to the structures disclosed in a specification for the
performance of the method. See O.I. Corp. v. Tekmar Co. Inc.,
115 F.3d 1576, 1583 (Fed.Cir. 1997); see also Comark
Communications, 156 F.3d at 1186 (method claim).
The prosecution history also does not compel the interpretation
urged by Lexar. "Unless altering claim language to escape an
examiner rejection, a patent applicant only limits claims during
prosecution by clearly disavowing claim coverage." See York
Prods., Inc. v. Central Tractor, 99 F.3d 1568, 1575 (Fed.Cir.
1996) (holding that "inventor's conduct during the administrative
process for acquiring a patent did not evince a clear disavowal
of claim scope"). The prosecution history identified by Lexar
does not demonstrate a clear disavowal of a dynamic addressing
3. Issue No. 3: Designating The Address Of A Sector
Lexar also contends that its device does not cause the
controller to designate the address of at least one non-volatile
memory sector, as is required by element (c). In Lexar's
device, the memory is divided into "blocks" and each "block" is
divided into 16 or 32 "pages." Each page corresponds to a
magnetic disk sector. In the Claim Construction Order the Court
held that a "non-volatile memory sector" is the "basic unit of
erase for the non-volatile memory." In the Lexar device, however,
the basic unit of erase is a "block." Thus, a "block" in the
Lexar device is a "sector" in the '987 as "sector" is defined in
the Claim Construction.
Lexar argues that since its device reads and writes to a
"page," its controller designates an address of a "page" rather
than a "block." Therefore, Lexar's controller does not designate
the address of at least one non-volatile memory sector, as is
required by element (c) of Claim 10 and summary judgment in favor
of Lexar must be granted. For Lexar's device to practice element
(c) of Claim 10, Lexar's argument goes, its controller would have
to read and write to a "block" instead of a "page," since a block
is the basic unit of erase in Lexar's device.
The issue here is that Sandisk's "sector" — the basic unit of
erase — corresponds to one magnetic disk sector, while in
Lexar's device a "block" — the basic unit of erase — is
partitioned into 16 or 32 pages, each of which corresponds to a
magnetic disk sector. In other words, a Lexar "block" corresponds
to more than one magnetic disk sector while a Sandisk "block"
[sector] corresponds to only one magnetic disk sector. This
difference, however, does not defeat literal infringement.
First, in order to "designate" an address of a page, Lexar's
controller must first "designate" the address of the block in
which the page is located. Thus, Lexar's controller does in fact
identify the address of a sector [block]. Indeed, Lexar's
non-infringement opinion letter describes Lexar's device as
identifying a block address and a page within the block.
Second, the fact that each block has 16 or 32 pages, and thus
multiple user data portions and overhead portions is of no
consequence. The Court construed Claim 10 to require that each
non-volatile memory sector [block] have "at least one user data
portion and one overhead data portion, but is not limited to
only one data and only one overhead data portion." Claim
Construction Order at 4 (emphasis added).
4. Issue No. 4: A Digital Camera Is Not A Computer System
The '987 describes a method of operating a "computer system."
According to Lexar, the patent describes a "computer system" as a
system that includes (1) a microprocessor, (2) a main memory, (3)
a memory system, and (4) input/output devices connected by a
common system bus. Lexar contends that the digital camera in
which its PC Card is used is not a "computer system" because
Sandisk did not
specifically identify a digital camera as a computer system in
Lexar's argument is unpersuasive. Sandisk has produced evidence
that Lexar's device includes each element of a computer system as
defined by Lexar and Lexar has not challenged this evidence.
Indeed, Lexar does not even argue that a digital camera does not
include the elements of a computer system as Lexar defines such a
5. Issue No. 5: The Knowledge Requirement
Finally, Lexar argues that it cannot have contributorily
infringed because Sandisk has not proved as a matter of law that
Lexar subjectively believed that the use of its PC Cards in
digital cameras infringed the '987. Lexar misstates the law. All
that is required for a finding of contributory infringement is
(1) knowledge of the activity that is alleged to be infringing
(here, use of the PC Cards in digital cameras), and (2) knowledge
of the patent (here, the '987). See Hewlett-Packard Co. v.
Bausch & Lomb, Inc., 909 F.2d 1464, 1469 n. 4 (Fed.Cir. 1990);
Nordberg Manufacturing Co. v. Jackson Vibrators, Inc., 153
U.S.P.Q. 777, 784-85, 1967 WL 7708 (N.D.Ill. 1967) (noting that
if subjective belief of infringement were required for a finding
of contributory infringement, an infringer would be insulated
from liability made prior to a final judgment of infringement),
rev'd on other grounds, 393 F.2d 192 (7th Cir. 1968). Lexar
does not and cannot dispute that it knew both facts before this
lawsuit was filed.
In a separate motion for summary judgment Lexar contends that
Claim 10 of the '987 patent is invalid as a matter of law for two
reasons. First, Lexar argues that Claim 10 was "anticipated" by a
single prior art reference, primarily the '248 patent, and is
therefore invalid under 35 U.S.C. § 102(a) and 102(b).
Second, even if Claim 10 was not anticipated, Lexar argues that
it would have been obvious to one of ordinary skill in the art at
the time of the alleged invention and thus is invalid under
35 U.S.C. § 103.
A. Burden of Proof
A patent is presumed to be valid. See 35 U.S.C. § 282. As a
result, Lexar must prove its invalidity defense by "clear and
convincing evidence." See Carella v. Starlight Archery & Pro
Line Co., 804 F.2d 135, 138 (Fed.Cir. 1986). Accordingly, Lexar
is entitled to summary judgment only if no reasonable trier of
fact could conclude that Lexar had not proved invalidity by clear
and convincing evidence. Or, to put it another way, summary
judgment must be denied if a reasonable trier of fact could
conclude that Lexar had not proved invalidity by clear and
B. Anticipation (35 U.S.C. § 102)
The patent statute provides, in relevant part, that a patent is
(a) the invention was known or used by others in
this country, or patented or described in a printed
publication in this or a foreign country, before the
invention thereof by the applicant for patent, or
(b) the invention was patented or described in a
printed publication in this or a foreign country or
in public use or on sale in this country, more than
one year prior to the date of the application for
patent in the United States.
35 U.S.C. § 102(a) & (b) (emphasis added).
In order to prove anticipation under section 102, Lexar must
prove by clear and convincing evidence that "all of the elements
and limitations of the claim are found within a single prior art
reference." Scripps Clinic and Research Found. v. Genentech,
Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). Every element of the
claim must be literally present in the prior art reference. See
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed.Cir.
Unless all the elements are found in a single piece of prior art
in exactly the same situation and united the same way to perform
the identical function, there is no anticipation. Id. Moreover,
to constitute anticipation, the prior art reference must describe
the claimed invention in sufficient detail to place it in the
possession of a person or ordinary skill in the field of the
invention. In re Spada, 911 F.2d 705, 708 (Fed.Cir. 1990).
Lexar contends that Claim 10 of the '987 patent was known by
Dr. Yukun Hsia at McDonnell-Douglass Corporation and described by
him in the '248 patent issued in 1983 and in published lecture
notes of a series of lectures given by Dr. Hsia in China in 1984.
The Court concludes that there is a genuine dispute as to
whether the '987 was anticipated by the above-described prior
art. At a minimum, there is a genuine dispute as to whether the
prior art disclosed the element of Claim 10 requiring the
partitioning of a non-volatile memory sector into at least one
user data portion and one overhead portion. Lexar has also not
demonstrated by clear and convincing evidence that the prior art
disclosed the use of floating gate memory cells, let alone
demonstrate that no reasonable trier of fact could find
C. Obviousness (35 U.S.C. § 103)
Section 103 provides that a patent is invalid "if the
differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter
pertains." 35 U.S.C. § 103(a). Secondary "objective"
considerations are essential components of the obviousness
determination. See In re Denis Rouffet, 149 F.3d 1350, 1355
(Fed.Cir. 1998). These secondary considerations include (1) the
commercial success of the patented device, (2) the failure of
others to develop the patented device, and (3) licensing by
competitors. See id. Secondary considerations of
non-obviousness may be used to rebut a prima facie case of
obviousness based on prior art references. See WMS Gaming, Inc.
v. Intern. Game Technology, 184 F.3d 1339, 1359 (Fed.Cir. 1999).
As with anticipation, there is a genuine dispute as to whether
Lexar has proved by clear and convincing evidence that the '987
was obvious and no reasonable trier of fact could find otherwise.
First, while Lexar's experts declare that based on Dr. Hsia's
memory system and other prior art the '987 would have been
obvious to one skilled in the art, Sandisk's experts declare that
Dr. Hsia's prior art actually teaches away from the '987. The
Court cannot resolve this dispute on summary judgment. For this
reason alone Lexar's motion must be denied.
Second, the secondary considerations also preclude summary
judgment. Sandisk has produced evidence that its products which
incorporate Claim 10 of the '987 have been a commercial success
and that competitors who have tried to market similar products
that do not include Claim 10 have failed. There is also evidence
in the record that Sandisk's competitors have licensed the '987
technology. That competitors are willing to pay millions of
dollars to license the '987 is evidence that the '987 was not
Lexar contends that Sandisk has not shown that the commercial
success of its memory cards is casually related to Claim 10. But
Sandisk has offered evidence that competitors that attempted to
market flash memory cards that did not include the elements of
Claim 10 failed. That evidence supports an inference that the
elements of Claim 10 have contributed to the success of Sandisk's
cards; on summary judgment the Court must draw that inference.
Lexar also challenges Sandisk's "licensing" evidence, noting
that the licenses are for all of Sandisk's patent portfolio, not
just the '987. That argument goes to the weight of Sandisk's
evidence and does not
compel summary judgment on a factual determination which Lexar
must prove by clear and convincing evidence.
For the foregoing reasons Sandisk's motion for summary judgment
of contributory infringement is GRANTED and Lexar's
counter-motion for summary judgment of non-infringement is
DENIED. The undisputed evidence establishes that Lexar's memory
device, when placed in operation by a digital camera user,
practices each element of Claim 10 of the '987.
Lexar's motion for summary judgment of invalidity is also
DENIED. Based on the record presently before the Court, a
reasonable trier of fact could conclude that Lexar had not proved
invalidity by clear and convincing evidence.
IT IS SO ORDERED.