verdict.”); see also, e.g., Metropolitan Life Ins. Co. v. Bancorp. Services, L.L.C., 527 F.3d 1330,
1339 (Fed. Cir. 2008) (resolving factual disputes in a patent case “is not appropriate on summary
judgment.”). Therefore, although a given reference “may „carry more weight,‟” this Court
declines to resolve any disputed facts based on this additional weight. Adding in the dueling
expert declarations that have framed this motion, the Court finds all the more reason to decline to
engage in weighing the facts, especially at this stage of litigation. See Fuji Machine Mfg. Co.
Ltd. v. Hover-Davis, Inc., 60 F.Supp.2d 111, 120 (W.D.N.Y. 1999) (where experts disagree, their
credibility is “a factor that may be taken into account in determining where the truth lies. Such
credibility determinations, however, are properly left for the trier of fact based on the experts‟
live testimony at trial, and should not be made by the court on a motion for summary
judgment.”) (citing Allied Colloids Inc. v. American Cyanamid Co., 64 F.3d 1570, 1575 (Fed.
Cir. 1995)).

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“[a]lthough anticipation is a question of fact, it still may be decided on summary judgment if the
record reveals no genuine issue of material fact.” Telemac Cellular Corp. v. Topp Telecom, Inc.,
247 F.3d 1316, 1327 (Fed. Cir. 2001).
A patent claim is “invalid for anticipation if a single prior art reference discloses each
and every limitation” of the claim. Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373,
1377 (Fed. Cir. 2003) (emphasis added). See also Zenith Elecs. Corp. v. PDI Commc’ns Sys.,
Inc., 522 F.3d 1348, 1363 (Fed. Cir. 2008) (invalidity by anticipation “requires a showing that
each element of the claim at issue, properly construed, is found in a single prior art reference.”).
Each element and the “arrangement or combination” of those elements must be present in the
prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008). However, the elements need not be expressly disclosed by the prior art; they need merely
be inherent in the previous disclosure. See Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d
1364, 1373 (Fed. Cir. 2002) (“[A]nticipation by inherent disclosure is appropriate only when the
reference discloses prior art that must necessarily include the unstated limitation.”) (emphasis in
original). The key is that, within “the four corners of a single, prior art document … every
element of the claimed invention [must be described], either expressly or inherently, such that a
person of ordinary skill in the art could practice the invention without undue experimentation.”
Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000).
Courts may rely on expert testimony at the summary judgment stage. See Globetrotter
Software, Inc. v. Elan Computer Group, Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (noting that,
on remand, district court could reopen record for more specific expert testimony, and that it
could entertain new summary judgment motions in light of that testimony); cf. Arthur A. Collins,
Inc. v. Northern Telecom Ltd., 216 F.3d 1042, 1047-48 (Fed. Cir. 2000) (noting standard for

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affidavit of expert submitted in opposition to motion for summary judgment). Courts should,
however, recognize that, “[i]n many patent cases expert testimony will not be necessary because
the technology will be „easily understandable without the need for expert explanatory
testimony.‟” Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004). “Indeed,
where a prior art reference plainly discloses a claim limitation, the court may recognize and
apply that teaching on summary judgment.” Advanced Technology Materials, Inc. v. Praxair,
Inc., 228 Fed. App‟x 983, 985 (Fed. Cir. 2007) (citing Union Carbide Corp. v. Am. Can Co., 724
F.3d 1567, 1571-72 (Fed. Cir. 1984)). Further, in cases where expert testimony is necessary,
courts shall not rely on such testimony if it contradicts the plain meaning of the specification.
Mantech Environmental Corp. v. Hudson Environmental Services, Inc., 152 F.3d 1368, 1373
(Fed. Cir. 1998). In sum, while courts may rely on expert testimony, they should be wary of
reliance upon such testimony at the summary judgment stage. Hence, this Court proceeds with
caution, and only looks to expert testimony where the Court needs clarification of the
technological matters at issue and such testimony informs the parties‟ arguments.5
c. Claim Dependency
Dependent claims are authorized by 35 U.S.C. § 112, ¶ 3, which states that “[a] claim
may be written in independent or, if the nature of the case admits, in dependent or multiple
dependent form.” “[A] claim in dependent form shall contain a reference to a claim previously
set forth and then specify a further limitation of the subject matter claimed. A claim in dependent
form shall be construed to incorporate by reference all the limitations of the claim to which it
5

To this end, the Court notes that affidavits or declarations of several experts were submitted
over the course of the Court‟s consideration of the pending motion. (See Docket Nos. 220-9;
234-9; 251-11; 265-3; 291-14). Marvell also filed a declaration of Glen Worstell, the inventor of
the Seagate Patent. (Docket No. 251-12). The Court has also conferred with its technical advisor
on several occasions. (See Docket Nos. 159; 257; 273; 282; 305). The Court has considered all of
these in its analysis of the instant motion.

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refers.” 35 U.S.C. § 112, ¶ 4. Therefore, if a dependent claim depends upon an independent
claim that is held valid, the dependent claim must also be valid as at least one of its elements
necessarily is not anticipated by the prior art. See Wahpeton Canvas Co., Inc. v. Frontier, Inc.,
870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (citing Teledyne McCormick Selph v. U.S., 558 F.2d
1000, 1004 (Ct. Cl. 1977) (“It, of course, has long been established that a dependent claim…
cannot be infringed unless the accused device is also covered by the independent claim…”). The
opposite is not necessarily true: “dependent … claims shall be presumed valid even though
dependent upon an invalid claim.” Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 24
(Fed. Cir. 2000). Therefore, where a dependent claim is dependent upon an invalid claim, this
Court must still independently analyze the dependent claim to determine whether it is anticipated
by the prior art. Clearwater Systems Corp. v. Evapco, Inc., 394 Fed.App‟x 699, 706 (Fed. Cir.
2010).
IV.

Discussion
In the present motion, Marvell challenges the validity of claims 1-5 of the „839 Patent.

The Court notes that claims 2 and 3 are dependent upon claim 1, see „839 Patent, col. 14 lns. 3,
7, and claim 5 is dependent upon claim 4. Id. at col. 14 ln. 20. Marvell likewise challenges
claims 1 and 2 of the „180 Patent, which also share an independent/dependent relationship. See
„180 Patent, col. 15 ln. 49.
a. The Claim Preamble Limitations6

6

Preambles are not always to be considered limiting. The question of whether the preamble of a
claim is to be considered limiting is to be determined “on the facts of each case in light of the
claim as a whole and the invention described in the patent.” Storage Tech. Corp. v. Cisco Sys.,
Inc., 329 F.3d 823, 831 (Fed. Cir. 2003). The preamble may be limiting where it recites a
limitation or is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v.
Hewlett-Packard Co., 183 F.3d 1298, 1305 (Fed. Cir. 1999). “No litmus test defines when a
preamble limits claim scope,” but “[i]n general, a preamble limits the claimed invention if it
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Marvell‟s first “element” in its argument challenging the Group I claims is the preamble
of claims 1 and 4 of the „839 Patent and claim 1 of the „180 Patent. The preamble of both of the
independent „839 Patent claims states that, what is claimed is “[a] method of determining branch
metric values for branches of a trellis for a Viterbi-like detector…” „839 Patent at col. 13 lns. 6162; col. 14 lns. 10-11. The preamble of claim 1 of the „180 Patent claims “[a] method of
determining branch metric values in a detector…” „180 Patent at col. 15 lns. 39-40. Marvell
argues that these preambles disclose identical “concepts.” (Docket No. 219 at 10). Meanwhile,
CMU draws a distinction between the preamble of the „839 claims and the preamble of claim 1
in the „180 Patent by noting that “[c]laim 1 of the „180 patent… states that the claimed method of
„determining branch metric values‟ is performed „in a detector.‟” (Docket No. 232 at 16)
(emphasis in original). For simplicity, the Court addresses each preamble separately.

recites essential structure or steps, or if the preamble is used in the prosecution history to limit
the scope of the claim.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002).
The preamble is not regarded as limiting when the patent claim otherwise describes a complete
invention, when the preamble is merely duplicative of limitations in the body, or when it
operates only as an introduction to the general field of the invention. See Am. Med. Sys., Inc. v.
Biolitic, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010) (preamble not limiting if the patent
“describes a structurally complete invention in the claim body and uses the preamble only to
state a purpose…”); Symantec Corp. v. Computer Associates Intern., Inc., 522 F.3d 1279, 128889 (Fed. Cir. 2008) (preamble not limiting when merely duplicative of claim language); Hearing
Components, Inc. v. Shure, Inc., 600 F.3d 1357, 1366 (Fed. Cir. 2010) (preamble not limiting
when it is “simply an introduction to the general field of the claim.”). The parties here have made
no argument as to the appropriateness of treating the preamble as limiting; indeed, the preamble
was only referenced on a few occasions during claim construction, and in each instance was used
to give context to language contained in the body of the claims. (See Docket No. 78 at 38;
Docket No. 81 at 40; Docket No. 128 at 12).
The Court refrains from making a decision on this point, in the context of the present motion for
partial summary judgment, given the lack of argument and because it appears to the Court that,
based on the record before it, the analysis is a zero-sum outcome: if the preamble is not limiting,
the existence of anticipatory prior art is irrelevant to the preamble element. If the preamble is
limiting, the Court would still have to engage in the anticipation analysis. Because CMU failed
to raise a challenge to Marvell‟s use of the preamble as a limitation, the Court will operate under
the presumption that the preamble is limiting for purposes of ruling on this motion.

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i. The „839 Patent Preamble
First, as to the „839 Patent preamble, the Court finds that “determining branch metric
values for branches of a trellis in a Viterbi-like detector” is expressly disclosed by the Seagate
Patent. The Seagate Viterbi detector operates by selecting the most likely path through a trellis
diagram. See „251 Patent at col. 4, lns. 22-23. The patent also discloses the determination of a
branch metric. See id. at col. 4 lns. 45-53.
Hence, the Court finds that the Viterbi-like portion of the „839 preamble element is
disclosed by the Seagate Patent. The Court construed “Viterbi-like” to mean “an algorithm that is
or is similar to an iterative algorithm that uses a trellis to determine the best sequence of hidden
states (in this case, written symbols) based on observed events (in this case, observed readings
that represent the written symbols), where the determined sequence is indicated by the best path
through the trellis and is determined using branch metric values calculated for branches of the
trellis.” (Docket No. 176 at 2). The Seagate Patent describes an iterative algorithm: the detector
“uses a branch metric in a Viterbi detector which is based on a current signal sample, as well as
one or more previous signal samples.” Id. at col. 2 lns. 3-5. It also describes a method of
determining the best path through a trellis. Id. at col. 4 lns. 22-24 (“Viterbi detector 24 operates
by selecting the most likely path through the trellis diagram 25 given some received sequence.”).
The Seagate Patent, therefore, discloses the entirety of the „839 preamble limitation.
ii. The „180 Patent Preamble
Again, CMU claims that the preamble of claim 1 of the „180 Patent is different from that
of the „839 preamble because the „180 preamble requires that the determination occur “in a
detector.” (Docket No. 232 at 2, 16). Marvell counters with the observation that the claim does
not require the selecting step to occur in a detector. (Docket No. 249 at 14). Rather, said

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preamble merely states that the method is for “determining branch metric values in a detector.”
„180 Patent at col. 15, lns. 39-40.
The Court finds that Marvell‟s position is correct, but for slightly different reasons. First,
the Court turns to the doctrine of claim differentiation, which states that “the presence of a
dependent claim that adds a particular limitation raises a presumption that the limitation in
question is not found in the independent claim.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 910 (Fed. Cir. 2004). “That presumption is especially strong when the limitation in dispute
is the only meaningful difference between an independent and dependent claim…” SunRace
Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
Here, claim 5 of the „180 Patent is dependent upon claim 1. Claim 5 specifically limits
“the detector” of claim 1 to the “group consisting of a Viterbi detector, a soft output Viterbi
detector, a Generalized Viterbi detector, and a BCJR detector.” „180 Patent at col. 15 lns. 56-59.
There is, therefore, an “especially strong” presumption that the “detector” of claim 1 is broader
than “Viterbi detectors.”
Secondly, the parties have agreed that “Viterbi-like detector” and “Viterbi-like detector
circuit” are synonymous – both mean “a detector that uses a Viterbi-like algorithm.” (Docket No.
120-1 at 4) (emphasis added). If “detector” and “detector circuit” are synonymous here, they
must be synonymous elsewhere. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc) (“Because claim terms are normally used consistently throughout the patent, the
usage of a term in one claim can often illuminate the meaning of the same term in other
claims.”). The “detector” of claim 1 is therefore synonymous with “detector circuit[s],” such as
detector circuits 26 and 28 of Figures 1 and 2. See „180 Patent at col. 3 lns. 30-32.

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Read this way, the Seagate Patent discloses determination of a branch metric in a
detector. Specifically, the Seagate Patent teaches a data detector and recovery circuit similar to
the CMU detector circuit. See id. at Fig. 1, col. 3 lns. 44-45. Branch metrics are determined in
the data detector and recovery circuit, see id. at col. 4 lns. 22-53, which anticipates the preamble
limitation even if determination occurs outside the Viterbi itself. The preamble limitation of the
„180 Patent is, therefore, disclosed in the Seagate Patent. However, the Court‟s analysis does not
end here. The Court now addresses the parties‟ arguments as to the remainder of the claims.
b. Claims 1-5 of the „839 Patent
i. Claim 1
Claim 1 of the „839 Patent claims:
A method of determining branch metric values for branches of a trellis for
a Viterbi-like detector, comprising:
selecting a branch metric function for each of the branches at a certain
time index; and
applying each of said selected functions to a plurality of signal samples to
determine the metric value corresponding to the branch for which the
applied branch metric function was selected, wherein each sample
corresponds to a different sampling time instant.
„839 Patent, col. 13 ln. 61 – col. 14 ln. 2.
1. “Selecting”
First, the Court turns to the arguments centered on the “selecting” step of the method of
claim 1. In this regard, the parties‟ arguments largely revolved around equation 20 of the Seagate
Patent, „251 Patent at col. 9 ln. 50, and equation 13 of the „839 and „180 Patents. „839 Patent,
col. 7 ln. 3; „180 Patent col. 7 ln. 35. The parties have agreed that “selecting” means “to choose
one from a set of more than one.” (Docket No. 120-1 at 3). They have also agreed that “branch
metric function” means “a mathematical function for determining a „branch metric value‟ for a
„branch,‟” (Id. at 2), and “certain time index” means “a certain point in time.” (Id.).

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With these definitions in mind, the Court finds that the “selecting” element is not
disclosed in the Seagate patent. The purpose of the detector is to “select[] the most likely path”
through a trellis diagram representing a signal. „251 Patent at col. 4 lns. 22-24. As disclosed in
the Seagate patent, this selection occurs at every state, see id. at col. 4 lns. 22-26, and there are at
least two possible branches entering and leaving each state. Id. at col. 5 lns. 38-39. In order to
determine the most likely path through the trellis, the Viterbi “eliminates all but the most likely”
branches entering and leaving a given state. Id. at col. 5 lns. 46-55. However, the Court finds that
this selection process simply results in the selection of a branch metric value,7 not a branch
metric function.8
Marvell‟s initial argument was that selection of the “filter tap weights” of the Seagate
Patent is essentially analogous to selection of a branch metric function.9 (See Docket No. 219 at
13). The gist of this argument was that selection of different tap weights essentially produced a
new branch metric function. (See id.) (“The Seagate patent makes this selection using values of
„filter tap weights‟ (“Wi”) to determine which branch metric function to select from the set at
each relevant point in time: „The correlation of the noise is thus determinable based on the filter
tap weights.‟”) (citations omitted). The flaw in this argument is that the selection does not occur
for “a certain time index.” See, e.g., „839 Patent, col. 13 lns. 63-64 (requiring the step of
“selecting a branch metric function for each of the branches at a certain time index.”). Because
the tap weights are fixed at the design stage, it appears to this Court that there is no selection of a

7

The parties agree that “branch metric value,” “branch metric” and “metric value” all mean the
same thing: “the numerical value of a „branch.‟” (Docket No. 120-1 at 2).
8

The Court discusses “function” below. See infra.

9

Marvell distanced itself from this argument over the course of the Court‟s consideration of the
pending motion. (See Docket No. 249 at 3).

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branch metric function at a certain time index. (See Docket No. 301 at 67). Essentially all that the
Seagate Patent teaches is selection – prior to operation – of a single branch metric function.
Indeed, CMU asserted this point at argument. (See id. at 66-67). Even Marvell acknowledged
such, but in a roundabout way. (See Docket No. 249 at 3) (“[W]hether tap weights are fixed,
programmed at the factory, or adaptively varied during operation does not create a genuine issue
as to whether [the Seagate] patent describes the claimed „selecting‟ step.”).
Marvell also made an argument that the output or target value creates five different
equations. (See Docket No. 249 at 5). This means, according to Marvell, that there are five
separate “functions” among which selection can occur in the Seagate Patent. (Id.). CMU
responds that these target values do nothing more than vary input values (“arguments”) into the
same function. (See Docket No. 264 at 5-6). The Court finds CMU‟s argument persuasive.
Marvell did not advance a construction of the word “function,” other than to say that it
should be given its ordinary meaning. (Docket No. 301 at 25). On the other hand, according to
CMU, a “function” is “a mathematical relation that uniquely associates members of a first set
with members of a second set.” (Docket No. 264 at 5). This is essentially the ordinary meaning
of the word “function.” See Merriam-Webster‟s Collegiate Dictionary, 507 (11th ed. 2007)
(defining “function” as “a mathematical correspondence that assigns exactly one element of one
set to each element of the same or another set”). Under this ordinary meaning, which the Court
adopts for purposes of this motion since the parties seem to be in agreement, simply adding
another variable into a function – here the target value – does not operate to convert that single
function into multiple functions.10 Therefore, variation of the target value does not render
Equation 20 of the Seagate Patent a “set” of functions.

10

The Court notes that this reasoning would seem to render the CMU claims invalid under 35
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Perhaps the best argument put forth by Marvell is that the Examiner found that the
“selecting a branch metric function” limitation was taught by Fitzpatrick. (See Docket No. 2516) (PTO Office Action stating that Fitzpatrick discloses a method for determining branch metric
values). Again, though, the Court must emphasize that this motion is brought under 35 U.S.C. §
102, not 35 U.S.C. § 103. The question, then, is whether the Seagate Patent discloses all the
elements of the claim, not whether Seagate and another patent disclose all the elements. See
Advanced Display Sys., 212 F.3d at 1282 (stating that “invalidity by anticipation requires that the
four corners of a single, prior art document describe every element of the claimed invention,
either expressly or inherently, such that a person of ordinary skill in the art could practice the
invention without undue experimentation.”) (emphasis added).
Admittedly, “[m]aterial not explicitly contained in the single, prior art document may still
be considered for purposes of anticipation if that material is incorporated by reference…” Id.
However, to incorporate material by reference, the host document must identify “with detailed
particularity what specific material it incorporates and clearly indicate where that material is
found in the various documents.” Id. A “mere reference to another application, or patent, or
publication is not an incorporation of anything therein…” Callaway Golf Co. v. Acushnet Co.,
576 F.3d 1331, 1346 (Fed. Cir. 2009) (citing In re De Seversky, 474 F.2d 671, 674 (C.C.P.A.
1973)). It is therefore possible that, if Fitzpatrick has been incorporated by reference, it could be
used to satisfy the final claim limitation.
Based on the evidence before it, however, this Court cannot make such a finding: the
exhibits provided to the Court show only that the Examiner stated that Fitzpatrick anticipated the
U.S.C. § 112 ¶ 1. It appears that this definition would result in Equation 13 of the „839 patent
also being considered a single function, such that the patent does not teach a set of functions
from which one function may be selected. However, as this argument would arise under § 112,
and the instant motion is brought under § 102, the Court will not decide the point at this juncture.

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selecting element of the „839 Patent application. (See Docket 251-6). They also show that the
applicants only amended the applying step, not the selecting step. (See Docket 251-10). The
Court cannot, on the basis of this evidence, find that Fitzpatrick was incorporated by reference.
Therefore, because this motion was brought under 35 U.S.C. § 102, instead of §103, the Court
cannot conclude that the „839 Patent was anticipated by the Seagate Patent.
2.

“Applying”

Although it appears that much of the “applying” step is described in the Seagate Patent,
the entire claim element is not. For example, a “signal sample” is “a value of a signal at a certain
point in time.” (Docket No. 120-1 at 3). The signal sample of the applying step is just the signal
value that exists at the “certain time index” of the selecting element. (See id. at 2) (defining
“certain time index” as “a certain point in time.”).
However, the applying step requires that “each of said selected functions” be applied to a
plurality of signal samples. „839 Patent at col. 13 ln. 65 - col. 14 ln. 2. Because the Court has
found that the Seagate Patent does not teach selection of a function, application of the selected
functions cannot be anticipated by the Seagate Patent.
For these reasons, the Court finds that Claim 1 is not anticipated by the Seagate Patent.
Because the Court has found that this independent claim is valid, the claims depending from it
must also be held valid. Wahpeton Canvas Co., 870 F.2d at 1552 n.9. Still, the Court will address
the dependent claims, as follows.
ii. Claim 2
Claim 2 of the „839 Patent claims:
The method of claim 1 further comprising the step of receiving said signal
samples, said signal samples having signal-dependent noise, correlated noise, or
both signal-dependent and correlated noise associated therewith.
„839 Patent, col. 14 lns. 3-6.
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The method of claim 2 incorporates all of the steps of claim 1, which, as discussed above,
are not anticipated by the Seagate Patent. Claim 2 includes the additional limitation that the
signal samples of claim 1 include “signal-dependent noise, correlated noise, or both…” Id. With
respect to claim 2, then, the question would be whether the Seagate Patent discloses receiving
signal samples associated with these specific noise types.
The parties disputed the construction of most of the claim terms relevant to claim 2. (See
Docket No. 120-1 at 5-6, 12). They did, however, agree that “noise” means “an unwanted
disturbance in a signal.” (Docket No. 120-1 at 3). The remaining relevant terms were construed
by the Court. Specifically, the Court reached the following constructions for the relevant claim
terms:
“Correlation” means “the degree to which two or more items (here, noise in signal
samples) show a tendency to vary together.”
“Correlated” means two items that have a tendency to vary together.
“Correlated noise” means “noise with „correlation‟ among „signal samples,‟ such as that
caused by coloring by front-end equalizers, media noise, media nonlinearities, and
magnetoresistive (MR) head nonlinearities.”
“Signal-dependent noise” means “media noise in the readback signal whose noise
structure is attributable to a specific sequence of symbols (e.g., written symbols).”
(Docket No. 176 at 1-2).
To this Court, it is clear that the Seagate Patent discloses a detector that receives
correlated noise samples. Not only is the Seagate Patent entitled “[m]odified viterbi detector
which accounts for correlated noise,” but it repeatedly refers to correlated noise. For example,
the Seagate Patent explains that, in the prior art, “noise at the input to the detector is further
colored by the filter or equalizer which is required to simplify the target response. The filter or
equalizer correlates … noise in the system…” „251 Patent at col. 1 lns. 53-56. The Seagate

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Patent, thus, uses the term “correlated noise” in accord with the Court‟s construction of the term,
which expressly includes coloring by filters and equalizers. (See Docket No. 176 at 1-2). Further,
said patent specification states that “the Viterbi detector according to the present invention
accounts for correlated noise in the system.” „251 Patent at col. 2 lns. 5-7 (emphasis added). The
Seagate Patent, therefore, discloses a signal that has “correlated noise … associated therewith.”
See „839 Patent, col. 14 ln. 6.
The Seagate Patent also accounts for signal-dependent noise. The Court construed the
term “signal-dependent noise” to mean “media noise … whose noise structure is attributable to a
specific sequence of symbols.” (Docket No. 176 at 2). Transition noise is a type of media noise
which is attributable to the sequence of symbols recorded on the recording media. (See Docket
No. 220-9 ¶ 39). Transition noise is, therefore, a form of signal-dependent noise.
The Seagate Patent describes several times how the invention accounts for transition
noise. As Marvell points out:
The modified metric used in accordance with the present invention can be
further modified to take into account transition noise as well. If it is assumed that
the standard deviation of the noise component of each sample is greater where
there is a transition in the signal written to the disc than where there is no
transition, then each branch metric can be modified by multiplying the metrics
which correspond to transitions by a fraction which depends on the transition
noise standard deviation.
„251 Patent at col. 10 lns. 48-56. In this manner, the Seagate Patent describes a species of the
genus, signal-dependent noise, and it is “firmly establishe[d] that a later genus claim limitation is
anticipated by, and therefore not patentably distinct from, an earlier species claim.” Eli Lilly &
Co. v. Barr Labs., Inc., 251 F.3d 955, 971 (Fed. Cir. 2001); cf. Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 934-35 (Fed. Cir. 2003) (stating that “„[i]t is … an elementary principle of patent
law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the

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claim is “anticipated” if one of them is in the prior art.‟”) (quoting Titanium Metals Corp. of
America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985)).
Either disclosure is enough to anticipate the additional element in claim 2 of the „839
Patent. The Federal Circuit has noted that “[t]hat which infringes if later anticipates if earlier.”
Brown v. 3m, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (citing Polaroid Corp. v. Eastman Kodak
Co., 789 F.2d 1556, 1573 (Fed. Cir. 1986)). The Federal Circuit has also held that, “[b]y
claiming [an] invention in the alternative, [a patentee] has presented a claim for which
infringement would lie” under any single alternative. Brown, 265 F.3d at 1352. Put more
directly, “[w]hen a claim covers several structures or compositions, either generically or as
alternatives, the claim is deemed anticipated if any of the structures or compositions within the
scope of the claim is known in the prior art.” Brown, 265 F.3d at 1351 (citing Titanium Metals,
778 F.2d at 782) (emphasis added).
Here, because a signal sample with correlated noise or signal-dependent noise could
infringe, it must also anticipate. However, because the limitations incorporated from claim 1 are
not anticipated, the Court finds that claim 2 is not anticipated.
iii. Claim 3
Claim 3 of the „839 Patent claims:
The method of claim 1 wherein said branch metric functions for each of
the branches are selected from a set of signal-dependent branch metric functions.
„839 Patent, col. 14 lns. 7-9.
The method of claim 3 incorporates all of the steps of claim 1, which, as discussed above,
are not anticipated by the Seagate Patent. Additionally, claim 3 further narrows the “branch
metric function” limitation of claim 1 to cover only “signal dependent branch metric functions.”
See id.

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Under the Court‟s Claim Construction Order, “signal-dependent branch metric function”
means “a „branch metric function‟ that accounts for the signal-dependent structure of the media
noise.” (Docket No. 120-1 at 2). Because the Court has found that selection of a branch metric
function from a set of branch metric functions does not occur, it follows that selection of a
signal-dependent branch metric function does not occur. This claim is likewise not anticipated
under the same reasoning the Court applied in its analysis of the “selecting” step of claim 1.
iv. Claim 4
Claim 4 of the „839 Patent claims:
A method of determining branch metric values for branches of a trellis for
a Viterbi-like detector, comprising:
selecting a branch metric function for each of the branches at a certain
time index from a set of signal-dependent branch metric functions; and
applying each of said selected functions to a plurality of signal samples to
determine the metric value corresponding to the branch for which the
applied branch metric function was selected, wherein each sample
corresponds to a different sampling time instant.
„839 Patent, col. 14 lns. 10-19.
Claim 4 covers subject matter that is similar to the subject matter of claims 1 and 3. The
“applying” step is identical to the same step in claim 1. The “selecting” step is the same as claim
1, save that it has incorporated the narrower limitation of claim 3 into the independent claim
language. The Court has already described how each of the relevant limitations is not described
in the Seagate Patent. For the same reasons as set out above, the Court finds that claim 4 is not
anticipated by the Seagate Patent.
v. Claim 5
Claim 5 of the „839 Patent claims:
The method of claim 4 further comprising the step of receiving said signal
samples, said signal samples having signal-dependent noise, correlated noise, or
both signal-dependent and correlated noise associated therewith.

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„839 Patent, col. 14 lns. 20-23.
The method of claim 5 incorporates all of the steps of claim 4, which, as discussed above,
are not anticipated by the Seagate Patent. It adds the same narrowing limitation to claim 4 that
claim 2 added to claim 1. Given the Court‟s earlier analysis, the Court finds that this claim is not
anticipated by the Seagate Patent, even though the Seagate Patent discloses the new element of
claim 5.
c. Claims 1-2 of the „180 Patent
i. Claim 1
Claim 1 of the „180 Patent claims:
A method of determining branch metric values in a detector, comprising:
receiving a plurality of time variant signal samples, the signal samples
having one of signal dependent noise, correlated noise, and both signal
dependent and correlated noise associated therewith;
selecting a branch metric function at a certain time index; and
applying the selected function to the signal samples to determine the
metric values.
„180 Patent, col. 15 lns. 39-48.
With the exceptions of this claim‟s preamble “in a detector” limitation and the
“receiving” limitation, this claim‟s limitations are virtually identical to those already addressed
in the preamble of the „839 Patent claims. Because the Court has already found the preamble
limitation to be anticipated for purposes of this motion, it turns now to the “receiving” limitation.
Although “receiving” has not been construed by the Court or the parties, the Court finds
that this element is expressly disclosed in the Seagate Patent. For example, claim 1 of the
Seagate Patent claims “[a] method of detecting an input signal received over a plurality of time
periods…” „251 Patent at col. 12 lns. 58-59. “Generally speaking, [courts] indulge a „heavy
presumption‟ that a claim term carries its ordinary and customary meaning.” Sunrace Roots

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Enter. Co., LTD v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003)). A court should “look to
the specification to determine „whether the presumption of ordinary and customary meaning is
rebutted.‟” E-Pass Technologies, Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003)
(quoting Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)).
Because nothing in either patent‟s specification sets out a special meaning, and both patents use
different forms of the same word, the Court concludes that both patents use the root word
“receive” in its ordinary manner, and that the “receiving” element is, therefore, taught by the
Seagate Patent.
However, the Court once again focuses on the “selecting” step. For substantially the same
reasons as addressed above, the Court finds that the “selecting” and “applying” steps are not
anticipated by the Seagate Patent. Thus, the Court finds that this claim is not anticipated by the
Seagate Patent.
ii. Claim 2
Claim 2 of the „180 Patent claims:
The method of claim 1, wherein the branch metric function is selected from a set of
signal-dependent branch metric functions.
„180 Patent, col. 15 lns. 49-51.
This limitation is essentially the same as one of the limitations in claims 3 and 4 of the
„839 Patent. For substantially the same reasons, the Court finds that this claim is also not
anticipated by the Seagate patent.
d. The Worstell Email
Having found that the Group I claims are valid, the Court briefly turns to the Worstell
email stating that the CMU invention “goes beyond” Worstell‟s work. (See Docket No. 220-7 at
KLG 1418). CMU has described the Worstell email as “objective evidence” of the difference

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between the CMU patents and the Seagate Patent. (See Docket No. 232 at 17). This email may
play a role in an obviousness analysis under 35 U.S.C. § 103, wherein it is appropriate for courts
to look to objective evidence. See Graham, 383 U.S. at 17-18. Under 35 U.S.C. § 102, however,
the question is whether every claim element is disclosed within the “four corners” of a single
prior art document. Advanced Display Sys., 212 F.3d at 1282. It would, therefore, be
inappropriate for this Court to consider such external evidence in a §102 analysis, especially
when it has found that not all of the limitations of the relevant claims are contained within the
four corners of the single prior art Seagate Patent.
V.

Conclusion
For the foregoing reasons, the Court finds that claims 1-5 of the „839 Patent and claims 1-

2 of the „180 Patent are not anticipated under 35 U.S.C. § 102(e). Defendant‟s Motion [218] is
therefore DENIED. An appropriate Order Follows.
s/Nora Barry Fischer
Nora Barry Fischer
United States District Judge
cc/ecf: All counsel of record
Date: September 28, 2011

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