GUZIK TECHNICAL ENTERPRISES, INC., Plaintiff and Counterclaim Defendant,
WESTERN DIGITAL CORPORATION, et al., Defendants and Counterclaim Plaintiffs, and WESTERN DIGITAL (THAILAND) COMPANY LIMITED and WESTERN DIGITAL (MALAYSIA) SDN.BHD, Defendants.
ORDER RE: WESTERN DIGITAL'S MOTIONS FOR PARTIAL SUMMARY JUDGMENT ON NONINFRINGEMENT (Re: Docket Nos. 131, 234, 235, 260, 262, and 276)
PAUL S. GREWAL, Magistrate Judge.
Among its claims, Plaintiff Guzik Technical Enterprises ("GTE") accuses Defendants Western Digital Corp., et al. (collectively, "Western Digital") of infringing U.S. Patent No. 6, 023, 145 ("the '145 patent"). Before the court are several motions brought by both parties: (1) Western Digital's January 15, 2013, motion for partial summary judgment of noninfringement of the '145 patent ("January 15 MPSJ"),  (2) Western Digital's July 23, 2013, motion for partial summary judgment of noninfringement of the '145 patent ("July 23 MPSJ"),  (3) Western Digital's motion for summary judgment on GTE's breach of contract claim,  (4) GTE's motion for summary judgment that the '145 patent is not anticipated or obvious,  and (5) GTE's motion to strike three of Western Digital's expert witnesses. The parties appeared for a hearing on these motions.
In this order, the court considers only Western Digital's noninfringement summary judgment motions and the parties' motions to file related documents under seal. The court considers the balance of the motions in companion orders.
Having considered the papers and the parties' oral arguments, the court DENIES both of Western Digital's motions for summary judgment of noninfringement. The court GRANTS-IN-PART the parties' motions to seal.
A. Factual Background
The patents in this case describe hard drive disk test components. Hard drives consist of magnetic disks on which data is written. Those magnetic disks encircle a motor-driven spindle hub that spins the disks. To access the data, the hard drive uses a head-stack assembly ("HSA") with a head mounted on a pivot-arm module and a magnetic positioner. The module and the positioner move the head above the spinning disk enabling the head to write data onto, or read data from, the disk.
The accuracy of the heads in accessing data on the disks is essential to the effectiveness of the hard drive. Increases in the data capacity of the magnetic disks demand even greater precision. GTE purportedly addressed this need with its hard drive testers, which analyze the performance of the heads. GTE sold testers to Read-Rite Corp. ("Read-Rite"), a head manufacturer. Western Digital, which used to purchase disk drive heads from Read-Rite, eventually acquired Read-Rite's assets.
GTE argues both Read-Rite and Western Digital were subject to agreements that prohibited reverse engineering, decompiling, disassembling, or deriving source code from GTE's products. According to GTE, Western Digital violated the agreements and used GTE's testers and intellectual property to develop two testers of its own, the EH-300 and the DCT-400. These testers use servo burst feedback and a thermal drift-compensated closed-loop positioning system to determine the accuracy of the heads.
At issue in this order is the '145 patent. The '145 patent describes a "head/disk tester compris[ing] a thermal-drift compensated closed-loop positioning system that uses two sources of positioning feedback." The first source, linear encoders, "reflects the position of a magnetic head with respect to the magnetic disk in the absence of thermal drift." The second source, servo burst signals on the disk, "reflects the position of the magnetic head with respect to the magnetic disk in any temperature condition." The purpose of the invention is "to provide a head/disk tester that effects accurate positioning of a magnetic head with respect to [a] magnetic disk in a tester, even in the case of unstable temperature conditions."
The court has construed five terms from the '145 patent.
Disputed Term Court's Construction "second feedback means for determining the Section 112(f) means-plus-function term position of said magnetic head with respect to Function: "providing feedback for determinin said data track of said magnetic disk in varying the position of said magnetic head, with respect temperature conditions" (claim 1) to said data track of said magnetic disk in varying temperature conditions, using servo burst signals on said magnetic disk at predetermined positions radially offset from said track center line." Structure: "the read element of magnetic head and servo analyzer, including read element, read amplifier, detector, analog to digital converter and averager" "means for reading said servo burst at each of Section 112(f) means-plus-function term said offsets in generating and storing signals Function: "reading said servo burst at each of representative of each read burst associated with said offsets and generating and storing signals each said offset" (claim 17) representative of each read burst associated with each of said offsets" Structure: "servo analyzer, including read element, read amplifier, detector, analog to digital converter, average, and the memory of the position controller" "closed loop positioner, responsive to said first Plain and ordinary meaning - Section 112(f) feedback means and said second feedback does not apply means to control said positioning means, whereby said magnetic head is substantially at said desired offset from said track center line" (claim 1) "means for pre-writing said servo burst signal at Section 112(f) means-plus-function term a plurality of positions along a track of said Function: "prewriting said servo burst signals at magnetic disk, and for detecting the amplitudes a plurality of positions along a track of said of said prewritten burst signals" (claims 6 and 7) magnetic disks and detecting the amplitudes of said prewritten burst signals" Structure: "gate sequencer, write amplifier, detector and ADC, write element of the head, read element of the head, and encoder of spindle"
B. Procedural Background
In August 2011, GTE filed this patent suit against Western Digital alleging infringement of U.S. Patent Nos. 6, 023, 145 ("the '145 patent") and 6, 785, 085 ("the '085 patent"). The complaint alleged Western Digital's products infringe claims 1-19 of the '145 patent and claims 20, 21, 24, 25, 29, 30, 33, 34, 36, and 39 of the '085 patent. Western Digital answered and filed a counterclaim alleging that the '145 patent and the '085 patent are invalid and that GTE infringes four Western Digital patents: U.S. Patent Nos. 5, 640, 089 ("the '089 patent"), 5, 844, 420 ("the '420 patent"), 6, 891, 696 ("the '696 patent"), and 7, 480, 116 ("the '116 patent").
The court denied Western Digital's motion to dismiss and set a case management schedule with a February 10, 2012, deadline for GTE to serve infringement contentions on Western Digital and related documents in compliance with Patent L.R. 3-1 and 3-2. The court held a claims construction hearing on September 25, 2012, and issued its constructions from the bench.
On January 15, 2013, Western Digital first moved for partial summary judgment of (1) invalidity and (2) noninfringement of claims 1-9, 11-16, and 17-18 of the '145 patent as well as (3) noninfringement of claims 20 and 29 of the '085 patent. GTE opposed Western Digital's motion and moved for relief under Rule 56(d). On March 12, 2013, the court heard arguments regarding the parties' summary judgment motions.
On February 6, 2013, the parties agreed to modify the case scheduling order: delaying the close of fact and expert discovery and the related deadline for dispositive motion practice. The trial date was continued from October 28, 2013, to December 2, 2013.
On April 30, 2013, GTE sought leave on shortened time to amend its infringement contentions. GTE asserted that recently discovered evidence provided the requisite good cause for leave to amend. GTE, however, did not offer its proposed amended infringement contentions to the court or Western Digital. Instead, GTE sought leave only on the grounds that it had good cause and Western Digital would not be prejudiced based on its own assessment of its contentions.
On May 14, 2013, the court heard argument regarding GTE's motion for leave to amend its contentions and the court issued its order the same day denying GTE's request for leave. The court made no finding regarding either GTE's proffer of good cause or possible prejudice to Western Digital because, absent a review of the proposed infringement contentions, the court could not evaluate good cause or possible prejudice.
On July 19, 2013, the court issued an order addressing the summary judgment motions and providing the court's reasoning for its earlier-issued claim constructions. In the July 19 order, the court held that the term "relatively short period of time" was indefinite and thus rendered claims 17 and 19 of the '145 patent invalid. The court also granted summary judgment in Western Digital's favor on noninfringement grounds on claims 20 and 29 of the '085 patent. Finding GTE's Rule 56(d) request persuasive, the court declined to rule on Western Digital's motion for summary judgment on the issue of noninfringement of claims 1-9, 11-16, and 17-18 of the '145 patent, instead deferring the issue until the court addressed the parties' respective dispositive motions filed in July 2013. The court invited both GTE and Western Digital to submit additional briefing (now before the court) regarding how GTE's subsequent discovery affected Western Digital's noninfringement arguments.
On July 29, 2013, the parties stipulated to dismissal of certain claims and counterclaims. Western Digital agreed to dismiss with prejudice Counts V, VI, VII, and VIII of its counterclaims - specifically its claims that GTE infringed the '089 patent, the '420 patent, the '696 patent, and the '116 patent. In turn, GTE agreed to dismiss without prejudice Counts One, Two, Three, Four, Five, Six, Seven, and Eight of its counterclaims, in which it sought declaratory judgment of noninfringement and invalidity of Western Digital's four patents at issue. GTE also agreed ...