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Lambeth Magnetic Structures, LLC v. Seagate Technology (US) Holdings, Inc

United States District Court, W.D. Pennsylvania

June 24, 2019

LAMBETH MAGNETIC STRUCTURES, LLC, Plaintiff,
v.
SEAGATE TECHNOLOGY (US) HOLDINGS, INC., et al., Defendants. LAMBETH MAGNETIC STRUCTURES, LLC, Plaintiff,
v.
WESTERN DIGITAL CORPORATION, et al., Defendants.

          MEMORANDUM ORDER

          Cathy Bissoon, United States District Judge.

         Pending before the Court are two sets of cross-motions for summary judgment in two related patent infringement cases, Civil Action Nos. 16-538 and 16-541. For the reasons that follow, all four motions will be granted in part and denied in part.

         In Civil Action 16-538, Seagate Technology (US) Holdings, Inc. and Seagate Technology LLC (collectively, “Seagate”) move for judgment of (1) invalidity of United States Patent No. 7, 128, 988 (the “'988 patent”) due to inadequate written description; (2) non-infringement of the '988 patent by Seagate; and (3) lack of pre-suit damages. (Seagate's Motion for Summary Judgment, Civil Action No. 16-538, Doc. 150.) Plaintiff Lambeth Magnetic Structures, LLC (“Lambeth”) moves for partial summary judgment in its favor on several of Seagate's affirmative defenses: (1) invalidity of the '988 patent; (2) Seagate's equitable defenses (equitable estoppel, laches, waiver, and unclean hands); (3) express or implied license, release, exhaustion and double recovery; and (4) standing. (Lambeth's Motion for Summary Judgment against Seagate, Civil Action No. 16-538, Doc. 157.)

         In Civil Action 16-541, Western Digital Corporation, Western Digital Technologies, Inc., Western Digital (Fremont), LLC, Western Digital (Thailand) Company Limited, Western Digital (Malaysia) Sdn.Bhd and HGST, Inc. (collectively, “Western Digital”), move for judgment of (1) non-infringement of the '988 patent by Western Digital; (2) invalidity of the '988 patent based on lack of enablement; and (3) lack of pre-suit damages. (Western Digital's Motion for Summary Judgment, Civil Action 16-541, Doc. 158.) Lambeth moves also for partial summary judgment in its favor on several of Western Digital's affirmative defenses: (1) failure to comply with the requirements of 35 U.S.C. §§ 102 (novelty), 103 (obviousness), and 116 (omission of joint inventors) such that the '988 patent is invalid; (2) express or implied license; (3) standing; and (4) Western Digital's equitable defenses (laches and unclean hands). (Lambeth's Motion for Summary Judgment against Western Digital, Civil Action No. 16-541, Doc. 159; Lambeth's Brief in Support of Motion for Summary Judgment against Western Digital, “Lambeth's MSJ Brief Against Western Digital, ” Civil Action No. 16-541, Doc. 173.)

         BACKGROUND[1]

         The '988 patent[2] concerns an atomic structure for creating thin film magnetic materials with desirable properties (specifically, uniaxial magnetic anisotropy, which the Court will define shortly), and devices containing such materials. Thin film magnetic materials with uniaxial magnetic anisotropy are useful in devices such as hard disk drives (“HDDs”) because they facilitate reliably writing and reading data. Lambeth claims that Seagate and Western Digital design and manufacture high performance HDDs that infringe the '988 patent by containing at least one recording head made from the invented structure.

         I. Crystalline Materials

         Some background on crystalline materials is necessary to understand the parties' dispute as well as the specialized terms and notation the Court will use throughout this Memorandum Order. In crystalline materials, "the atoms are arranged in an ordered three-dimensional pattern that extends over a long range atomic scale." (Lambeth's Response to Seagate's SOF at ¶ 3.)[3] A "unit cell" is a three-dimensional repeating unit in a crystalline material. (Id. at ¶¶ 3, 5.)

         Crystalline materials can be "single crystal," meaning that if one were to follow a fixed direction from one atom in the crystal, there is a constant, repeating distance between subsequent atoms in the crystal, or "polycrystalline," meaning the material contains multiple crystals that are sometimes called "grains." (Id. at ¶¶ 6-9.)

         The three predominant types of unit cells found in nature for metallic crystals are body centered cubic ("bcc"), face centered cubic ("fee"), and hexagonal close packed ("hep"), as depicted below:

         (Image Omitted)

(Lambeth's Response to Western Digital's SOF at ¶¶ 20, 21.)

         "For a given crystal, the orientation of crystal planes and crystal directions can be described using a coordinate system called the 'Miller Index, '" which "uses x, y, z coordinates to denote directions and planes within a cubic crystal." (Lambeth's Response to Seagate's SOF at ¶¶ 14-15.) Using the notation of this coordinate system, the "(110)" plane of a bcc crystal, and the "[110]" direction of a bcc crystal, which is perpendicular to that plane, are shown below in blue and red, respectively:

         (Image Omitted)

(Id. at ¶¶ 19-20.) Also using this notation system, the (111) plane of an fee crystal and the [111] direction of an fee crystal, which is perpendicular to that plane, are shown in blue and red respectively:

         (Image Omitted)

(Id at ¶¶ 24-25.)

         When describing the orientation of a crystal, a "bcc (110) crystal" means that the bcc crystal's (110) plane is parallel to the substrate and its [110] direction is perpendicular to the substrate. (Id. at ¶ 17.) Likewise, for an "fee (111) crystal," its (111) plane is parallel to the substrate and its [111] direction is perpendicular to the substrate. (Id. at ¶ 22.)

         For hexagonal crystals, such as hep crystals, crystallographers use a "Miller Bravais" index consisting of four numbers to describe planes of the crystal. (Lambeth's Response to Western Digital's SOF at ¶ 24.)

         Taking an imaginary slice through a crystal along a particular plane exposes a set of atoms with a repetitive two-dimensional pattern. (Id.) For example, the (111) plane of an fee crystal and the (0001) plane of an hep crystal have two-dimensional hexagonal patterns across unit cells, as shown below:

         (Image Omitted)

(Id at ¶ 25.)

         II. Lambeth's Claims against Seagate and Western Digital

          Lambeth asserts claims 1, 3, 6, 7, 9, 17, 19, 27, 28 and 29 of the '988 patent against Seagate and Western Digital. Specifically, Lambeth asserts that the accused Seagate and Western Digital devices satisfy the elements recited in independent claims 1 and 27, which are incorporated in the remaining dependent claims asserted against Defendants. Claims 1 and 27 recite the following elements:[4]

a substrate;
at least one bcc-d layer which is magnetic, forming a uniaxial symmetry broken structure; and
at least one layer providing a (111) textured hexagonal atomic template disposed between said substrate and said bcc-d layer.

'988 patent at col. 45, ll. 3-8; id. at col. 46, ll. 62-67.

         The Court construed several of these claim terms in its Claim Construction Order (Civil Action No. 16-538, Doc. 78; Civil Action No. 16-541, Doc. 88) as follows:

Undisputed Claim Term

Construction

“bcc-d”

Either a body centered cubic or a body centered cubic derivative crystal structure.

Disputed Claim Term

Construction

“Atomic template”

An atomic pattern upon which material is grown and which is used to direct the growth of an overlying layer

“[Layer] providing a (111) textured hexagonal atomic template”

Layer that is predominately (111) hexagonal and that provides an atomic template

“Uniaxial”

Having an anisotropy energy density function with only a single maximum and a single minimum as the magnetization angle is rotated by 180 degrees from a physical axis

“Symmetry broken structure”

A structure consisting of unequal volumes or unequal amounts of the bcc-d variants of a six variant system

“Uniaxial symmetry broken structure”

A structure that is uniaxial as a result of the structure being symmetry broken

         ANALYSIS[5]

         I. Validity of the '988 Patent

         Seagate argues that the '988 patent is invalid due to inadequate written description, while Western Digital argues that the '988 patent is invalid due to lack of enablement. For the reasons that follow, the Court concludes that there are disputed issues of material fact concerning both written description and enablement, and that summary judgment on those grounds should be denied.

         A. Legal standards

         35 U.S.C. § 112(a) requires that a patent's specification contain:

a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

         This language creates “a written description requirement separate from enablement.” Ariad Pharms. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010).

         Pursuant to the written description requirement, the specification must “objectively demonstrate that the applicant actually invented-was in possession of-the claimed subject matter.” Id at 1349. In other words, “the specification must describe the invention in sufficient detail so ‘that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.'” In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). The inquiry into whether a patent complies with the written description requirement is a factual inquiry. Ariad, 598 F.3d 1351; Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). So, to decide whether the written description requirement is satisfied, the factfinder must assess whether the patent discloses the invention based on “an objective inquiry into the four corners of the specification from the perspective of a person or ordinary skill in the art.” Ariad, 598 F.3d 1351.[6]

         Pursuant to the enablement requirement, “the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.'” Genetech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). “The key word is ‘undue,' not ‘experimentation.'” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (internal citation omitted).

         Relevant factors for assessing enablement include:

(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.

Id. (“Wands factors”). The Wands factors are illustrative, not mandatory, and defendants bear the burden of proving by clear and convincing evidence that the patent is invalid for lack of enablement. Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013). While enablement is a question of law, resolving enablement depends on resolving underlying questions of fact regarding undue experimentation. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors. USA, Inc., 617 F.3d 1296, 1305 (Fed. Cir. 2010).

         B. Whether the '988 patent is invalid due to inadequate written description

         Seagate argues that the '988 patent is invalid due to inadequate written description because the patent claims two categories of atomic templates but describes only one. That is, Seagate argues that the '988 patent claims uniaxial symmetry broken structures grown on both single-crystal and polycrystalline templates, but describes only structures grown on single-crystal templates. (Seagate's Brief in Support of Motion for Summary Judgment, “Seagate's MSJ Brief, ” at 4-12, Civil Action No. 16-538, Doc. 163.) It maintains that the patent fails the written description test because it fails to describe the full genus of atomic templates covered by the claims. Lambeth responds that the cases on which Seagate relies involve true genus-species claims, which are not at issue here, and that in any event, the '988 patent demonstrates that Lambeth had possession of both single and polycrystalline templates. (Lambeth's Response to Seagate's MSJ at 2-4, Civil Action 16-538, Doc. 217.)

         For the reasons that follow, the Court will deny Seagate's motion for summary judgment of invalidity.

         Seagate argues that single crystal and polycrystalline atomic templates (for growing the claimed uniaxial symmetry broken structures) comprise a broad “genus” of atomic templates, with single crystal templates serving as a narrow “species” of atomic templates. (Seagate's MSJ Brief at 5.) As a result, Seagate argues that the '988 patent's specification “needs to show that one has truly invented the genus, i.e., that one has conceived and described sufficient representative species encompassing the breadth of the genus.” AbbVie Deutschland GmbH v. Janssen Biotech, Inc., 759 F.3d 1285 (Fed. Cir. 2014). Despite the requirement to fully describe the genus, Seagate asserts that Lambeth has failed to provide even a single example of the invention on a polycrystalline template. (Seagate's MSJ Brief at 1.)

         Lambeth responds that the claims at issue are not genus-species claims. (Lambeth's Response to Seagate's MSJ Brief at 2.) The patent discloses that each single crystal grain in a polycrystalline template can be treated as a single crystal template for purposes of the invention, negating any significance to the distinction. E.g., '988 patent at col. 23, ll. 20-23 (“for polycrystalline substrates the epitaxially grown films contain multiple variant sets corresponding to the crystalline orientations of the individual hexagonal template grains”).[7] Seagate's argument that the specification fails to describe the genus is, Lambeth contends, inapt.

         Moreover, Lambeth responds that even if single crystal and polycrystalline templates are considered separate species, the patent's specification indicates that polycrystalline templates are within the scope of the invention that Lambeth possessed. The specification both discloses polycrystalline templates as a type of atomic template that can be used to grow the desired magnetic films, e.g., '988 patent at col. 21, ll. 61-67 (“[t]his concept . . . enables the development of nearly linear magnetic response functions even for polycrystalline (110) textured bcc-d films epitaxially grown on polycrystalline, randomly oriented, (111) hexagonal atomic templates”), and shows possession by explaining physical attributes and conditions that yield the desired results on either single crystal or polycrystalline atomic templates, e.g., '988 patent at col. 33, ll. 54-59 (“[o]ur findings are that a symmetry broken structure can be obtained even for polycrystalline films provided the (111) hexagonal template is highly textured and the deposition angle with respect to the substrate normal is constrained to be within 15 < Ω < 75 degrees from the normal”).

         Given the specification's disclosures concerning polycrystalline templates and their use for creating the desired magnetic structures, the question of whether one skilled in the art would conclude from those disclosures that Lambeth had possession of uniaxial symmetry broken structures grown on polycrystalline templates is a disputed question of material fact with evidence on both sides. (Compare Seagate's SOF Exhibit 14, “Dr. Ross's May 2, 2018 Expert Report - Seagate, ” at ¶¶ 367-71 (person of skill in the art would conclude that inventor lacked such possession), with Seagate's SOF Exhibit 21, “Dr. Coffey's July 16, 2018 Responsive Expert Report - Seagate, ” at ¶¶ 197-98 (person of skill in the art would conclude that the patent discloses films grown on polycrystalline atomic templates).) It would be inappropriate for the Court to resolve this question at summary judgment.

         C. Whether the '988 patent is invalid due to lack of enablement

         For similar reasons, the Court will deny Western Digital's motion for summary judgment of invalidity based on lack of enablement.

         Western Digital argues that the '988 patent provides no guidance to a person of ordinary skill in the art as to how to make or use the claimed invention. (Western Digital's Brief in Support of Motion for Summary Judgement, “Western Digital's MSJ Brief, ” at 24, Civil Action No. 16-541, Doc. 165.) Specifically, considering several of the Wands factors, Western Digital argues that the specification: (1) provides only vague and conclusory statements about the parameters necessary to achieve the desired results, e.g., '988 patent at col. 22, ll. 54-55 (the processing conditions must be “just right” to achieve a uniaxial symmetry broken structure); (2) discloses no working examples (no material samples that are both uniaxial and symmetry broken); (3) provides no information regarding polycrystalline[8] uniaxial symmetry broken structures; (4) leaves instructional voids regarding necessary processing conditions that would require significant and unreasonable experimentation to fill; and (5) covers less terrain than the breadth of the claims would require. (Western Digital's MSJ Brief at 24-27.)

         In response, Lambeth argues that Western Digital's arguments either depend on genuinely disputed facts or lack any factual basis. (Lambeth's Response to Western Digital's MSJ Brief at 19.)

         The dispute concerning the level of guidance in the specification as to how to practice the invention is illustrative. Lambeth argues that the specification teaches a person of ordinary skill in the art how to practice the specific parameters yielding a uniaxial symmetry broken structure.[9] (Id. at 20.) Drawing on language in the specification, centering on the lines cited in the preceding footnote, Lambeth's expert, Dr. Kevin Coffey (“Dr. Coffey”), opines that “the patent provides a [Person of Ordinary Skill in the Art (“POSITA”)] with specific instructions on the geometry of a sputtering set up, specific instructions on which sputtering parameters should be controlled and how, and detailed discussion of how to apply two symmetry breaking mechanisms in tandem to effectively create a uniaxial symmetry broken bcc-d magnetic layer.” (Lambeth's Counter-SOF Exhibit L against Western Digital, “Dr. Coffey's July 16, 2018 Rebuttal Expert Report - Western Digital, ” at ¶ 108.) Despite Lambeth's evidence, Western Digital maintains that the directions in the specification are insufficient, and that Dr. Coffey's opinions are based on “cherry-pick[ed] quotes” from the patent that misconstrue its teachings. (Western Digital's MSJ Brief at 24-25.) Yet, as Lambeth argues, Western Digital cites no evidence that a person of ordinary skill in the art would be unable to practice the invention-let alone unable to practice the invention without undue experimentation-based on the level of guidance provided in the specification.[10] The question of whether the level of guidance provided in the specification is sufficient to enable a person of ordinary skill in the art to practice the invention without undue experimentation is, clearly, a disputed question of fact.

         Likewise, assessing each remaining Wands factor addressed by the parties would require deciding numerous disputed factual issues.

         Western Digital claims that the patent fails to disclose any working examples of the invention because it fails to disclose a sample of material that is both uniaxial and symmetry broken. But Lambeth cites evidence that “there are two working examples disclosed in the '988 Patent, namely, the samples ‘LS14252cx,' which discloses a Ni atomic template and an Fe magnetic bcc-d layer, see '988 Patent at [col. 42, l. 44 - col. 44, l. 22], and ‘LS0909-6,' which discloses a Cu atomic template and an Fe magnetic bcc-d layer, see Id. at [col. 41 l. 2 - col. 42, l. 26].” (Dr. Coffey's July 16, 2018 Rebuttal Expert Report - Western Digital at ¶ 161.)[11]

         Western Digital claims that the patent fails to address polycrystalline structures. But Lambeth cites the language of the specification itself, which states that “[t]he technique to obtain[] the same easy and hard magnetic axis behavior across an entire polycrystalline sample is to induce the appropriate (110) textured bcc-[d] coupled uniaxial variant set for each of the randomly oriented hexagonal templates, ” '988 patent at col. 22, ll. 11-15, and further states that “[t]he method of achieving this is to provide an energetically driven growth process that preferentially selects that the appropriate coupled variant set for each hexagonal template orientation being use[d], ” id. at col. 22, ll. 16-19.[12]

         Western Digital claims that the level of experimentation needed to make use of the full scope of the claims is high because the inventor himself never succeeded in creating a uniaxial symmetry broken structure. But, as just mentioned, Lambeth provides evidence that the patent discloses two examples of such structures.

         Finally, Western Digital argues that the patent is not enabled because the claims cover a boundless number of materials and structures of any size, but fail to teach how to make a uniaxial symmetry broken structure from various possible permutations of materials or how to make such a structure of any size. But again, Western Digital fails to provide any evidence to support that conclusion, and Lambeth responds by arguing, correctly, that this lack of evidence cannot meet Western Digital's burden to show lack of enablement by clear and convincing evidence.

         As the question of enablement boils down to a series of factual disputes about the inferences a person of skill in the art would draw from the specification and the amount of experimentation needed to practice the full scope of the claims, Western Digital's motion for summary judgment of invalidity due to lack of enablement will be denied.[13]

         II. Seagate's Motion for Judgment on Non-Infringement of the '988 Patent

          Seagate argues that Lambeth's evidence fails to show that Seagate's accused devices contain symmetry broken structures or a layer providing a (111) textured hexagonal template, and so Lambeth cannot establish infringement. Lambeth responds that there are genuinely disputed facts as to each component of Seagate's argument that preclude summary judgment. The Court will address each disputed claim element in turn to determine whether “no reasonable factfinder could find that the accused product contains every claim limitation or its equivalent.” Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 949 (Fed. Cir. 2016).

         A. Whether the accused Seagate devices contain symmetry broken structures

         The Court construed “symmetry broken structure” to mean a “structure consisting of unequal volumes or unequal amounts of the bcc-d variants of a six variant system.” Seagate focuses on the meaning of the Court's claim construction-specifically, the meaning of “consisting of”-and on Lambeth's evidence as to unequal volumes or amounts of the relevant variants. (Seagate's MSJ Brief at 12-13.)

         1. “Consisting of”

         Taking the Court's use of the phrase “consisting of” to imply that a layer satisfying that claim element must contain only crystals within the six variant system and no other crystals, Seagate argues that its accused FeCo layers cannot be symmetry broken because it is undisputed that they contain some crystals that are not variants of the six-variant system. (Id. at 14.) This argument draws support from the use of “consisting of” as a term of art in original claim construction indicating a closed set of components, e.g., Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1358 (Fed. Cir. 2016). Yet, as Lambeth argues, Seagate provides no support for the principle that “consisting of” is a term of art in interpreting a Court's construction of a claim term.

         The Court now clarifies that nothing in its claim construction requires such a limitation concerning the lack of additional crystals in the relevant layer. The Court also notes that this issue was not raised as a subject of dispute during the claim construction process. Defendants had ample opportunity to raise any arguments concerning claim limitations during claim construction but failed to raise this argument. As the Court's October 18, 2017 Claim Construction Order governs claim construction in this case, the Court will not revisit its constructions at this stage of the litigation.

         2. Evidence as to unequal volumes or unequal amounts

         Seagate next contends that Lambeth has provided no evidence to show that Seagate's accused layers contain unequal volumes or amounts of the relevant orientational variants, which would be required for those layers to meet the Court's construction of “symmetry broken structure.” To the contrary, Lambeth's experts provide such evidence. Specifically, they provide and describe an analysis based on dark field imaging of the accused layers showing that a particular orientational variant, a member of the relevant six variant system, is present in a greater amount than others. (Seagate's SOF Exhibit 18, “Dr. Clark's May 2, 2018 Initial Expert Report - Seagate, ” at ¶¶ 116-124 (more crystallites in the sample of the accused layer are oriented with their easy directions perpendicular to the long axis of the write head relative to other directions, and the variants present belong to the six variant system); Seagate's SOF Exhibit 20, “Dr. Coffey's May 2, 2018 Initial Expert Report - Seagate, ” at ¶¶ 181-188 (interpreting imaging results to show “the ...


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