United States District Court, N.D. California
ORDER RE: SUMMARY JUDGMENT MOTIONS RE: DKT. NOS. 97,
ILLSTON United States District Judge.
March 17, 2017, the Court held a hearing on the parties'
summary judgment motions. For the reasons set forth below,
the Court DENIES plaintiff's summary judgment motion that
the 35 U.S.C. § 121 safe harbor provision applies to
U.S. Patent No. 5, 764, 571 (“the '571
patent”), and the Court DENIES defendant's summary
judgment motion that the '571 patent is invalid because
of obviousness-type double patenting (“OTDP”) in
view of U.S. Patent No. 7, 911, 851 (“the '851
patent”) or U.S. Patent No. 8570, 814 (“the
MLC Intellectual Property, LLC, alleges that defendant Micron
Technology, Inc., infringes the '571 patent, titled
“Electrically Alterable Non-Volatile Memory with n-bits
Per Cell” by making, using, offering to sell, selling,
and importing over 150 different products. The '571
patent discloses non-volatile memory devices and methods of
programming and/or verifying the programming of multi-level
non-volatile memory devices. Non-volatile memory is capable
of retaining the data with which it is programmed after the
device is powered off. See '571 Patent 1:19-18;
Dkt. No. 72-2 at ¶ 16. The memory device, made up of
multiple semiconductor cells, has Kn predetermined
memory states, where K is a base of a predetermined number
system (such as 2 in the binary system of “1” or
“0”), n is the number of bits that can be stored
in each cell, and Kn > 2. '571 Patent at
memory cell devices allowed only two memory storage states in
each cell based on the one bit of information the cell was
capable of storing. Id. at 1:24-26. Memory storage
devices that were enhanced to allow multiple bits of storage
per cell were either non-alterable read-only memory systems
or volatile memory devices not capable of permanent storage.
Id. at 1:31-35. The '571 patent attempts to
solve this drawback by creating a “multi-level
electrically alterable non-volatile memory (EANVM) device,
wherein some or all of the storage locations have more than
two states.” Id. at 2:50-54.
'571 patent traces its lineage to a U.S. Patent
Application No. 07/652, 878, filed on February 8, 1991.
Following this application, plaintiff filed U.S. Patent
Application No. 08/071, 816 (“the '816
application”), which was a continuation of U.S. Patent
Application No. 07/652, 878. During prosecution of the
'816 application, the examiner issued a restriction
requirement, requiring plaintiff to elect one of three
independent and distinct inventions for
prosecution. Plaintiff elected the memory system, and
the restricted '816 application issued as U.S. Patent No.
5, 394, 362 (“the '362 patent”).
before the '362 patent issued, plaintiff filed U.S.
Application No. 08/410, 200 (“the '200
application”) as a continuation-in-part
(“CIP”) of the '816 application. During
prosecution, the '200 application was amended to remove
any new matter and convert the application into a division of
the '816 application. The '200 application issued as
the '571 patent, a division of the '816 application.
filed U.S. Application No. 08/975, 919 (“the '919
application”) as a CIP of the '200 application.
Plaintiff subsequently filed U.S. Application No. 09/411, 315
(“the '315 application”) as a division of the
'919 application. On January 28, 2000, plaintiff filed
U.S. Application No. 09/493, 139 (“the '139
application”) as a division of the '315
application. After one intervening continuation application
and five intervening divisional applications, plaintiff filed
U.S. Patent Application No. 11/876, 683 (“the '683
application”), which issued as the '851 patent.
Plaintiff filed U.S. Application No. 13/041, 340 as a
division of the '683 application, which issued as the
'851/'814 patents share a common title, “Memory
Apparatus Including Programmable Non-Volatile Multi-Bit
Memory Cell, and Apparatus and Method for Demarcating Memory
States of the Cell.” Both patents relate generally to
non-volatile memory devices, and more specifically to
apparatus and methods involving memory-state demarcation and
programming reference signal generation in multi-level
non-volatile memory devices. '851 Patent 1:33-37;
'814 Patent 1:35-39. The '851/'814 patents
purport to improve upon predecessor EANVM applications by
having the read reference signals and programming reference
signals track changes in operating and ambient conditions,
thereby increasing accuracy. '851 Patent 3:39-46,
13:65-67, 14:1-40; '814 Patent 3:42-49, 14:4-44.
judgment is proper if the pleadings, the discovery and
disclosure materials on file, and any affidavits show that
there is no genuine dispute as to any material fact and that
the movant is entitled to judgment as a matter of law.
See Fed. R. Civ. P. 56(a). The moving party bears
the initial burden of demonstrating the absence of a genuine
issue of material fact. Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986). The moving party, however, has no
burden to produce evidence showing the absence of a genuine
issue of material fact. Id. at 325. Rather, the
burden on the moving party may be discharged by pointing out
to the district court that there is an absence of evidence to
support the nonmoving party's case. Id.
the moving party has met its burden, the burden shifts to the
non-moving party to “designate ‘specific facts
showing that there is a genuine issue for trial.'”
Id. at 324 (quoting then Fed.R.Civ.P. 56(e)). To
carry this burden, the non-moving party must “do more
than simply show that there is some metaphysical doubt as to
the material facts.” Matsushita Elec. Indus.
Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
586 (1986). “The mere existence of a scintilla of
evidence . . . will be insufficient; there must be evidence
on which the jury could reasonably find for the [non-moving
party].” Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 252 (1986).
deciding a summary judgment motion, the evidence of the
non-movant is to be believed, and all justifiable inferences
are to be drawn in his favor. Id. at 255.
“Credibility determinations, the weighing of the
evidence, and the drawing of legitimate inferences from the
facts are jury functions, not those of a judge . . . ruling
on a motion for summary judgment . . . .” Id.
However, conclusory, speculative testimony in affidavits and
moving papers is insufficient to raise genuine issues of fact
and defeat summary judgment. Thornhill Publ'g Co.,
Inc. v. Gen. Tel. & Elec. Corp., 594 F.2d 730, 738
(9th Cir. 1979). The evidence the parties present must be
admissible. Fed.R.Civ.P. 56(c)(4). Finally, because a patent
is presumed valid, invalidity must be established by clear
and convincing evidence. See Takeda Chem. Indus., Ltd. v.
Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir.
2007); Oakley, Inc. v. Sunglass Hut Int'l, 316
F.3d 1331, 1339 (Fed. Cir. 2003).
Plaintiff's motion for summary judgment
seeks summary judgment that the '571 patent is not
invalid because of obviousness-type double patenting in view
of the '851 or '814 patents because the 35 U.S.C.
§ 121 safe harbor applies. The § 121 safe harbor
protects certain patents and patent applications from double
patenting rejections/invalidations when the United States
Patent and Trademark Office (“PTO”) has issued a
restriction requirement. A party invoking the safe harbor
must demonstrate that (1) the “as a result of”
requirement is met and (2) “consonance” is
argues that the “as a result of” requirement of
the safe harbor is satisfied because (i) the ancestral
'816 application was subject to a formal restriction
requirement; (ii) in response to that restriction
requirement, plaintiff filed the divisional '139
application; (iii) both the challenged '571 patent and
the reference '851/'814 patents share a common
lineage to the '816 application; and (iv) but for the
restriction requirement, plaintiff could have pursued all of
the '571/'851/'814 patents' claims in the
'200 application. Plaintiff also argues that the
consonance requirement of the safe harbor is met because the
'571 and '851/'814 patents are directed toward
different inventions identified in the '816
application's restriction requirement.
Restriction practice and the § 121 safe harbor
patent application claims two or more independent and
distinct inventions, the PTO may issue a restriction
requirement, requiring the applicant to elect one of the
inventions for prosecution. See 35 U.S.C. § 121
(2015). The applicant is then free to file one or possibly
more divisional applications ...