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AT&T CORP. v. MICROSOFT CORPORATION

United States District Court, S.D. New York


February 17, 2004.

AT&T CORP., Plaintiff, -against- MICROSOFT CORPORATION, Defendant

The opinion of the court was delivered by: WILLIAM PAULEY, District Judge

MEMORANDUM AND ORDER

Plaintiff AT&T Corp. ("AT&T") brings this patent infringement action against Microsoft Corporation ("Microsoft"), alleging that certain of Microsoft's products containing speech codecs*fn1 infringe its United States Patent No. Reissue 32,580 (the "580 patent"). The 580 patent at issue in this litigation is a reissue of U.S. patent 4,472,832 (the "832 patent"), issued with 39 claims. The 580 patent added claims 40-43, without amending the first 39 claims. Microsoft denies infringement of the 580 patent and seeks dismissal of the complaint together with a declaratory judgment of noninfringment, invalidity and unenforceability of the 580 patent. See AT&T Corp. v. Microsoft Corp., 01 Civ. 4872 (WHP), 2003 WL 21459573 (S.D.N.Y. June 24, 2003). Familiarity with this Court's prior Memoranda and Orders Page 2 is presumed.*fn2

  Currently before this Court is Microsoft's motion for partial summary judgment on invalidity of claims 40-43 of the 580 patent. For the reasons set forth below, Microsoft's motion for partial summary judgment is denied.

  DISCUSSION

 I. Summary Judgment Standard

  Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); accord Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 Page 3 (1986). The burden of demonstrating the absence of any genuine dispute as to a material fact rests with the moving party: See, e.g., Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970); Grady v. Affiliated Cent., Inc., 130 F.3d 553, 559 (2d Cir. 1997). The movant may meet this burden by demonstrating a lack of evidence to support the nonmovant's case on a material issue on which the nonmovant has the burden of proof. Celotex, 477 U.S. at 323.

  To defeat a summary judgment motion, the nonmoving party must do "more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Indeed, the nonmoving party must "set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); accord Matsushita Elec., 475 U.S. at 587. In evaluating the record to determine whether there is a genuine issue as to any material fact, the "evidence of the nonmovant is to be believed and all justifiable inferences are to be drawn in his favor." Liberty Lobby, 477 U.S. at 255.

  On a summary judgment motion to invalidate a patent, the party asserting invalidity bears a heavy burden. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1036 (Fed. Cir. 1987); Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002); see also 35 U.S.C. § 282 (2003) (the burden of Page 4 establishing invalidity of a patent or a claim rests on the party asserting invalidity). In the case of reissue patents, the movant's burden is "made heavier" because the reissue patent has undergone "a fresh examination." Interconnect Planning Corp. v. Fell, 774 F.2d 1132, 1139 (Fed. Cir. 1985). Indeed, as reissue patents are "clothed in a statutory presumption of validity," Interconnect Planning, 774 F.3d at 1139, the party asserting invalidity must establish its claim by clear and convincing evidence. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999).

 II. Merits

  Microsoft argues that claims 40-43 of the 580 patent are invalid for three independent reasons: (1) under 37 C.F.R. § 1.175 (1986) because they are based on a defective reissue declaration; and (2) under 35 U.S.C. § 102(b) because they are anticipated by prior art that was known to AT&T, but never disclosed to the United States Patent and Trademark Office (the "PTO"); and (3) under 35 U.S.C. § 251 because they violate the recapture rule. (MS Br. at 1.)

  A. Reissue Declaration

  Pursuant to 35 U.S.C. § 251, a patentee may file a reissue application on a patent if, without any deceptive intent, Page 5 he "claim[ed] more or less than he had a right to claim in the patent." 35 U.S.C. § 251.' At the time the 580 patent was pending, 37 C.F.R. § 1.175 ("Rule 175") required applicants to file a reissue declaration with their reissue application, containing the following information:

(3) "When it is claimed that [the] patent is inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent,' [the reissue declaration must] distinctly specify [] the excess or insufficiency in the claims"; and
(5) [The reissue declaration must] [p]articularly specify[] the errors relied upon, and how they arose or occurred.
37 C.F.R. § 1.175(3) & (5) (1986). While a reissue declaration must generally "specify every difference between [the] original and reissue claims," Nupla Corp. v. I XL Mfg. Co., 114 F.3d 191, 193 (Fed. Cir. 1997), "word-for-word correspondence is [not] required between a reissue declaration and the changes made in a reissue application." Dethmers Mfg. Co. v. Automatic Equip. Mfg. Co., 272 F.3d 1365, 1370 (Fed. Cir. 2001). Rule 175 only requires the reissue declaration to specify: (i) each error relied upon; (ii) how or why the error arose; and (iii) that the error arose without deceptive intention. Dethmers, 272 F.3d at 1370 (citing 37 C.F.R. § 1.175(a)); Nupla, 114 F.3d at 195. Microsoft argues that reissue claims 40-43 of the 580 patent are invalid because AT&T's reissue declaration failed to comply with Page 6 the requirements of Rule 175, which was in effect in 1986, when AT&T filed the reissue application.

  On September 18, 1986, two years after the 832 patent issued, AT&T filed a reissue application that led to the issuance of the 580 patent. (MS Ex. 3 at 23-24.) The 580 patent contains four new reissue claims, 40-43, but left the original 39 claims unmodified. (MS Ex. 3 at 48-49.) As required by Rule 175, the patentees, Dr. Bishnu S. Atal and Mr. Joel R. Remde, submitted a reissue declaration with their application that identified certain errors in the 832 patent's claims. (MS Ex. 3 at 51-54.) Specifically, the patentees detailed differences between claims 34 and 37 of the 332 patent in comparison to the reissue claims 40-43. (MS Ex. 3 at 51-52; AT&T Ex. 11.)

  The reissue declaration states in relevant part:

  We verily believe that the [832 patent claims] . . . are inoperative for the reason that we claimed less than we had a right to claim [in the patent] . . . and that [the patent is] insufficient to give us the protection to which we are entitled: That the claims of the original patent are insufficient in that they are limited to producing a speech message in which each speech interval excitation signal is formed by a generating set of signals representative of the time interval speech message pattern and a signal representative of the differences between the interval speech pattern and the representative signal set, forming a first signal corresponding to the interval speech message pattern responsive to the speech message pattern forming a second interval corresponding signal responsive to the interval speech message pattern representative signals, generating a signal Page 7 responsive to the differences between the first and second interval corresponding signals, and producing a third signal responsive to the interval differences corresponding signal to reduce the interval differences corresponding signal as recited in claims 34 and 37 of [the patent].

 

That the true scope of the invention extends in one respect to producing a speech message by receiving signals representative of each interval portion of the speech message including coded spectral representative signals and a plurality of pulse amplitude and location coded signals representative of the differences between the time interval portion of the speech message and a representation of the speech message interval portion formed from said spectral representative signals. The plurality of pulse amplitude and location codes of said time interval are converted into a signal corresponding to the excitation of the time interval portion of said speech message and a speech pattern corresponding to the speech message portion of said time interval is generated jointly responsive to said interval spectral representative signals and said interval excitation representative signal as set forth in claims 40 and 42 of the reissue application;
That the true scope of the invention extends in another respect to producing a speech message wherein the plurality of pulse amplitude and location codes of said time interval are converted into a sequence of pulses formed according to said pulse amplitude and location codes corresponding to the excitation of the time interval portion of said speech message as set forth in claims 41 and 43 of the reissue application. . . .
  (MS Ex. 3 at 51-52.) The reissue declaration also claims the mistakes alleged "arose through inadvertence accident or mistake and without any fraudulent or deceptive intention. . . ." (MS Page 8 Ex. 3 at 52.) Finally, the declaration attributes the errors to the AT&T's in-house attorney, Jack S. Cubert, Esq., who purportedly failed to judge the true scope of the invention due to his lack of speech coding expertise. (MS Ex. 3 at 51-52; AT&T Ex 6: Deposition of Jack S. Cubert, Esq., dated October 29, 2003 ("Cubert Dep."), at 28-30; see also AT&T Corp. v. Microsoft Corp., 01 Civ. 4872 (WHP), 2003 WL 21459573, at *3 (S.D.N.Y. June 24, 2003) ("Here, the parties agree that `one of ordinary skill in the art' is a person with a master's degree in electrical engineering or its equivalent, with two to four years of experience in the field of speech compression, or a Ph.D. in electrical engineering or its equivalent with a focus on speech compression.").)

  Microsoft contends that the 580 reissue declaration is faulty because it failed to "distinctly specify[] the excess or insufficiency in the claims" or to specify "the errors relied upon, and how they arose or occurred," or state that such errors arose "without deceptive intentions." (MS Br. at 22-23 (citing Dethmers, 272 F.3d at 1370.) Microsoft attempts, however, to impose a level of specificity on the reissue declaration that is not mandated by Rule 175.

  In their declaration, the patentees expressly addressed the errors in claims 34 and 37 of the 832 patent, and identified the true scope of the invention by reciting the claim language of Page 9 the reissue claims. (MS Ex. at 51-52; AT&T Ex. 11; Declaration of Hon. Gerald J. Mossinghoff, dated Dec. 3, 2003 ("Mossinghoff Decl.") ¶ 10.) See Nupla, 114 F.3d at 194 (holding reissue declaration sufficient in part where claim language was used to describe the difference in scope). While Microsoft claims that the patentees did not "meaningfully discuss the differences in scope" in their reissue declaration, Rule 175 only requires a patentee to specify changes in the scope of the claims, rather than engage in a "meaningful discussion" of scope. See 37 C.F.R. § 1.175(3) (reissue declaration must "distinctly specify []" difference in scope). Here, the patentees "distinctly specified" why 832 claims 34 and 37 were insufficient and why the reissue claims reflected the true scope of the invention. (See MS Ex. 3 at 51-52.)

  Both parties rely on Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191 (Fed. Cir. 1997) in support of their positions. In that case, the reissue applicant only cited a single difference in scope in his declaration where the reissue application created two ether new and material differences in scope that were not referenced in the reissue declaration. Because the Nupla applicant had amended the claims to create three material differences but only directed his declaration to one difference, the Federal Circuit found the reissue claims invalid due to the faulty declaration. Nupla, 114 F.3d at 194. With regard to the one difference in scope explained in the declaration, the Federal Page 10 Circuit found the applicant's declaration to be adequate. Nupla, 114 F.3d at 194. The part of the Nupla declaration found to be adequate stated the original claim, described the reissue claim, and noted that the original patent claimed less than the patentee had a right to claim due to error. 114 F.3d at 193-94. The reissue declaration at issue here is more detailed than the part of the Nupla reissue declaration held to be valid. (Compare MS Ex. 3 at 51-54, with Nupla. 114 F.3d at 193-94.) Additionally, in contrast to the Nupla declaration, the patentees' declaration here explains each difference in scope claimed by AT&T. (AT&T Ex. 11; MS Ex. 3 at 51-52.) Accordingly, this Court declines to invalidate the 580 patent due to an alleged inadequate explanation of difference in claim scope.

  Finally, the patentees' attribution of error in the reissue declaration is sufficient. The patentees attributed all error to the inability of Cubert to fully understand the scope of the claims. (MS Ex. 3 at 52 ("These errors . . . resulted from an error of our attorney in judging the true scope of our invention and his erroneous advice to us as to the claims of the original . . . patent."; "[E]rrors . . . arose when our attorney in preparation of the claims . . . erroneously did not include certain features now recited in claims 40, 41, 42, and 42 of the reissue application."; [O]ur attorney . . . failed to properly advise us as to the true scope of the invention.").) Indeed, the Page 11 prosecuting attorney's failure to fully appreciate the scope of the invention is one of the most commonly accepted bases for filing a reissue application. In re Wilder, — 736 F.2d 1516, 1519-20 (Fed. Cir. 1984) (finding reissue declaration's assertion of attorney error sufficient). The patentees' assertion of attorney error is also supported by the undisputed fact that Cubert was not skilled in the art of the 832 patent's technology. (Cubert Dep. at 28-30.) Additionally, as required by Rule 175, the patentees declared that the errors "arose through inadvertence, accident or mistake and without any fraudulent or deceptive intention." (MS Ex. 3 at 52.) See 37 C.F.R. § 1.175 (1986).

  Accordingly, since this Court finds that the patentees' reissue declaration meets the requirements of Rule 175, Microsoft's motion for partial summary judgment is denied on this ground.

  B. Anticipation

  Microsoft argues that the reissue claims 40-43 are invalid under 35 U.S.C. § 102(b) because AT&T did not disclose a 1980 publication titled "Improved Quantizer for Adaptive Predictive Coding of Speech Signals at Low Bit Rates," co-authored by Dr. Atal and Dr. Manfred R. Schroeder, that purportedly anticipated claims 40-43 of the 580 patent. (MS Ex. 6.) Page 12

  Under the Patent Act, a patented invention must be "new, " or else it is deemed "anticipated." Hoover Group, `Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302.(Fed. Cir. 1995). Anticipation "requires that the four corners of a single, prior art document describe every element of the claimed invention either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation." Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000); accord Merck & Co. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1372 (Fed. Cir. 2003). The Federal Circuit considers the question of whether anticipation occurred, either through express or inherent disclosure, a question of fact. Rapoport v. Dement, 254 F.3d 1053, 1058 (Fed. Cir. 2001).

  Section 102(b) of the Patent Act, which relates to anticipation, provides: "A person shall be entitled to a patent unless . . . the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent in the United States. . . ." 35 U.S.C. § 102 (b). Microsoft contends that the 1980 Paper was prior art that should have been disclosed to the PTO Examiner pursuant to Section 102(b) of the Patent Act. AT&T argues that the 1980 Paper did not need to be disclosed because: (1) it was not a "printed publication," pursuant to Section 102(b); and (2) it did Page 13 not anticipate the claims of the 580 patent, since the coders described in the 1980 Paper and the 580 patent are completely different in nature.*fn3

  There is a genuine issue of material fact as to whether the 1980 Paper qualifies as a "printed publication" under Section 102(b). The burden of proof regarding whether the 1980 Paper qualifies as a "printed publication" rests on Microsoft:. Northern Telecom. Inc. v. Datapoint Corp., 908 F.2d 931, 936 (Fed. Cir. 1990) (affirming finding that defendant failed to prove that documents were printed publications); Northern Telecom, 908 F.2d at 936 ("Whether an asserted anticipatory document qualifies as a `printed publication' under [Section] 102 is a legal conclusion based on underlying factual determinations."). A "printed publication" is a document that is sufficiently available to the public more than one year before the effective filing date of the patent application. In re Cronyn, 890 F.2d 1158, 1160-61 (Fed. Cir. 1989) (paper that was not catalogued or indexed was not prior art under Section 102(b) because it was not accessible to the public); Northern Telecom, 908 F.2d at 936 (Fed. Cir. 1990) ("A document, to serve as a `printed publication,' must be generally available."); Hybritech Inc. v. Abbott Labs., 4 U.S.P.Q.2d 1001, 1006-07 (C.D. Cal. Page 14 1987), aff'd 849 F.2d 1446 (Fed. Cir. 1988) (limited availability of document after a speech does not constitute a printed publication). The parties agree that the effective filing date of the 580 patent is December 1, 1981, the filing date for the 832 patent application. Accordingly, Microsoft must establish that the 1980 Paper was sufficiently available to the public by December 1, 1980, one year prior to that effective filing date. Garrett Corp. v. United States, 422 F.3d 874, 877-78 (Fed. Cir. 1970); 35 U.S.C. § 102(b).

  Dr. Atal made an oral presentation based on the 1980 Paper to the 1980 Institute of Electrical and Electronics Engineers, Acoustics, Speech and Signal Processing Society Conference ("ICASSP Conference"), which was held from April 9-11, 1980. (MS Ex. 6; Atal Dep. at 226-228.) The 1980 Paper was eventually bound with other papers presented at the conference in a single volume, however, it is unclear when that volume was published and to whom it was made available. Indeed, there is a question of fact over whether the 1980 Paper was sufficiently available to the public prior to December 1, 1980.

  As a preliminary matter, since an oral presentation of an academic paper does not alone constitute a "printed publication" under Section 102(b), Dr. Atal's oral presentation of the 1980 Paper at the ICASSP Conference does not transform the 1980 Paper into a printed publication. Hybritech, 4 U.S.P.Q.2d Page 15 at 1006-07. Instead, this Court focuses its inquiry on when the 1980 Paper was sufficiently available to the public through conventional research aids. See In re Cronyn, 890 F.2d at 1161; In re Bayer, 568 F.2d 1357, 1361 (C.C.P.A. 1978).

  In its reply brief, Microsoft attached two declarations from the Chair and Vice Chair of the April 1980 ICAASP Conference Committee, averring that the 1980 Paper was distributed to conference attendees in a bound, multi-volume set of presented papers. (Declaration of J. Robert Ashley, Ph.D., dated Dec. 9, 2003 ("Ashley Decl.") ¶ 5; Declaration of Lloyd J. Griffiths, dated Dec. 9, 2003 ("Griffiths Decl.") ¶ 5.) Additionally, Microsoft submitted a declaration of a Drexel University Librarian reporting when the 1980 Paper was first borrowed from Drexel's library. (Declaration of Tracy L. Hull, Esq., dated Dec. 9, 2003 ("Hull Decl.") ¶ 6.) Despite the fact that AT&T has claimed the 1980 Paper was prior art for more than 16 months, Microsoft did not identify the above-listed declarants in their initial disclosures, during discovery, or as persons expected to be called at trial. (See MS Second Supplemental Initial Disclosures; MS Responses to AT&T's Sixth Set of Interrogatories; Joint Letter to the Court, dated Dec. 17, 2003.) AT&T requests that this Court strike these declarations. (Joint Letter, dated Dec. 17, 2003 at 5-7.)

  This Court will not permit circumvention of the Page 16 discovery rules. See Fed.R.Civ.P. 26(a), 33(b), 37 (b). Accordingly, Microsoft is `barred from relying on the declarations for purposes of this motion since: (1) Ashley, Griffiths and Hull were not identified before the close of discovery, or even before submission of Microsoft's reply papers; and (2) AT&T had no opportunity to depose these witnesses before the close of fact discovery.*fn4

  The only other evidence Microsoft presents on whether the 1980 Paper qualifies as a printed publication is the declaration of its expert, Dr. Allen Gersho, who hypothesizes that the 1980 Paper was distributed to the attendees of the ICAASP Conference, catalogued and made available to the public shortly thereafter. (Declaration of Dr. Alien Gersho, dated November 5, 2003 ("Gersho Decl.") ¶ 15.) However, Dr. 3ersho's declaration rests on "assumptions," not facts since he neither attended the ICAASP Conference, nor received a copy of the 1980 Paper. Moreover, at deposition he acknowledged that he "cannot say with absolute certainty" that the paper would have been distributed at the conference. (Deposition of Alien Gersho, dated November 20, 2003 ("Gersho Dep.") at 94-98; Gersho Decl. ¶ 15.) Dr. Gersho's assumptions concerning the publication of the Page 17 1980 Paper are insufficient to constitute clear and convincing evidence of its publication date.

  Microsoft provides this Court with-no other evidence to meet its burden of proving that the 1980 Paper is a "printed publication," as contemplated by Section 102(b). As there is a genuine issue of material fact concerning whether the 1980 Paper-qualifies as a printed publication, this Court need not address whether the 1980 Paper anticipates the subject matter of the 580 reissue claims 40-43.

  C. Recapture

  Microsoft contends that claims 40-43 of the 580 patent are invalid because they violate the recapture rule. "The recapture rule `prevents a patentee from regaining through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims.'" Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1370-71 (Fed. Cir. 2001) (quoting In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)). Specifically, the recapture rule "prevents an applicant from recapturing through reissue [subject] matter surrendered to overcome a rejection based on prior art." In re Doyle, 293 F.3d 1355, 1358 (Fed. Cir. 2002); accord Pannu. 258 F.3d at 1370-71. ("Reissued claims that are broader than the original patent's claims in a manner directly pertinent to the subject matter Page 18 surrendered during prosecution are impermissible."). The reissue statute states:

Whenever any patent is, through error, without any deceptive intention, deemed wholly or partly inoperative or invalid . . . by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent. . . .
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
35 U.S.C. § 251.

  The Patent Act allows a patentee to seek a reissue patent to correct a justifiable or unintentional error in an original patent. 35 U.S.C. § 251. Not every action by a patentee that might be labeled "error" is correctable by reissue. Hester Indus., Inc. v. Stein. Inc., 142 F.3d 1472, 1479 (Fed. Cir. 1998). Attempts to recapture by reissue that which was previously surrendered during the prosecution of the original patent "is not an error of [the] kind which will justify the granting of a reissue patent which includes the matter withdrawn." Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed. Cir. 1993); accord Clement, 131 F.3d at 1468 (holding that a deliberate decision by patentee to limit claims during prosecution of the original application "cannot be said to involve the inadvertence or mistake contemplated 35 U.S.C. § 251 Page 19 ." (internal quotations omitted)).

  The application of the recapture rule is a multi-step process. First, the court should "`determine whether and in which "aspect" the reissue claims are broader than the patent claims' [in the original patent.]" Pannu, 258 F.3d at 1371 (quoting In re Clement. 131 F.3d at 1468). For example, a reissue claim that deletes a limitation or element from the patent claim in the original patent is broader with respect to that limitation. In re Doyle, 293 F.3d at 1358; In re Clement 131 F.3d at 1468. Second, the court should "determine whether the broader aspects of the reissued claim related to . . . subject matter [surrendered during the original prosecution]." Pannu, 258 F.3d at 1371. Subject matter is surrendered where there are "arguments and changes to the claims made in an effort to overcome a prior art objection." In re Clement, 131 F.3d at 1469. If there is no surrender of subject matter during the original prosecution, there is no recapture and no need to proceed to the third step. Seattle Box Co. v. Indus. Crating & Packaging. Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). The third step, if applicable, requires the court to determine "whether the reissue claims were materially narrowed in other respects to avoid the recapture rule." Pannu, 258 F.3d at 1371. While claim scope "is ultimately a question of law, . . . resolution of that question turns in significant part on underlying facts." Page 20 Tillotson, Ltd, v. Walbro Corp., 831 F.2d 1033, 1039 (Fed. Cir. 1987) (vacating grant of summary judgment and remanding due to issues of fact concerning whether reissue. claims broadened the scope of claims); accord Clement, 131 F.3d at 1468.*fn5

  As noted, "[t]he first step in applying the recatpure rule is to determine whether and in what `aspect' the reissue claims are broader than the patent claims." Clement, 131 F.3d at: 1468. Microsoft claims that reissue claims 40-43 are broader than original claims 34 and 37 because: (1) "independent reissue claims 40 and 42 are broader than the original claims 34 and 37 because they no longer include the recited `first,' [and] second' `differences,' and `third' signal limitations found in the original claims of the 832 patent;" and (2) "[c]laims 40-43 recite no limitations whatsoever as to how the excitation signal is or was generated." (MS Br. at 18.) In contrast, AT&T contends that there is a genuine issue of material fact as to whether the reissue claims are broader or narrower than the original 832 claims. (AT&T Opp. at 32-33.) This Court agrees that Microsoft has not met its burden of showing that the reissue claims are broader than the 832 claims.

  For example, Claim 34 of the 832 patent recites how Page 21 multiple pulses are formed, but does not indicate a format of the multiple pulses or what those multiple pulses represent. " (832 Patent, Col. 22:7-22:37.) In contrast, reissue claim 42 does not recite how multiple pulses are formed, but rather recites a format for the multiple pulses and states what they represent. (580 Patent, Col. 24:13-24:32.) Indeed, this Court questions whether the reissue claims "recite [] the multiple pulses from a completely different perspective than [the 832 patent claims]," and thus, whether one skilled in the art would view the reissue claims as broader or narrower than the 832 claims. (AT&T Opp. at 33; Declaration of Nikil S. Jayant, dated Dec. 3, 2003 ("Jayant Decl.") ¶¶ 14-15 (stating that reissue claims 40 and 42, and 832 claims 34 and 37 are "written from a completely distinct perspective").) Indeed, AT&T submits a declaration from its technical expert, Dr. Nikil S. Jayant, stating that "it can . . . easily be said that the new claims are narrower than the original claims. It is my opinion that one of ordinary skill in the art would consider the new claims to be directed to a different aspect of the invention than had been originally covered, such that the concepts of `broader' and `narrower' are more difficult to express." (Jayant Decl. ¶ 16.)

  In contrast, Microsoft's evidence and argument on this point is gossamer. Microsoft has not established by clear and convincing evidence that the reissue claims are broader than the Page 22 original 832 claims. indeed, it does not cite to expert testimony to refute AT&T's expert's analysis. Because Microsoft has not met its "heavy burden" in establishing that the 580 patent is invalid due to recapture, its partial summary judgment motion is denied. See Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002); 35 U.S.C. § 282.

  CONCLUSION

  For the reasons set forth above, Microsoft's motion for partial summary judgment on invalidity of claims 40-43 of the 580 patent is denied.

  SO ORDERED


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