The opinion of the court was delivered by: Hamilton, U.S. District Judge.
The motion of defendants The Object People, Inc. and The Object People
(U.S.) Inc. (collectively referred to as "defendants" or "TOP") for
summary judgment came on for hearing on December 13, 2000, before this
court, the Honorable Phyllis J. Hamilton presiding. Defendants appeared
by their counsel Michael J. Bettinger. Plaintiff Persistence Software,
Inc. ("Persistence") appeared by its counsel L.J. Chris Martiniak. Having
carefully reviewed the parties' papers and considered their arguments and
the relevant legal authority, and good cause appearing, the court hereby
GRANTS summary judgment for the reasons stated below.
The present case stems from alleged patent infringement. Persistence
alleges that defendants infringed a number of its software patents.
Specifically, Persistence alleges that defendants infringed United States
Patent No. 5,615,362 ("the '362 patent") and United States Patent No.
5,706,506 ("the '506 patent").*fn1 Both patents are entitled "Method and
Apparatus for Managing Relational Data in an Object Cache." The '362
patent contains at least 11 claims, numbers 1-7 and 11 are at issue in the
present litigation. The '506 patent contains at least 14 claims, numbers
1, 4, 6 and 12-14 are at issue in the present litigation.
The software at issue in the subject patents provides a method and an
apparatus for accessing and managing information stored in relational
databases while using object-oriented applications. Object-oriented
applications, such as reservation programs for airlines, are software
programs that use objects containing both data (e.g., a passenger's name)
and the functional behavior to be performed by the application (e.g.,
seat booking). Prior to the developments contained in the subject
inventions, users of object-oriented applications were not able to access
data stored in relational databases and were not able to store the data
used in the programs in relational databases.
In early 1991, Nippon Steel Corporation ("Nippon") offered to make an
investment in the Exploder. As a result, Jonathon Schwartz, Lighthouse's
founder, Chris Keene, Derek Henninger, and Richard Jensen formed
Persistence (initially named Fulcrum Innovations, Inc.) to "commercialize
the Exploder prototype."
Shortly thereafter, Chris Keene contacted Skinner to help translate the
program from the computer language Objective-C to C ; the latter is
compatible with the Sun workstation. The translation was completed around
November of 1991. While the Exploder software was now in C , no design
changes were made. Accordingly, the translated Exploder was the same as
the original Exploder created by Skinner.
By January of 1992, Persistence developed both a user's manual and
functional specifications for the Exploder prototype. By March of 1992,
Persistence had changed the name of the software from the Exploder to
Persistence. In addition, around this time, Persistence began marketing
its software. In connection with its marketing efforts, Persistence
attended the Object World Trade Show on July 21, 1992 and further
advertised its software.
Persistence's marketing efforts paid off. By July 31, 1992, Persistence
had entered into contracts with Du Pont and Anderson Consulting. Said
contracts provided a license to Du Pont and Anderson, respectively, for
the beta version of the Persistence software in exchange for $10,000. On
August 17, 1992, Persistence shipped the beta versions to Du Pont and
From August 17, 1992, until approximately March of 1993, Persistence
continued to work on the software, fixing bugs brought to its attention
by Du Pont and Anderson and adding enhancements to the software.
On August 3, 1993, Persistence filed the applications for the '362 and
'506 patents. Henninger, Jensen, and Keene were the listed inventors of
A. Legal Standard for Summary Judgment
Summary judgment is appropriate when there is no genuine issue as to
material facts and the moving party is entitled to judgment as a matter
of law. See Fed. R.Civ.P. 56. Material facts are those that might affect
the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute as to a material
fact is "genuine" if there is sufficient evidence for a reasonable jury
to return a verdict for the nonmoving party. See id. The court may not
weigh the evidence, and is required to view the evidence in the light
most favorable to the nonmoving party. See id.
A party seeking summary judgment bears the initial burden of informing
the court of the basis for its motion, and of identifying those portions
of the pleadings and discovery responses that demonstrate the absence of
a genuine issue of material fact. See Cetotex Corp. v. Catrett,
477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Where the
nonmoving party will bear the burden of proof at trial, the moving party
can prevail merely by pointing out to the district court that there is an
absence of evidence to support the nonmoving party's case. See id. If the
moving party meets its initial burden, the opposing party must then set
forth specific facts showing that there is some genuine issue for trial
in order to defeat the motion. See Anderson, 477 U.S. at 250, 106 S.Ct.
2505. Regardless of whether plaintiff or defendant is the moving party,
each party must "establish the existence of the
elements essential to [its] case, and on which [it] will bear the burden
of proof at trial." Celotex, 477 U.S. at 322, 106 S.Ct. 2548.
B. Defendants' Motion for Summary Judgment
Defendants contend that the claims at issue in the subject patents are
invalid and unenforceable. Specifically, they argue that the on-sale bar
of 35 U.S.C. § 102 (b) renders the patent claims at issue invalid.
Defendants also argue that the public disclosure bar renders the patent
claims at issue invalid. Finally, they argue that Persistence's omission
of Skinner's contributions to the invention in its ...