The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER DENYING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF PLAINTIFF'S U.S. PATENT NO. 5,077,612
On February 20, 2009, Plaintiff LG Electronics, Inc. ("LGE") filed a complaint alleging that Defendant Eastman Kodak Company ("Kodak") infringed one or more claims of U.S. Patent Nos. 6,885,407 and 5,077,612 under 35 U.S.C. § 271. (Doc. No. 1.) On September 1, 2009, Kodak filed a motion for summary judgment of invalidity of LGE's U.S. Patent No. 5,077,612 ("'612 patent"). (Doc. No. 52.) On September 10, 2009, LGE filed an ex parte application to strike or continue Kodak's motion for summary judgment. (Doc. No. 53.) On September 18, 2009, Kodak filed a response in opposition to LGE's application. (Doc. No. 55.) On September 22, 2009, the Court denied LGE's ex parte application. (Doc. No. 56.) On September 29, 2009, LGE filed a response in opposition to Kodak's motion for summary judgment. (Doc. No. 57.) On October 6, 2009, Kodak filed a reply in support of its motion for summary judgment. (Doc. No. 58.) The Court held a hearing on the matter on October 13, 2009. Mark Selwyn and Arthur Coviello of Wilmer Cutler Pickering Hale and Dorr LLP appeared on behalf of Kodak, and Christopher Marchese and Michael Rosen of Fish & Richardson P.C. appeared on behalf of LGE. For the reasons set forth below, the Court denies Kodak's motion for summary judgment of invalidity of the '612 patent.
On February 20, 2009, LGE filed a complaint alleging that Kodak infringed one or more claims of U.S. Patent Nos. 6,885,407 and 5,077,612 under 35 U.S.C. § 271. (Doc. No. 1 at 3-4.) On September 1, 2009, Kodak filed a motion for summary judgment of invalidity of LGE's '612 patent. (Doc. No. 52.) In particular, Kodak contends that the '612 patent is invalid for failure to comply with the definiteness requirement of 35 U.S.C. § 112, ¶ 2. (Id. at 1.)
The '612 patent is entitled "Portable Electronic Picture Recording Device With Nonvolatile Electronic Memory." (Doc. No. 1, ¶ 13.) The patent issued on December 31, 1991, and is directed to a portable electronic picture recording device that, among other things, is capable of "reproducing a scene in a moving sequence as in camcorders, as well as single pictures as in still video cameras." ('612 patent, Doc. No. 1, Ex. 2 at col. 2 l.19-21.) Claim 1 provides:
1. A portable electronic picture recording device comprising: a camera which generates an analog picture signal for at least one frame of images; an analog-to-digital (A/D) converter for converting the analog picture signal too digital picture data; a signal processing and control circuit having means for compressing the digital picture data for storage in an electronic memory and for retrieving and expanding the digital picture data into television signals for display on a television receiver, respectively, wherein said signal processing and control circuit further includes means for processing data for picture signal frames in a plurality of modes, including single-picture, and scene shooting (sequence) modes and wherein said signal processing and control circuit further includes a first filter for reducing said digital picture data for storage and a second filter for data expansion upon playback; said electronic memory having a very large plurality of erasable, programmable, nonvolatile memory cells for storing digital picture data for a plurality of picture signal frames without the need for constant power supply; a digital-to-analog (D/aA) converter for converting restored digital picture data into analog output signals; and a power supply for supplying power to said signal processing and control circuit without the need for constantly supplying power to said electronic memory to maintain the data stored therein. (Id.at col. 6 l.11-42 (emphasis added)). Claim 1 is the sole independent claim, and all remaining claims depend on claim 1. (Id. at col. 6 l.43-64.) Kodak's motion for summary judgment of invalidity of the '612 patent focuses on the highlighted means-plus-function limitation of claim 1. (Doc. No. 52 at 3.)
I. Summary Judgment - Legal Standard
Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Amtel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999) (citing Fed. R. Civ. P. 56(c)). In determining whether to grant a motion for summary judgment, "all factual inferences are to be drawn in favor of the nonmoving party." Med. Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220 (Fed. Cir. 2003).
II. Patent Invalidity - Legal Standard
To prevail on its motion for summary judgment, Kodak must prove, by clear and convincing evidence, that the specification in the '612 patent lacks adequate disclosure of a structure to be understood by one skilled in the art as able to perform the recited functions. Issued patents are presumed valid, and "therefore the evidence to show invalidity must be clear and convincing." Med. Instrumentation, 344 F.3d at 1220. Under 35 U.S.C. § 112, ¶ 2, a patent "shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." A claim expressed in means-plus-function language "shall be construed to cover the corresponding structure. . . described in the specification and equivalents thereof." 35 U.S.C. § 112, ¶ 6. A means-plus-function claim is invalid under 35 U.S.C. § 112, ¶ 2 if the patent specification does not adequately disclose structure to perform the claimed function. In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). Whether a means-plus-function limitation is adequately supported by the specification is determined by from the vantage point of one skilled in the art. Amtel, 198 F.3d at 1379. "[A] challenge to a claim containing a means-plus-function limitation as lacking structural support requires a finding, by clear and convincing evidence, that the specification lacks disclosure of structure sufficient to be understood by one skilled in the art as being adequate to perform the recited function." Budde v. Harley-Davidson, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 2001); see also Med.Instrumentation, 344 F.3d at 1220 (patents are presumed valid, "therefore the evidence to show invalidity must be clear and convincing").
Kodak alleges that the '612 patent is invalid as indefinite, because it provides no structure for a means-plus-function limitation included in each of its claims. (Doc. No. 52, Attach. 1 at 1.) In its opposition, LGE identifies two specific portions of the specification which ultimately may provide structural support for the means-plus-function limitation at issue. (Doc. No. 57 at 4.) Specifically, LGE points to the following potentially supporting passages to assert that Claim 1 is definite within the meaning of § 112, ¶ 2: (1) column 4, line 63 through column 5, line 6 and including Figures 1 and 2; and (2) column 5, lines 19-36.*fn1 (Id.) LGE alleges that the first of the two alternative structures describes how the signal processing and control circuit processes data for picture signals in a plurality of modes:
The signal-processing and control circuit c is fed with fifth control signals s5 from the control unit t, which has buttons for operator selection of single-picture, multipicture or scene shooting (picture sequence), playback and other modes. These fifth control signals s5 initiate the corresponding functions which are coordinated together in the picture recording device. Thus, the advantages of camcorderlike functions can be obtained in a more portable and handy apparatus ...