REC Software USA, Inc. v. Bamboo Solutions Corporation et al

Filing 319

ORDER denying 188 Microsoft's motion for summary judgment, by Judge James L. Robart.(MD)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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REC SOFTWARE USA, INC.,
Plaintiff,

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ORDER DENYING
SUMMARY JUDGMENT

v.

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CASE NO. C11-0554JLR

BAMBOO SOLUTIONS
CORPORATION, et al.,

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Defendants.
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I.

INTRODUCTION

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This matter comes before the court on Defendant Microsoft Corporation’s
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(“Microsoft”) motion for summary judgment of non-infringement and invalidity due to
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indefiniteness and inadequate written description. (Mot. (Dkt. # 188).) Having
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considered Microsoft’s motion, Plaintiff REC Software USA, Inc.’s (“REC”) response
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(Resp. (Dkt. # 208)), Microsoft’s reply (Reply (Dkt. # 218)), REC’s sur-reply (Sur-reply
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Dkt. # 229), Microsoft’s supplemental brief (Microsoft Supp. (Dkt. # 272)), REC’s
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ORDER- 1

1 response to Microsoft’s supplemental brief (REC Supp. Resp. (Dkt. # 292)), all
2 attachments and declarations in support and opposition to the motion, the balance of the
3 record, and the governing law, and having heard oral argument of the parties on August
4 23, 2012, the court DENIES Microsoft’s motion (Dkt. # 188).
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II.

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FACTUAL BACKGROUND

Stephen F.B. Pickett is the sole inventor of U.S. Patent No. 5,854,936 (the “Patent-

7 in-Suit”), which was assigned to REC. (See U.S. Patent No. 5,854,936 (the ’936 Patent).)
8 REC contends that Microsoft operating systems that support or utilize the .NET
9 Framework—namely, Windows 2000, Windows Server 2003, Windows Server 2008,
10 Windows Vista, Windows XP, and Windows 7—infringe of claims 1 and 8 of the Patent11 in-Suit. (Levine Rpt. (Dkt. # 209-1) at 5.)
12 A.

The Patent-in-Suit

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The asserted claims of the Patent-in-Suit disclose methods related to the behind-

14 the-scenes work done by a computer’s operating system to prepare complex computer
15 programs (referred to by the Patent-in-Suit as “multi-module programs”) for execution by
16 a “user” computer. (’936 Patent at 1:6-10.) The central component of the invention is a
17 “code server,” which operates in a multi-module computer operating system to efficiently
18 maintain and prepare multi-module programs for execution. (Id. at 1:6-10, 2:12-14.) In
19 particular, the code server includes a code module information table which stores
20 information about how modules reference each other, i.e., link together. (Id. at 3:49-51.)
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Figure 2 (below) from the specification of the Patent-in-Suit provides a schematic

22 diagram of a multi-module computer program illustrating references of one module to
ORDER- 2

1 other modules. (Id. at 2:54-57.) The arrows in Figure 2 demonstrate which modules are
2 referenced by a specific module. (Id.)
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The “module information table” of the code server contains information of how
the discrete modules of the multi-module program reference (or link to) one another. (Id.
at 2:14-22; 3:49-50.) This linkage information is necessary to execute a multi-module
program, and thus, the code server functions to provide linkage information for modules
of a multi-module program to a “user” computer that desires to run the program. (Id. at
28-32.) By storing module linking information in a code server, the need to search
individual modules and extract linkage information is no longer necessary and execution
of a multi-module program is made more efficient. (Levine Rpt. at 12.)

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ORDER- 3

1

In this matter, REC has asserted claims 1 and 8 of the ’936 Patent. Claim 1 is an

2 independent claim and claim 8 is dependent on claim 1. Claim 1, a method claim, is
3 provided below:
4 1.
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A method of providing information to a first program that is executing on a
computer for forming an association for a second multi-module program which
includes an embedded reference to a discrete module, said method comprising the
steps of:

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(a) receiving in a code server from said first program, at a point prior to executiontime of said multi-module program being associated, a request associated with said
discrete module;

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(b) searching a module information table for module information in response to said
request associated with said discrete module;

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(c) in response to finding said module information in said module information table,
reading said module information;

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(d) providing said module information in a response to said first program; and
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(e) forming an association of said multi-module program by said first program.

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15 B.

The Accused .NET Framework 1

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The accused .NET Framework is a software development platform that runs on

17 Microsoft Windows operating systems. (Mot. at 6; Levine Rpt. at 20.) .NET Framework
18 is used to create and execute .NET programs. .NET programs are not parts of the
19 accused .NET Framework itself, but are instead programs developed by third parties
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Many of the statements in this section rely on the contents of the portion of Microsoft’s
motion for summary judgment titled “Background of the Patent and Microsoft’s Accused
Software,” which in turn cites to portions of REC’s expert report of Dr. John Levine. (Mot. at 522 8; Levine Rpt. 20-37.) Thus, the statements do not appear to be contested.

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ORDER- 4

1 within the .NET Framework and which execute and use certain functionalities of the
2 .NET Framework. (Mot. at 6, FN. 6.)
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The building block of a .NET program is called an “assembly.” (Id. at 7; Levine

4 Rpt. at 21.) An assembly consists of a file that contains computer instructions and a
5 collection of “metadata” that enables the code and enables the assembly’s code to be used
6 by other assemblies. (Mot. at 7.) A portion of an assembly’s metadata known as the
7 “manifest” includes dependency (linkage) information, which identifies other code or
8 assemblies that are necessary to the operation of the assembly. (Id.)
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Assemblies that are intended to be shared by multiple .NET programs may be

10 stored on a user’s computer in a set of folders known as the Global Assembly Cache
11 (“GAC”). (Id.) Each assembly on the GAC is stored inside a subfolder containing
12 identifying information about the assembly. (Id.)
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A .NET program executes when a .NET assembly that ends in “.exe” (an

14 “executable assembly”) is double-clicked by the user. (Id.) A .NET program is not self15 contained and is run by and uses the services of the .NET Common Language Runtime
16 (“CLR”),which prepares the executable .NET program for execution. (Id.)
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If during execution, the executable .NET program requires code of an assembly,

18 the .NET program informs the CLR of that need. (Id.) The CLR first checks to see if it
19 has already loaded the assembly. (Id.) If it has not, it checks the GAC to see if the
20 requested assembly is stored there. (Id.) If the required assembly is not in the GAC, the
21 CLR looks for the dependent assembly in other folders on the user’s computer. (Id. at 722 8.) If and when the required assembly is located, the CLR “maps” the assembly into
ORDER- 5

1 virtual memory so that the portions of the dependent assembly may be accessed as
2 needed. (Id. at 8.) “Mapping” is a term of art referring to an operating system technique
3 that allows a file on a disk to be accessed as though it were physically loaded into random
4 access memory (“RAM”) and allows an operating system to conserve RAM by only
5 loading portions of a file that are actually needed rather than the entire file. (Id.) After
6 mapping, the CLR returns control to the executable assembly. (Id.)
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III.

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ANALYSIS

Microsoft moves for summary judgment on three grounds: (1) that REC has no

9 evidence that Microsoft infringes the “code server” limitation; (2) that REC has no
10 evidence of direct infringement; and (3) the asserted claims are invalid due to
11 indefiniteness and lack of adequate written description. (Mot. at 5.)
12 A.

Standard for Summary Judgment

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Federal Rule of Civil Procedure 56 permits a court to grant summary judgment

14 where (1) the moving party demonstrates the absence of a genuine issue of material fact
15 and (2) entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S.
16 317, 322 (1986). “Material,” for purposes of Rule 56, means that the fact, under
17 governing substantive law, could affect the outcome of the case. Anderson v. Liberty
18 Lobby, Inc., 477 U.S. 242, 248 (1986); Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir.
19 1997). For a dispute to be “genuine,” a reasonable jury must be able to return a verdict
20 for the nonmoving party. Anderson, 477 U.S. at 248.
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The initial burden of establishing the absence of a genuine issue of material fact

22 falls on the moving party. Celotex, 477 U.S. at 323. The movant can carry his burden in
ORDER- 6

1 two ways: (1) by presenting evidence that negates an essential element of the nonmoving
2 party’s case; or (2) by demonstrating that the nonmoving party “failed to make a
3 sufficient showing on an essential element of her case with respect to which she has the
4 burden of proof.” Id. at 322-23. “Disputes over irrelevant or unnecessary facts will not
5 preclude a grant of summary judgment.” T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors
6 Ass’n, 809 F.2d 626, 630 (9th Cir. 1987).
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Where the moving party meets that burden, the burden then shifts to the non-

8 moving party to designate specific facts demonstrating the existence of genuine issues for
9 trial. Celotex, 477 U.S. at 324. This burden is not a light one. The non-moving party
10 must show more than the mere existence of a scintilla of evidence. Anderson, 477 U.S. at
11 252. The non-moving party must do more than show there is some “metaphysical doubt”
12 as to the material facts at issue. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
13 475 U.S. 574, 586 (1986). In fact, once the moving party makes this initial showing, the
14 non-moving party “may not rest upon the mere allegations or denials of the [nonmoving]
15 party’s pleading,” but must provide affidavits or other sources of evidence that “set forth
16 specific facts showing that there is a genuine issue for trial” from which a jury could
17 reasonably render a verdict in the non-moving party’s favor. Fed. R. Civ. P. 56(e);
18 Anderson, 477 U.S. at 252. In determining whether a jury could reasonably render a
19 verdict in the non-moving party’s favor, all justifiable inferences are to be drawn in the
20 non-moving party’s favor. Anderson, 477 U.S. at 252.
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ORDER- 7

1 B.

“Code Server” Limitation

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“The infringement analysis is a two step inquiry. ‘First, the court determines the

3 scope and meaning of the patent claims asserted, and then the properly construed claims
4 are compared to the allegedly infringing device.’” Cordis Corp. v. Boston Scientific
5 Corp., 658 F.3d 1347, 1354 (Fed. Cir. 2011) (citing Cybor Corp. v. FAS Techs., Inc., 138
6 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). Infringement may be proven by literal
7 infringement, or under the doctrine of equivalents. Gen. Elec. Co. v. Int’l Trade Com’n,
8 670 F.3d 1206, 1214 (Fed. Cir. 2012).
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In its Markman order, 2 the court construed the term “first program that is

10 executing on a computer” as “a set of computer instructions running on a computer that
11 enables the computer to perform a specific operation or operations.” (Markman Order
12 (Dkt. # 159) at 13.) Additionally, the court construed “code server” as “an identifiable
13 set of computer instructions, different than the first program, which maintains and
14 provides to the first program upon request module information for one or more modules
15 of a multi-module program.” (Id. at 17.) In its analysis of “code server,” the court
16 further observed: “This is not to say that the code server and the first program are the
17 same. Indeed, they are certainly distinct from one another.” (Id.)
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Microsoft argues that summary judgment of non-infringement regarding the “code

19 server” limitation is appropriate because REC and its expert, Dr. Levine, have admitted
20 that the alleged “code server” in Microsoft’s accused software is not different than the
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See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

ORDER- 8

1 “first program,” as the claims and the court’s construction require. (Mot. at 8.)
2 Specifically, Microsoft contends that Dr. Levine alleges that Microsoft’s .NET
3 Framework infringes the Patent-in-Suit when the .NET Common Language Runtime
4 (“CLR”) locates and prepares to read from a disk a single code file. 3 (Id. at 10.) Thus,
5 Microsoft asserts that REC’s theory of infringement requires that both the “first program”
6 and the “code server” reside within single program—the .NET CLR—and are thus not
7 different from one another such that Microsoft’s accused .NET Framework does not
8 infringe.
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REC responds that the accused .NET Framework does in fact satisfy the “code

10 server” limitation. (Resp. at 4-5.) REC asserts that in the accused .NET Framework, it
11 has identified an “identifiable set of computer instructions” (Assembly::Create, Global
12 Assembly Cache, and BindToObject) as the “code server,” and an “identifiable set of
13 computer instructions” (AppDomain) as the “first program.” (Id.) REC asserts that the
14 identified “code server” performs the operation of “maintaining and providing to the first
15 program upon request module information for one or more modules of the multi-module
16 program,” as required by the court’s construction. (Id.) Accordingly, REC asserts that it
17 has proof that the accused product satisfies each requirement in the claim construction for
18 “code server.” (Id.)
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Additionally, REC disputes Microsoft’s contention that simply because the Dr.

20 Levine locates the “code server” and the “first program” within a single program—the
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Microsoft contends that Dr. Levine’s expert report is REC’s only evidence for

22 infringement.
ORDER- 9

1 .NET CLR—Microsoft cannot infringe. REC argues that a “program,” defined by the
2 court as “a set of instructions that enables the computer to perform a specific operation or
3 operations” (Markman Order at 13), certainly permits a “program” to be comprised of
4 multiple programs. In other words, according to REC, the “code server” and the “first
5 program” may be different sets of instructions that enable the computer to perform a
6 specific operation(s), yet still both reside in the same larger program—the .NET CLR.
7 Moreover, REC asserts that Microsoft’s own expert agrees that each of the separate sets
8 of instructions identified by Dr. Levine within the CLR would meet the court’s
9 construction of “program.” (Resp. at 6-7.)
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The court agrees with REC and finds that a material issue of fact exists as to

11 whether, under REC’s theory of infringement, the “code server” and the “first program”
12 are different, as required by the court’s construction. Although the court’s construction
13 requires the “code server” and the “first program” to be different programs, nothing in the
14 in the court’s construction prohibits a theory of infringement where the “code server” and
15 “first program” both reside within a larger “program,” as the court has defined the word.
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Here, Dr. Levine has identified an “identifiable set of computer instructions” that

17 REC asserts constitutes the “code server” and a different “identifiable set of computer
18 instructions” that REC asserts constitutes the “first program.” With respect to the “code
19 server,” Dr. Levine points to three portions of the .NET Framework source code or
20 Windows operating system that REC asserts constitutes the “code server”: (1) the Global
21 Assembly Cache; (2) the “BindtoObject” computer instructions, which are responsible
22 for searching the Global Assembly Cache for an assembly; and (3) the
ORDER- 10

1 “Create::Assembly” computer instructions, which are responsible for the operation of
2 creating the assembly sub-element of a domain assembly with a mapped copy of the
3 assembly manifest. (Levine Rpt. at 50.) Regarding the “first program” limitation, Dr.
4 Levine identifies a separate “identifiable set of computer instructions” that REC contends
5 meets this limitation—the “AppDomain” program found in the .NET Framework.
6 (Levine Rpt. at 95.) Dr. Levine asserts that the “identifiable set of computer instructions”
7 that constitute the “code server” and the “first program” have no overlap in terms of
8 source code or computer function and constitute an identifiable set by the nature in which
9 they are grouped, as found in Microsoft’s source code. These assertions, with all
10 justifiable inferences drawn in REC’s favor, create a genuine issue of material fact such
11 that summary judgment is not appropriate. Whether the identified computer instructions
12 are in fact different is a question for the jury, after hearing all of the evidence.
13 C.

Direct Infringement

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To succeed on a theory of contributory or induced infringement, REC must show

15 direct infringement of the ’936 Patent. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d
16 1301, 1317 (Fed. Cir. 2009); see also Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851, 858
17 (Fed. Cir. 2006). Because the claims asserted by REC are method claims, Microsoft’s
18 sale of the .NET Framework as part of the accused Windows operating systems, without
19 more, does not infringe the ‘’936 Patent. Lucent, 580 F.3d at 1317. Direct infringement
20 occurs only when someone performs the claimed method. Id. To prove direct
21 infringement, REC need only show that at least one person performed the methods
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ORDER- 11

1 claimed in the Patent-in-Suit. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 850 (Fed.
2 Cir. 2010).
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Microsoft contends that REC has no evidence of direct infringement and therefore

4 REC’s claims of infringement fail as a matter of law. 4 (Mot. at 12-14.) In response, REC
5 asserts that it has ample evidence of direct infringement. (Resp. at 11-12.) REC cites to
6 (1) a survey conducted by REC expert, Dr. William Wecker, that found approximately
7 88% of software developers have developed .NET programs; (2) a 2004 “Forrester”
8 survey of North American enterprises that found that 56% of respondents named .NET as
9 their primary development platform; and (3) Microsoft’s identification of approximately
10 3000 different .NET programs (or applications). (Id.) REC further contends, through its
11 expert, Dr. Levine, that running a .NET application necessarily results in direct
12 infringement because REC’s theory of infringement is fundamental to any .NET
13 program. (Id. at 11 (citing Levine Rpt. at 110-11 (“In this instance, it is not possible for a
14 user to run a .NET [program] without searching the ‘code server’ for ‘module
15 information’ in order to ‘form an association’ in a manner required by the claims.”).)
16 Additionally, REC contends that Microsoft has provided instructions to third parties to
17 use .NET programs, and provides as an example Microsoft’s Visual Studio program.
18 (Levine Rpt. at 111.)
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In this matter, REC has not accused Microsoft of direct infringement, but of induced and
contributory infringement. (Complaint (Dkt. # 1) ¶ 15.)

ORDER- 12

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Contrary to Microsoft’s position that REC’s circumstantial evidence is “not well

2 taken,” circumstantial evidence may be used to show direct infringement. In Toshiba
3 Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012), through circumstantial evidence,
4 the Federal Circuit found sufficient evidence to create a genuine issue of material fact and
5 stated the following:
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Direct infringement can be proven by circumstantial evidence.
Circumstantial evidence must show that at least one person directly
infringed an asserted claim during the relevant time period.

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8 Id. at 1364 (citations and quotations omitted). Indeed, “[a]lthough the evidence of
9 infringement is circumstantial, that does not make it any less credible or persuasive.”
10 Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d 1490, 1503 (Fed. Cir. 1986)).
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Nevertheless, Microsoft asserts that REC’s theory of infringement encompasses

12 only “one possible flavor of the .NET Framework, namely the specific use of the .NET
13 Framework in which a .NET program makes use of a dependent .NET assembly stored in
14 the GAC.” (Mot. at 12.) Thus, according to Microsoft, to establish infringement, REC
15 must prove that users of the .NET Framework (within the Windows operating system)
16 actually use the software in the precise way REC alleges infringes. (Id.) REC does not
17 appear to disagree with Microsoft’s assessment of the law or REC’s theory of
18 infringement, but counters that any execution of a .NET program necessarily implicates
19 what Microsoft characterizes as “one possible flavor of the .NET Framework.” (Resp. at
20 12.)
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The court agrees with REC and finds that, based on a Dr. Levine’s opinion and

22 REC’s circumstantial evidence, a reasonable jury could find at least one instance of direct
ORDER- 13

1 infringement. Here, Dr. Levine asserts that any execution of a .NET program necessarily
2 results in direct infringement of the patent. (Levine Rpt. at 111.) Additionally, REC’s
3 provides evidence that the .NET Framework is a popular development platform and that
4 thousands of .NET programs have been created through the platform. (Resp. at 11-12.)
5 To that end, Dr. Levine further opines that .NET developers necessarily that run .NET
6 programs during development and that Microsoft encourages the use of at least one .NET
7 program (Visual Studio). (Levine Rpt. at 105, 111.) Based on this evidence, a
8 reasonable jury could infer from the circumstantial evidence that at least one person has
9 run a .NET program and credit Dr. Levine’s testimony to conclude that direct
10 infringement has occurred. See Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,
11 1326 (Fed. Cir. 2009) (reversing district court finding of no direct infringement where
12 expert testimony, accepted as true for summary judgment purposes, established that
13 accused blenders will necessarily infringe under certain circumstances and factual
14 evidence supported the occurrence of those circumstances). Thus, summary judgment is
15 not appropriate.
16 D.

Indefiniteness Regarding the Word “Program” Found in the ’936 Patent

17

The requirement of claim definiteness is set forth in the second paragraph of 35

18 U.S.C. § 112, which requires claims “particularly pointing out and distinctly claiming the
19 subject matter which the applicant regards as his invention.” 35 U.S.C. § 112. “[O]nly
20 claims not amenable to construction or insolubly ambiguous are indefinite.” Star
21 Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008).
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ORDER- 14

1

Microsoft does not argue that the claim term “program” as found in the language

2 Patent-in-Suit is indefinite because it cannot be construed, but instead asserts, that the
3 word “program,” as construed by the court, lacks boundaries in the manner in which REC
4 applies the word to the accused .NET Framework. (Mot. at 16.) In and of itself, a
5 reduction of the meaning of a claim term into words is not dispositive of whether the term
6 is definite. Star Scientific, 537 F.3d at 1371-72; Halliburton Energy Services, Inc. v. M-I
7 LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“Even if a claim term’s definition can be
8 reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot
9 translate the definition into meaningfully precise claim scope.”). And, if reasonable
10 efforts at claim construction result in a definition that does not provide sufficient
11 particularity and clarity to inform skilled artisans of the bounds of the claim, the claim is
12 insolubly ambiguous and invalid for indefiniteness. Star Scientific, 537 F.3d at 1371-72.
13 Indefiniteness is a purely legal issue reviewed without deference by the Federal Circuit.
14 Id. at 1373. Under the patent statutes, a patent enjoys a presumption of validity, which
15 can be overcome only through facts supported by clear and convincing evidence. See 35
16 U.S.C. § 282; U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1563 (Fed. Cir. 1997).
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To properly analyze Microsoft’s argument, the court must start with its Markman

18 constructions. As stated, the court construed “first program that is executing on a
19 computer” as “a set of computer instructions running on a computer that enables the
20 computer to perform a specific operation or operations.” (Markman Order at 13.) The
21 court also construed “second multi-module program” to mean “a set of computer
22 instructions that comprises two or more modules and enables the computer to perform a
ORDER- 15

1 specific operation or operations.” (Id.) Inherent in these constructions is the definition of
2 the word “program” as “a set of computer instructions that enables the computer to
3 perform a specific operation or operations.” This definition of the word “program” was
4 utilized in the construction of the term “code server,” construed as “an identifiable set of
5 computer instructions, different than the first program, which maintains and provides to
6 the first program upon request module information for one or more modules of a multi7 module program.” (Id. at 17.)
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Seizing on this definition of the word “program,” Microsoft argues that the

9 definition provides “no “articulable” principal as to how to determine how many
10 instructions constitute a “set,” or from how few or how many disparate sources
11 instructions may be aggregated and still considered a “set,” or what separates one set
12 from another set. (Mot. at 16.) As a result, Microsoft contends that REC may arbitrarily
13 identify various parts of the .NET CLR or of a .NET program to suit its infringement
14 theory. Thus, Microsoft asserts that the term is invalid due to indefiniteness. (Mot. at
15 16.) REC responds that one of ordinary skill in the art at the time of the invention would
16 understand the word “set” and the phrase “that enables a computer to perform a specific
17 operation or operations.” (Resp. at 15-16.) REC further asserts that its identification of
18 claim limitations are in no way arbitrary, because the identified sets of instructions is a
19 named set of instructions as grouped by Microsoft’s own software developers. (Id. at
20 18.) Therefore, REC asserts there is no ambiguity in the court’s construction and the
21 term is not indefinite. (Resp. at 15-16.)
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ORDER- 16

1

The court agrees with REC and concludes that the word “program,” as defined by

2 the court does not render the claims of the Patent-in-Suit indefinite. As an initial matter,
3 the word “program” was not construed in isolation, but instead in the context of the
4 disputed claim terms “first program that is executing on a computer” and “second multi5 module program.” Consequently, the definition of the “program,” does not appear by
6 itself, but instead is confined by the surrounding claim language and the surrounding
7 language of the constructions for the terms “first program,” “second multi-module
8 program,” and “code server.” For instance, the term “second multi-module program” is
9 not defined as an arbitrary set of computer instructions, but instead as a “program” that
10 must contain at least two modules and an embedded reference to another module.
11 Similarly, the term “code server” requires the set of computer instructions to be different
12 than the first program and that the instructions perform the function of maintaining and
13 providing module information. Such surrounding words provide clarity to one of skill in
14 the art.
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Moreover, and critical to the examination of indefiniteness, the evidence before

16 the court of how one of ordinary skill in the art would understand the court’s definition of
17 “program” supports a finding of definiteness. REC has placed before the court testimony
18 from its expert Dr. Levine—who the court assumes for purposes of this motion is a
19 person of ordinary skill in the art—that he does not find the court’s definition of
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ORDER- 17

1 “program” insolubly ambiguous. (Resp. at 15-16 (referencing 2nd Supp. Levine Rpt. 5
2 (Dkt. # 209-4) at 4-7.) Although Dr. Levine’s testimony is arguably biased towards REC,
3 because Microsoft has failed to submit any evidence to the contrary, it remains as the
4 only probative evidence as to how one of ordinary skill in the art would understand the
5 court’s construction. Accordingly, Microsoft has failed to demonstrate by clear and
6 convincing evidence that court’s definition of the word “program” renders the claims of
7 the patent insolubly ambiguous to one of ordinary skill in the art. Thus, the court denies
8 Microsoft’s motion for indefiniteness with respect to the court’s construction of the
9 “program” found in the claims of the Patent-in-Suit.
10 E.

Indefiniteness Regarding the Term “forming an association . . .” Found in the
’936 Patent

11
In a similar argument, Microsoft asserts that REC’s application of the court’s
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construction of the term “forming an association of said multi-module program by said
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first program” renders the limitation invalid as indefinite “because it does not distinctly
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claim the nature of the ‘association’ that is ‘formed.’” (Mot. at 22.) The court construed
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the limitation “forming an association of said multi-module program by said first
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program” as “the first program forms a data structure with information (such as dynamic
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links) concerning how one or more modules of a second multi-module program link to
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one or more other modules.” (Markman Order at 33.) Microsoft contends that REC has
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The Microsoft and REC dispute whether the information contained in the second
supplemental report of Dr. Levine constitutes new expert opinions that are untimely (and should
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be disregarded) under the court’s scheduling order. (Reply at 4-6; see generally Sur-reply.) The
court addresses this disagreement below and concludes that it will consider the contents of the
22 second supplemental report of Dr. Levine. (Infra § III.E)
ORDER- 18

1 exploited the language “information . . . concerning,” of the court’s construction, by
2 identifying portions of the .NET CLR that do not form a data structure with information
3 that actually describes how one or more modules link to one another. (Mot. at 22.)
4 According to Microsoft, REC’s theory of infringement meets the “forming an association
5 . . .” limitation through a pointer into the beginning of a block of “heterogeneous data
6 inside which such various pieces of linkage information might somewhere be located.”
7 (Id.)
8

REC responds that Microsoft mischaracterizes its infringement theory and that it

9 does not attempt to exploit the court’s construction of the “forming an association . . .”
10 limitation by asserting infringement based on a data structure that does not contain
11 information that actually describes how one or more modules link to other modules.
12 (Resp. at 22.) Instead, REC contends that to meet the “forming an association . . .”
13 limitation it identifies a data structure that includes precise linkage information, including
14 for each discrete module, the names and version numbers of the modules that are
15 referenced by that discrete module. (Id. (citing Levine Rpt. 95-100; 2nd Supp. Levine
16 Rpt. at 48-54).)
17

As an initial matter, Microsoft asserts that REC has changed its theory of

18 infringement regarding the “forming an association . . .” limitation to include citations to
19 “brand-new source code” through the second supplemental report of Dr. Levine that was
20 served after Microsoft filed the present motion for summary judgment. (Reply at 4-6,
21 11.) Microsoft asserts that this new theory should be disregarded by the court. (Id. at 422 6.) REC responds that the second supplemental report only responds to new invalidity
ORDER- 19

1 arguments and opinions that were provided in an amended invalidity report by
2 Microsoft’s expert, Dr. Kogan, and in Microsoft’s present summary judgment motion
3 filed one week after the amended report of Dr. Kogan. (Sur-reply at 3.) From the
4 parties’ briefing, the court cannot fully trace the history of the numerous expert reports
5 that appear to have been filed in this case, and it appears that both Microsoft and REC
6 have served untimely expert reports on the issues of validity. (See Reply at 4-6 (“Yet it
7 was not until after . . ., Dr. Levine was deposed . . . and expert discovery closed, that REC
8 proceeded to serve its ‘supplemental’ reports . . .”); Sur-reply at 3 (“Dr. Levine’s Second
9 Supplemental Report responds to new invalidity arguments and opinions that were
10 provided after Dr. Levine submitted his validity report in the Amended Kogan Invalidity
11 Report (which was untimely served 47 days after Microsoft’s initial invalidity report)”
12 (emphases removed).)
13

Nevertheless, having examined Dr. Levine’s second supplemental report, the court

14 concludes that the report addresses new invalidity positions raised by Microsoft and its
15 expert. (See 2nd Supp. Levine Rpt. at 4 (“In this Report, I respond to several new
16 invalidity opinions offered by Dr. Kogan in the Amended Expert Report . . . regarding the
17 invalidity of [the Patent-in-Suit].”).) As a result, the court will consider the information
18 contained in second supplemental report, but will permit Microsoft to re-take the
19 deposition Dr. Levine with the limitations set forth in the conclusion of this order.
20 However, regardless of whether the court considers the information contained in Dr.
21 Levine’s second supplemental report, the result is the same—as a matter of law, the court
22
ORDER- 20

1 cannot say that its construction of the “forming an association . . .” limitation or REC’s
2 application thereof, renders the limitation indefinite.
3

Similar to the word “program,” the “forming an association” limitation and its

4 construction are confined by the surrounding words. Here, the court’s construction
5 requires that the limitation is only met through infringement by the identification of a
6 data structure in an accused product. Additionally, the court’s construction demands that
7 the data structure include information concerning how modules of the second multi8 module program link to one another. These requirements would guide a person of
9 ordinary skill and provide clarity to the limitation. Microsoft’s argument that REC’s
10 theory of infringement merely indentifies a “pointer” to a block of heterogeneous data
11 does not render the limitation indefinite, but instead relates to whether REC can
12 successfully prove infringement.
13

Moreover, Microsoft has failed to demonstrate that one of ordinary skill in the art

14 would find the construction insolubly ambiguous. In fact, Microsoft has provided the
15 court with no evidence to that effect. (See generally Mot.) Indeed, the only evidence
16 before the court as to whether one of ordinary skill in the art would find the construction
17 indefinite is the testimony of Dr. Levine who unequivocally states that the court’s
18 construction is not ambiguous. (2nd Supplemental Rpt. at 40-41.) Thus, the court cannot
19 find clear and convincing evidence that the construction of the “forming an association
20 . . .” limitation is indefinite. Accordingly, summary judgment is not appropriate.
21
22
ORDER- 21

1 F.

Written Description for “forming an association . . .” Limitation

2

The written description requirement, set forth in the first paragraph of 35 U.S.C. §

3 112, states: “The specification shall contain a written description of the invention, and of
4 the manner and process of making and using it, in such full, clear, concise, and exact
5 terms as to enable any person skilled in the art . . . to make and use the same.” 35 U.S.C.
6 §112. Courts have construed the “written description” clause of section 112 to mandate
7 that the specification satisfy two closely related requirements. First, it must describe the
8 manner and process of making and using the invention so as to enable a person of skill in
9 the art to make and use the full scope of the invention without undue experimentation.
10 See Tyler v. City of Boston, 7 Wall., 74 U.S. 327, 330 (1868); AK Steel Corp. v. Sollac &
11 Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). Second, it must describe the invention
12 sufficiently to convey to a person of skill in the art that the patentee had possession of the
13 claimed invention at the time of the application, i.e., that the patentee invented what is
14 claimed. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1320-21 (Fed. Cir.
15 2003). These two requirements usually rise and fall together. LizardTech, Inc. v. Earth
16 Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). That is, a recitation of how to
17 make and use the invention across the full breadth of the claim is ordinarily sufficient to
18 demonstrate that the inventor possesses the full scope of the invention, and vice versa.
19 Id.
20

It is well-established that the “hallmark of written description is disclosure.”

21 Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The level
22 of detail required to satisfy the written description requirement depends, in large part, on
ORDER- 22

1 the nature of the claims and the complexity of the technology. Id. As the Federal Circuit
2 explained in Ariad, the written description requirement “does not demand either
3 examples or an actual reduction to practice; a constructive reduction to practice that in a
4 definite way identifies the claimed invention can satisfy the written description
5 requirement.” Id. at 1352 (citing Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 13666 67 (Fed. Cir. 2006)). That said, a “mere wish or plan” to obtain the claimed invention is
7 not sufficient. Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed.
8 Cir. 2011) (citing Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566
9 (Fed. Cir. 1997)). “Compliance with the written description requirement is a question of
10 fact but is amenable to summary judgment in cases where no reasonable fact finder could
11 return a verdict for the nonmoving party.” PowerOasis, Inc. v. T–Mobile USA, Inc., 522
12 F.3d 1299, 1307 (Fed. Cir. 2008).
13

Microsoft asserts that REC’s infringement theory for the “forming an association

14 . . .” limitation requires that the ‘module information’ (which is the information used to
15 form an association) be read directly from the code modules themselves, rather than from
16 the “code server,” as taught in the specification of the Patent-in-Suit. (Mot. at 26.) As a
17 result, Microsoft argues that REC’s expansive reading of the “forming an association . . .”
18 limitation is unsupported by the specification of the Patent-in-Suit, and therefore lacks
19 the requisite written description. (Id. at 25-26.) REC responds that the specification
20 explains “forming an association” in a manner that aligns with the court’s construction of
21 the limitation and that expert testimony confirms that one of ordinary skill would have
22
ORDER- 23

1 understood that the inventor was in possession of the concept of “forming an association”
2 when the patent application was filed. (Resp. at 26.)
3

Here, Microsoft has failed to demonstrate that the specification lacks a written

4 description for the “forming an association . . .” limitation. Instead, Microsoft merely
5 argues that REC’s application of the court’s construction is beyond the scope of the
6 specification. 6 This argument relates to the propriety of the court’s Markman
7 construction and indirectly to whether REC’s infringement theory is beyond the scope of
8 that construction. The court fails to understand how Microsoft’s argument supports its
9 contention that the claims are unsupported by the specification in the eyes of a person of
10 ordinary skill in the art. Moreover, as the issue has not been raised by either party, the
11 court declines to revisit its claim construction of the “forming an association . . .”
12 limitation.
13

Moreover, with respect to the written description analysis, the court concludes that

14 an issue of fact exists as to whether the specification adequately disclosed a written
15 description for the “forming an association . . .” limitation. Specifically, the specification
16 describes the limitation in question by stating the following: “linkage information which
17
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6

Microsoft cites a litany of cases presumably to support its contention that the claims
lack written description because the patent holder’s infringement theory—a based on the court’s
construction—is beyond the scope that is described in the specification. (Mot. at 27.) Each of
these cases, however, analyzes the written description requirement by examining the disclosures
of the specification and the claim language, as opposed to examining the disclosures of the
specification and the court’s construction (and the following application of the court’s
construction by the patent holder). See, e.g., Gentry Gallery v. Berkline, 134 F.3d 1473 (Fed.
Cir. 1998) (finding claims to a section sofa with recliner controls that did not limit the location of
the controls lacked written description in the specification which only discussed sofas where the
controls were located in a central location).
ORDER- 24

1 point to additional modules and which collectively forms an association linking together
2 at least parts of a complete program.” (’936 Patent at 3:13-16.) Additionally, the
3 specification recites that the “user then adds this code module information to his internal
4 association table.” (Id. at 5:18-19.) Finally, Dr. Levine testified that one of ordinary skill
5 in the art would understand that the inventor was in possession of the concept of
6 “forming an association,” as construed by the court. (2nd Supp. Levine Rpt. at 57 (“In
7 my opinion, the specification of the ‘’936 patent conveyed to those of ordinary skill in the
8 art that the inventor was in possession of the claimed subject matter, including the
9 limitation ‘forming an association,’ as of the filing date.”).) Based on this evidence, a
10 reasonable jury could determine that a person of ordinary skill in the art would determine
11 that the written disclosure requirement had been met. Accordingly, the court denies
12 summary judgment on this issue.
13

IV.

14

CONCLUSION

For the foregoing reasons, court DENIES Microsoft’s motion for summary

15 judgment (Dkt. # 188). Microsoft may re-take the deposition of Dr. Levine to address
16 any new opinions set forth in his first supplemental report, served on June 15, 2012, and
17 //
18 //
19 //
20 //
21 //
22 //
ORDER- 25

1 his second supplemental report, served on July 2, 2012. The deposition shall be limited
2 in length to two hours and the parties shall bear their own costs.
3

Dated this 31st day of August, 2012.

4

6

A

7

JAMES L. ROBART
United States District Judge

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ORDER- 26