The opinion of the court was delivered by: Ronald M. Whyte United States District Judge
RMW ORDER ON PATENT TRIAL MOTIONS IN LIMINE [Re Docket Nos. 1597-1605, 1610-1624, 1641, 1642, 1646]
1. Hynix's Motion in Limine to Exclude Argument and Evidence of Infringement Under the Doctrine of Equivalents
Hynix moves to preclude Rambus's expert Murphy from arguing infringement under the doctrine of equivalents for "delay locked loop" and "access time register."
The court denies the motion on the "delay locked loop" issue but grants it with respect to the "access time register" issue. Hynix first argues that Murphy's opinion about the "delay locked loop" term is conclusory. The patent recites that the "delay locked loop" uses a "variable delay line." Hynix tries to differentiate its chip based on the term "variable delay line." Hynix calls its circuit a "selectable delay network." Hynix argues that Murphy did not sufficiently explain why the "selectable delay network" is interchangeable with "variable delay line" in "function," "way," and "result." However, although Murphy does not use the words "function," "way," and "result," his opinion is adequate. To one skilled in the art, it is common knowledge that a "variable delay line" is not a "line" per se. It is a digital circuit block made from semiconductor devices, typically of a size less than one square millimeter. Its function is to introduce a controllable delay to a signal passing through the circuit, typically for synchronization purposes. The key concept is that this circuit provides a variable end-to-end delay to a signal. There can be numerous ways to construct such a circuit. "Variable delay line" is a figurative way of referring to this type of circuit. Arguably, the term "variable delay line" is broad enough to cover Hynix's "selectable delay network circuit."
See Murphy Report ¶ 24 ("[T]he circuitry described by Mr. Taylor is simply one form of a variable delay line. Replacing the word 'variable' with 'selectable' and the word 'line' with 'network circuit' cannot change the fact that the Hynix devices have a variable delay line.").
Hynix also argues that Murphy cannot opine about equivalence with respect to the "delay locked loop" because he first raised the issue in his rebuttal report and Rambus does not mention it in its Final Infringement Contentions. However, Hynix first advanced its "selectable delay network" argument after Murphy submitted his initial report and Rambus served its Final Infringement Contentions. Because the court permitted Hynix to raise new theories after granting Rambus's motion for summary judgment of infringement, it would be unfair to preclude Murphy on timeliness grounds.
Hynix contends that Murphy did not address equivalence with respect to the "access time register" limitation. "Access time register" is a register (a temporary storage mechanism for storing values) that holds the value of "access time." Both parties refer to the "access time" as "CAS latency." "CAS latency" typically denotes the number of clock cycles it takes the memory to respond to an operation request. Hynix asserts that the value stored in its devices' register is not indicative of a number of clock cycles that must transpire before it outputs data because the value is not "equal" to the cycle after which the device makes the data available. According to Hynix, Rambus's claims are different because the value does equal the number of clock cycles before the data becomes available. Hynix contends that Murphy did not address equivalence with respect to "access time register" in his report.
Rambus relies on a footnote in Murphy's initial expert report in which he stated that there is a "subtle difference" between the "access time register" limitations of Rambus's claims and Hynix's accused products. See Murphy Report at 5 n.1. Murphy notes that regardless of whether the CAS latency in Hynix's products equals the number of cycles that must transpire before data begins to appear on the bus, it nevertheless corresponds with the value stored in the register. However, this passing reference is insufficient to put Hynix on notice that Murphy intended to offer an opinion on equivalence. See Tracinda Corp. v. DaimlerChrysler AG, 362 F. Supp. 2d 487, 506 (D. Del. 2005) ("The purpose of the initial disclosures provided for in Rule 26 is to prevent a party from being unfairly surprised by the presentation of new evidence."). The words "subtle difference" suggest that the limitations, though similar, are not similar enough to render the doctrine of equivalents applicable. See Valmont Indus. Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed.Cir. 1993) ("[a]n equivalent under the doctrine of equivalents results from an insubstantial change which, from the perspective of one of ordinary skill in the art, adds nothing of significance to the claimed invention").
2. Hynix's Motion in Limine to Exclude References to Hynix's Counsel's Prior Representation of Rambus
Hynix moves under Rules 401 and 403 to exclude evidence of Townsend's prior representation of Rambus. Townsend & Townsend & Crew - Hynix's current counsel - prepared patent applications for Rambus between 1996 and 1998. Around the same time, Townsend also prepared patent applications and performed transactional work for SyncLink, a small industry group developing a DRAM standard. When Rambus brought this potential conflict of interest to Townsend's attention, Townsend withdrew from representing both Rambus and SyncLink.
The court grants the motion as unopposed.
3. Hynix's Motion in Limine to Exclude Argument and Evidence Regarding Post-Invention Publications Referencing "Delay Locked Loop" and "Variable Delay Line"
The priority filing and constructive invention date of the patents-in-suit is April 18, 1990. The parties have agreed that the term "delayed lock loop" means "circuitry on the device, including a variable delay line, that uses feedback to adjust the amount of delay of the variable delay line and to generate a signal having a controlled timing relationship relative to another signal." The parties disagree on the meaning of "variable delay line." According to Hynix, a "variable delay line" is an electrical signal line in which the delay of the signal is varied over the entire length of the line. According to Rambus, a "variable delay line" is "a line that has a delay that is variable by some means." At the deposition of Rambus' expert, Murphy, he produced several publications that he claimed support Rambus' interpretation of "variable delay line." All were dated 1997 or later.
Hynix argues that since a court must give a term "the ordinary and customary meaning . . . that the term would have to a personal of ordinary skill in the art in question at the time of the invention," Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (emphasis added), these post-1990 publications are irrelevant. Hynix also seeks to exclude the publications under Rule 26(a)(2)(B) on the grounds that Murphy did not disclose them in his expert report.
The court denies the motion. First, although Hynix is correct that a term's meaning hinges on what a person of ordinary skill in the art would believe at the time of the invention, it does not logically follow that a post-invention publication cannot illuminate this issue. Cf. Gould v. Quigg, 822 F.2d 1074, 1078 (Fed. Cir. 1987)("It was not legal error for the district court to accept the testimony of an expert who had considered a later publication in the formulation of his opinion as to whether the disclosure was enabling as of the time of the filing date of the '540 application."). Second, with respect to Hynix's non-disclosure argument, Rule 26(e)(1) only requires Murphy to disclose "additional or corrective information [that] has not otherwise been made known to the other parties during the discovery process or in writing." Because Murphy testified about the publications at his deposition, he complied with this mandate. See Tucker v. Ohtsu Tire & Rubber Co., Ltd., 49 F. Supp. 2d 456, 460 (D. Md. 1999) ("It is equally clear that when Mr. Grogan testified during the first day of his deposition that he had reached two new opinions, his subsequent testimony about those new opinions was a form of supplementation permitted by Rule 26(e)(1).").
4. Hynix's Motion in Limine re: Rambus May Not Offer the Opinion of Robert J. Murphy on Certain Legal Issues or Claim that the Written Description Requirement Has Been Found To Be Met
Hynix objects to three things: Murphy's (1) frequent invocation of legal standards, court opinions, and PTO actions prefaced by phrases such as "I understand," "I agree," "I have been informed," and "I was told"; (2) use of the symbols "CC" and "CC" in Exhibit D to his expert report; and (3) opinion that the PTO and Federal Circuit in Infineon found the claims meet the written description requirement.
The court precludes Murphy from offering an opinion on legal standards. For example, he cannot state the legal test for anticipation, even if he qualifies it with "I believe" or "I have been informed." Doing so would intrude on the court's function to instruct the jury about the law. However, the court does not bar Murphy from opining on whether a legal test has been satisfied: for example, that a particular prior art reference contains all limitations of a claim either expressly or necessarily implied, so that one of ordinary skill in the art would be able to make and use the invention. Hynix's expert Taylor should follow the same protocol.
The court also grants the motion on the "CC" and "CC" issue. Exhibit D summarizes Murphy's view of Hynix's invalidity contentions. Next to particular prior art references, Murphy placed a "CC" where he believes that Hynix must meet a clear and convincing burden of proof. Where the PTO considered and rejected the prior art, Murphy placed a "CC." The parties dispute whether this is appropriate. Both find support in a passage from American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (Fed. Cir. 1984). In that case, the Federal Circuit explained the difference between trying to invalidate a patent based on newly-discovered prior art and trying to invalidate a patent based on prior art that the PTO had considered:
When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job . . . . When an attacker . . . produces prior art or other evidence not considered in the PTO, there is, however, no reason to defer to the PTO so far as its effect on validity is concerned. Indeed, new prior art not before the PTO may so clearly invalidate a patent that the burden is fully sustained merely by proving its existence and applying the proper law; but that has no effect on the presumption or on who has the burden of proof. They are static and in reality different expressions of the same thing-a single hurdle to be cleared. Neither does the standard of proof change; it must be by clear and convincing evidence or its equivalent, by whatever form of words it may be expressed. What the production of new prior art or other invalidating evidence not before the PTO does is to eliminate, or at least reduce, the element of deference due the PTO, thereby partially, if not wholly, discharging the attacker's burden, but neither shifting nor lightening it or changing the standard of proof. When an attacker simply goes over the same ground traveled by the PTO, part of the burden is to show that the PTO was wrong in its decision to grant the patent.
Rambus contends that Murphy's notation is proper because "[w]hen a reference claimed to be prior art has already been considered by the USPTO, the attacker of the patent's validity 'has the additional burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job.'" However, this argument conflates the burden of proof with the weight to be given particular evidence. American Hoist stands for the proposition that prior art proffered by a party challenging a patent will have more persuasive force when the PTO has not considered it. See id. at 1360 ("When new evidence touching validity of the patent not considered by the PTO is relied on, the tribunal considering it is not faced with having to disagree with the PTO or with deferring to its judgment or with taking its expertise into account. The evidence may, therefore, carry more weight and go further toward sustaining the attacker's unchanging burden.") (emphasis added). Conversely, where the PTO has considered a prior art reference, the attacker stands to gain less by using it. Accordingly, Murphy's "CC" notation is misleading. The "" strongly implies that Hynix's burden is greater than clear and convincing evidence. That is not the law.
Finally, the court grants the motion on the issue of whether Infineon or the PTO found that the claims met the written description requirement. Taylor states that Rambus's specification does not disclose a regular bus, i.e., a "non-multiplexing" bus. See Taylor's Report on Invalidity ¶ 114. In response, Murphy argues that Infineon construed "bus" without a multiplexing limitation. Murphy Rebuttal Report ¶¶ 50, 289. There are two problems with permitting Murphy to rely on Infineon. For one, it strongly implies that the Federal Circuit found that the claims meet the written description requirement. Of course, it did not. Second, Taylor interpreted the specification, while Infineon construed the claims. Murphy cannot use the latter to cast light on the former: that is exactly backwards. Finally, the PTO issue is a close one. The court finds that Murphy's statements that he "agree[s]" with the PTO that the claims comply with the written description requirement, Murphy Report ¶¶ 239, 253, 256, 261, 264, 270, 274, 279, 282, 286, 291, give the false impression that the PTO has rendered an additional opinion on the patents' validity. The court excludes Murphy's statements for that reason.
5. Hynix's Motion in Limine to Exclude any Rambus Claim or Expert Opinion Regarding an Invention Date Prior to April 18, 1990
Hynix moves to exclude Rambus from claiming an invention date prior to April 18, 1990 and offering at trial any opinion or testimony from Robert Murphy to support that claim. Rambus acknowledges that it does not intend to offer Murphy's testimony on the subject but does plan to prove an earlier date through inventor testimony and corroborating documents. The Federal Circuit has explained that the issue of conception depends on whether evidence other than the inventor's own testimony shows that he disclosed the idea in a near-fully realized form:
Conception is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. Because it is a mental act, courts require corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention. Thus, the test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention; the inventor must prove his conception by corroborating evidence, preferably by showing a contemporaneous disclosure. An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The conception analysis necessarily turns on the inventor's ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994) (internal citations omitted). This inquiry appears to call for specialized knowledge: for someone skilled in the art to interpret the inventor's disclosure and explain why he could reduce it to practice. As a general matter, complex issues require expert testimony. The Federal Circuit has implicitly endorsed the proposition that this should be particularly true in patent cases involving difficult technology. See, e.g., Invitrogen Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (reversing grant of partial summary judgment establishing date of conception because "Clontech nowhere provides the court with expert testimony that properly explains the technical notebook entries advanced in support of its conception arguments"). However, the Federal Circuit has not precluded a patent holder from establishing a priority date through inventor testimony and corroborating evidence of a contemporary disclosure. The court precludes Rambus from offering expert testimony but defers ruling on whether Rambus can claim an invention date earlier than April 18, 1990 until it can hear and examine the specific evidence that Rambus intends to offer.
6. Hynix's Motion in Limine to Exclude the Testimony of Robert J. Murphy Regarding Secondary Considerations of Non-Obviousness
Hynix claims that Rambus's patents-in-suit are invalid for obviousness. In Murphy's expert report, he explains that "in order to determine whether a patent claim would have been obvious and therefore invalid at the date of Rambus's invention . . . [one looks to] objective considerations." Murphy Report ¶ 224. He addresses several such considerations, including (1) long felt need for the inventions, (2) unsuccessful attempts by others to find the solution provided by the claimed invention, (3) acceptance by others of the claimed invention as shown by praise from others in the field or from the licensing of the claimed invention, (4) and lack of independent invention by others before or at about the same time as the named inventor thought of it. Id. at ¶¶ 228-235. Hynix moves to exclude this testimony.
The court grants the motion with respect to the "unsuccessful attempts by others" opinion. Murphy sets forth a bare conclusion ...