The opinion of the court was delivered by: Vaughn R Walker, District Judge.
Defendants move for partial summary judgment on whether certain of plaintiff's patent claims are entitled to an earlier priority date based on a prior patent. See Doc. #231. Plaintiff opposes the motion. See Doc. #237. For the reasons set forth below, the court GRANTS defendants' motion for partial summary judgment that claims 1, 2 and 3 of the `234 patent are not entitled to an earlier priority date (Doc. #231).
On May 29, 2001, plaintiff Network Caching Technology LLC (NCT) commenced this action against defendants Novell, Inc., Volera Inc., Akamai Technologies, Inc., Cacheflow, Inc. and Inktomi Corporation, alleging infringement of certain NCT patents. Defendant Akamai Technologies, Inc. has since been dismissed from this action. See Notice of Dism. (Doc. #236).
NCT alleges that defendants infringed NCT's patents for network services software products. NCT alleges that it is the assignee of four patents at issue in this case: United States patent nos. 5,611,049 (`049 patent); 5,892,914 (`914 patent); 6,026,452 (`452 patent); and 6,085,234 (`234 patent). The patents at issue describe an algorithm for directing network traffic and speeding up networks by caching (storing duplicate images of data). Applications of the patent technology are particularly useful in internet services to speed up and control internet traffic at a company's internet site and in intranet services to speed up and control traffic within a company's proprietary network.
NCT alleges that Novell, Volera and Inktomi make and sell software products that contain algorithms which infringe the patents. Cacheflow allegedly manufactures and sells computer equipment, specifically network servers, which work by themselves and in conjunction with other software to infringe the patents.
The `234 patent was filed as a continuation-in-part (CIP) of the earlier `914 patent. The parties agree that the `914 patent is entitled to a priority date of June 3, 1992. While claims first introduced in the CIP are accorded the filing date of the CIP application, "matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application." Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994) (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1428 (Fed. Cir. 1984)).
The relevant statute provides:
An application for patent for an invention disclosed
* * * in [a patent] application previously filed in the
United States * * * which is filed by an inventor or
inventors named in the previously filed application
shall have the same effect, as to such invention, as
though filed on the date of the prior application, if
filed before the patenting or abandonment of or
termination of proceedings on the first application or
on an application similarly entitled to the benefit of
the filing date of the first application and if it
contains or is amended to contain a specific reference
to the earlier filed application.
35 U.S.C. § 120.
"Although [the applicant] does not have to describe exactly the subject matter claimed, * * * the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993) (quoting Vas-Cath., Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
Thus, "[t]he test for sufficiency of support in a parent application is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter." Id. This inquiry is a factual one. See id.
In the instant case, NCT has alleged that claims 1-3 of the `234 patent are entitled to an earlier priority date based on the `914 patent. Defendants, however, argue that these claims are not entitled to the earlier priority date because the `914 patent does not disclose the claimed subject matter of the `234 patent. Defendants argue that this claim, along with dependent claims 2 and 3, is not entitled to an earlier priority date based on the `914 patent because it is not disclosed therein. In particular, defendants argue that the `234 patent contains four limitations, none of which is disclosed by the `914 patent to a person of ordinary skill in the relevant art:
(1) The NI cache (`234 patent) consists of a single,
(2) The cache must operate transparently to the client
workstation and the server.
(3) The cache must include a single network interface
that speaks to both client workstations and servers in
the same protocol as client workstations and the server
use to communicate with each other.
(4) The cache must be able to act as an Internet proxy
cache that communicates with client workstations using
the hypertext transfer protocol (HTTP).
While compliance with the written description requirement, as earlier noted, is a question of fact, the meaning given to a patent claim is a matter of law "exclusively within the province of the court." Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). While NCT correctly points out that compliance with the written requirement of section 112 is a question of fact, that is not what defendants dispute. Rather, defendants contend that NCT's `234 patent claims were not disclosed by the `914 patent.
The first step in claim construction is to determine the ordinary and customary meaning, if any, that would be attributed to the term by those skilled in the art. Rexnard Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). While it is proper to use specifications to interpret what a patentee meant by words or phrases in a claim, extraneous limitations appearing in the specification cannot be added. The Federal Circuit has therefore "consistently adhered to the proposition that courts cannot alter what the patentee has chosen to claim as his invention, that limitations appearing in the specification will not be read into claims, and that interpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper. * * * No matter how great the temptations of fairness or ...