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
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
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,
(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
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
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).
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,
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";
(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
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
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
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
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
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
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.
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.)
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
not anticipate the claims of the 580 patent, since the coders described
in the 1980 Paper and the 580 patent are completely different in
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.
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
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
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
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.
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
surrendered during prosecution are impermissible."). The reissue
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
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
." (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."
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
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
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.
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.