Case 1:13-cv-23309-CMA Document 258 Entered on FLSD Docket 10/15/2014 Page 1 of 15
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
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`CASE NO. 13-23309-CIV-ALTONAGA
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`ATLAS IP, LLC,
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`Plaintiff,
`
`v.
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`MEDTRONIC, INC., et al.,
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`Defendants.
`________________________/
`
`ORDER
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`THIS CAUSE came before the Court on Plaintiff, Atlas IP, LLC’s (“Atlas[’s]”) Motion
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`for Summary Judgment that the Asserted Claims of the ’734 Patent Are Not Invalid (“Motion”)
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`[ECF No. 139], filed August 4, 2014, with a Proposed Statement of Undisputed Facts . . .
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`(“Plaintiff’s SMF”) [ECF No. 140] and a Declaration of George C. Summerfield (“Summerfield
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`Declaration”) [ECF No. 141] containing documents supporting the Motion. Defendants,
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`Medtronic, Inc.; Medtronic USA, Inc.; and Medtronic Minimed, Inc. (collectively, “Medtronic”),
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`filed a response in Opposition to Atlas’s Motion for Summary Judgment . . . (“Response”) [ECF
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`No. 160], accompanied by a Response to Atlas’s Statement of Undisputed Facts (“Defendants’
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`SMF”) [ECF No. 161]. Atlas filed a Reply . . . (“Reply”) [ECF No. 184]. On September 11,
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`2014, the Court heard oral argument on the Motion. (See [ECF No. 213]). The Court has
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`carefully considered the parties’ written submissions, oral arguments, and applicable law.
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`ST. JUDE 1027
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`

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`CASE NO. 13-23309-CIV-ALTONAGA
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`I. BACKGROUND1
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`Atlas seeks a summary judgment finding the asserted claims of United States Patent
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`Number 5,371,734, titled “Medium access control protocol for wireless network” (the “‘734
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`Patent”) [ECF No. 63-1], are not invalid.2 (Mot. 1).
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`
`
`Claim 21 requires the following limitations:
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`A communicator for wirelessly transmitting frames to and receiving frames from
`at least one additional communicator in accordance with a predetermined medium
`access control protocol, the communicators which transmit and receive the frames
`constituting a Group, each communicator including a transmitter and a receiver
`for transmitting and receiving the frames respectively, the medium access control
`protocol controlling each communicator of the Group to effect pre-determined
`functions comprising:
`
`
`designating one of the communicators of the Group as a hub and the
`remaining the [sic] communicators of the Group as remotes [the “designating”
`limitation];
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`the hub establishing repeating communication cycles, each of which has
`intervals during which the hub and the remotes transmit and receive frames
`[the “establishing” limitation”];
`
`the
`to establish
`remotes
`the
`to
`information
`transmitting
`the hub
`communication cycle and a plurality of predeterminable intervals during each
`communication cycle, the intervals being ones when the hub is allowed to
`transmit frames to the remotes, when the remotes are allowed to transmit
`frames to the hub, and when each remote is expected to receive a frame from
`the hub [the “transmitting” limitation];
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`the remotes powering off their transmitters during times other than those
`intervals when the remote is allowed to transmit frames to the hub, by using
`the information transmitted from the hub;
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`the remotes powering off their receivers during times other than those
`intervals when the remote is expected to receive a frame from the hub, by
`using the information transmitted from the hub;
`
`
`1 A more detailed factual background is available in the October 8, 2014 Order (“Oct. 8 Order”) [ECF No.
`243] granting in part and denying in part Medtronic’s Motion for Summary Judgment.
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`2 The Court’s analysis pertains to Claim 21, the only remaining claim in the case. (See generally Oct. 8
`Order).
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`2
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`CASE NO. 13-23309-CIV-ALTONAGA
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`the hub transmitting two frames containing information to establish the
`plurality of predeterminable intervals during each communication cycle, the
`second frame containing the information to established [sic] the plurality of
`predeterminable intervals occurring before the intervals in which the remotes
`are allowed to transmit frames to the hub [the “two frames” limitation].
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`(’734 Patent, col. 50, ll. 39–col. 51, ll. 9 (“Claim 21”) (alterations added)).3 Atlas argues there
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`are no disputed facts Claim 21 is not anticipated, is not obvious, and does not lack written
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`support or enablement. (See generally Mot.). The Court addresses each of Atlas’s invalidity
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`arguments in turn.
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`II. LEGAL STANDARDS
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`Summary judgment is be rendered if the pleadings, the discovery and disclosure materials
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`on file, and any affidavits show that there is no genuine issue as to any material fact and that the
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`movant is entitled to judgment as a matter of law. See FED. R. CIV. P. 56(a), (c). “[A] patent is
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`presumed valid, and this presumption exists at every stage of the litigation . . . . [W]here the
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`challenger fails to identify any persuasive evidence of invalidity, the very existence of the patent
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`satisfies the patentee’s burden on the validity issue.” Canon Computer Sys., Inc. v. Nu-Kote
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`Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998) (alterations added; citations omitted).
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`III. ANALYSIS
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`
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`Atlas asserts it is entitled to summary judgment regarding Medtronic’s invalidity
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`challenges, including anticipation under 35 U.S.C. section 102; obviousness under 35 U.S.C.
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`section 103; and lack of written description or enablement under 35 U.S.C. section 112. (See
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`Mot. 1).
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`
`
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`3 The Court construed the ’734 Patent in the related case Atlas IP, LLC v. St. Jude Medical, Inc., No. 14-
`cv-21006-CMA (S.D. Fla. July 30, 2014) [ECF No. 73] (“July 30 Claim Construction Order”).
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`3
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`A. Anticipation
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`Atlas argues Claim 21 of the ’734 Patent is not invalid as anticipated. (See Mot. 3–5;
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`Reply 1–5). A patent is valid if it is not anticipated by prior art in the area. See 35 U.S.C. §
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`102(a). Invalidation based on anticipation “requires a showing that each element of the claim at
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`issue, properly construed, is found in a single prior art reference.” Zenith Elecs. Corp. v. PDI
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`Commc’n. Sys., Inc., 522 F.3d 1348, 1363 (Fed. Cir. 2008). A “prior art reference must disclose
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`each and every feature of the claimed invention, either explicitly or inherently.” Eli Lilly & Co.
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`v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375–76 (Fed. Cir. 2006) (citing Glaxo Inc. v.
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`Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995)). “Anticipation requires clear and
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`convincing proof that a single prior art reference ‘not only disclose[s] all of the elements of the
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`claim within the four corners of the document, but . . . also disclose[s] those elements arranged
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`as in the claim.’” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,
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`1351 (Fed. Cir. 2013) (alterations in original) (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545
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`F.3d 1359, 1369 (Fed. Cir. 2008)). Anticipation is a question of fact. Beckson Marine, Inc. v.
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`NFM, Inc., 292 F.3d 718, 723 (Fed. Cir. 2002) (citation omitted).
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`
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`The parties’ anticipation arguments relate to the establishing limitation of the ’734 Patent,
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`described as “the hub establishing repeating communication cycles, each of which has intervals
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`during which the hub and the remotes transmit and receive frames.”4 (Mot. 4 (citing ’734 Patent,
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`col. 50, ll. 52–54)). Atlas argues the prior art references identified by Medtronic’s expert, Mark
`
`Lanning (“Lanning”), do not anticipate Claim 21 of the ’734 Patent. (See Mot. 1). According to
`
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`4 The parties’ briefing related to the July 30 Claim Construction Order did not specifically request claim
`construction of the establishing limitation, including the phrase “each of which,” a phrase now disputed.
`Regarding this limitation, the Court construed the words “the hub establishing repeating communication
`cycles” to mean “the hub defining in advance the starting time and duration for each repeating
`communication cycle” (July 30 Claim Constr. Order 12), with each communication cycle being “a series
`of intervals for outbound and inbound communications” (id. 10 n.3).
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`
`
`4
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`Atlas, the Patent requires prior art references disclose the establishing limitation to anticipate
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`Claim 21. (See Mot. 4).
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`As a preliminary matter, the parties dispute how the establishing limitation should be
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`defined. Atlas contends the plain meaning of the establishing limitation is “each communication
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`cycle includes at least one interval in which at least one remote transmits a frame to the hub.”
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`(Reply 2). Medtronic insists Atlas makes a new claim construction argument by improperly
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`modifying the claim language with the term “must” to convey “each communication cycle
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`having intervals during which the hub and remotes must transmit and receive frames.” (Resp. 7
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`(emphasis in original; citation and internal quotation marks omitted)). Courts generally give
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`claim terms their plain and ordinary meaning. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 723
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`F.3d 1363, 1373 (Fed. Cir. 2013) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
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`2005)).
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`The Court previously stated, “the hub defines in advance the starting time and duration
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`for each repeating communication and transmits to the remotes the information necessary to
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`know these starting times and durations. Each communication cycle has intervals during which
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`the hub and the remotes transmit and receive frames.” (July 30 Claim Constr. Order 14 (citations
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`and internal quotation marks omitted)). In other words, each communication cycle has intervals
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`(specifically, two or more intervals) (see id. 13–14), and “the hub and the remotes transmit and
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`receive frames” during the intervals (’734 Patent, col. 50, ll. 53–54). The plain meaning
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`necessitates the hub and the remotes transmit and receive frames during each communication
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`cycle, not that the hub and the remotes simply may do so during a communication cycle as
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`Medtronic argues. (See Resp. 7).
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`A prior art reference needs to disclose each claim limitation, including the establishing
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`
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`5
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`limitation discussed. Turning to the prior art references at issue, Medtronic’s expert opines the
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`following nine references anticipate the asserted claims of the ’734 Patent (see Mot. 2 (citing
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`Summerfield Decl., Ex. B, Expert Report of Mark Lanning Regarding Invalidity . . . (“Lanning
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`Report”), June 9, 2014 [ECF No. 141-2])):
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`
`
`Patent/Reference
`
`1
`
`Sheldon L. Gilbert, et al.,
`“Reservation-based Polling
`Protocol for a Wireless Data
`Communications Network”
`(“Gilbert”) [ECF No. 141-
`10]
`
`2 Alfred B. Wieczorek, et al.,
`“Energy Saving Protocol for
`a TDM Radio”
`(“Wieczorek”) [ECF No.
`141-11]
`
`3 Morris A. Moore, “Battery
`Saver for a TDM System”
`(“Moore”) [ECF No. 141-12]
`
`
`4
`
`Peter J. Mabey, et al.,
`“Power Economising in
`Multiple User Radio
`Systems” (“Mabey”) [ECF
`No. 141-13]
`
`5 Brian D. Neve, et al.,
`“Communication System”
`(“Neve”) [ECF No. 141-14]
`
`
`Shigeru Otsuka, “Power
`Saving System for Time-
`Division Multiple Access
`Radiocommunication
`Network” (“Otsuka”) [ECF
`
`6
`
`
`
`Prior Art References
`
`United States
`Patent
`Number
`5,297,144
`
`
`Date
`
`Mar.
`1994
`
`Repeating
`Communication Cycle
`Identified by Lanning
`(See Gilbert, Figure 3; see
`also Pl.’s SMF ¶ 21;
`Defs.’ SMF ¶ 21).
`
`22,
`
`5,150,361
`
`
`Sept.
`1992
`
`22,
`
`4,964,121
`
`
`Oct. 16, 1990
`
`5,175,870
`
`
`Dec.
`1992
`
`29,
`
`4,887,266
`
`
`Dec.
`1989
`
`12,
`
`4,577,315
`
`
`Mar.
`1986
`
`18,
`
`(See Wieczorek, Figure 4,
`Channels A & B; see also
`Pl.’s SMF ¶ 22; Defs.’
`SMF ¶ 22).
`
`(See Moore, Figure 4a,
`Block 300; see also Pl.’s
`SMF ¶ 23; Defs.’ SMF ¶
`23).
`
`(See Mabey, Figure 2; see
`also Pl.’s SMF ¶ 24;
`Defs.’ SMF ¶ 24).
`
`
`(See Neve,
`Cyclical
`repeating time slots; see
`also Pl.’s SMF ¶ 25;
`Defs.’ SMF ¶ 25).
`
`(See Otsuka, Figure 5; see
`also Pl.’s SMF ¶ 26;
`Defs.’ SMF ¶ 26).
`
`
`6
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`

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`CASE NO. 13-23309-CIV-ALTONAGA
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`No. 141-15]
`
`7 Kadathur S. Natarajan, et al.,
`“Battery Efficient Operation
`of Scheduled Access
`Protocol” (“Natarajan”)
`[ECF No. 141-16]
`
`8 Kadathur S. Natarajan, et al.,
`“Medium Access Control
`Protocol for Wireless LANs
`(An Update)” (“Natarajan
`article”) [ECF No. 141-17]
`
`9 Richard W. Baker,
`“Pacemaker Programmer
`with Telemetric Functions”
`(“Baker”) [ECF No. 141-18]
`
`
`
`
`5,241,542
`
`
`Aug.
`1993
`
`31,
`
`N/A
`
`
`Mar. 9, 1992
`
`4,550,370
`
`
`Oct. 29, 1985
`
`(See Natarajan, Figure 4;
`see also Pl.’s SMF ¶ 27;
`Defs.’ SMF ¶ 27).
`
`
`(See Natarajan Article,
`Figure 1; see also Pl.’s
`SMF ¶ 28; Defs.’ SMF ¶
`28).
`
`
`(See Lanning Dep. 70:2–
`5; but see Resp. 15 (citing
`Lanning Report 54); see
`also Pl.’s SMF ¶ 20;
`Defs.’ SMF ¶ 20).
`
`Atlas stresses each of the prior art references, except the Baker reference, does not disclose the
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`establishing limitation. (See Mot. 4). Medtronic concedes Lanning stated “[i]t is possible to
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`have a communication cycle . . . where no frames are sent from the remotes to the hub” in eight
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`of the nine prior art references. (Pl.’s SMF ¶ 29 (alterations added) (citing Summerfield Decl.,
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`Ex. M, Oral Deposition Mark Lanning (“Lanning Deposition”), July 17, 2014, 45:19–22 [ECF
`
`No. 141-20]); Defs.’ SMF ¶ 29; see Pl.’s SMF ¶¶ 30–36 (citations omitted); Defs.’ SMF ¶¶ 30–
`
`36). Medtronic does not refute these eight prior art references fail to anticipate the plain
`
`meaning of the establishing limitation — that the hub and the remotes transmit and receive
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`frames during each communication cycle.5 (See Resp. 6–14; Reply 1–4).
`
`
`
`Medtronic’s only argument is a prior art reference need not invalidate under all
`
`embodiments or anticipate all of the time in order to invalidate. (See Resp. 11). Medtronic
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`compares this case to Upsher-Smith Labs, Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1320–21 (Fed.
`
`
`5 Medtronic’s Response focuses on claim construction of the establishing limitation.
`
`
`
`7
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`Cir. 2005), in which “a prior art composition that optionally includes an ingredient anticipates a
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`claim for the same composition that expressly excludes that ingredient.” (Resp. 11 (internal
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`quotation marks omitted) (quoting Upsher-Smith Labs, Inc., 412 F.3d at 1320–21)). That case,
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`involving ingredients in a vitamin supplement, is distinguishable. See Upsher-Smith Labs, Inc.,
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`412 F.3d at 1322 (analyzing whether a vitamin patent that contains every element of the asserted
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`claim except the limitation, “essentially free of antioxidants” — because it optionally includes
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`antioxidants — anticipated a vitamin patent that generally excluded antioxidants). Here, the
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`establishing limitation is a key component of how the technology operates, and the limitation
`
`expressly requires that the hub and the remotes transmit and receive frames during each
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`communication cycle. (See Reply 4–5). As “[a]nticipation requires a showing that each element
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`of the claim at issue, properly construed, is found in a single prior art reference[,]” Zenith Elecs.
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`Corp., 522 F.3d at 1363 (alterations added), Medtronic’s interpretation that a prior art reference
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`need only disclose “in at least some situations” to anticipate the asserted claim fails to persuade
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`(Resp. 11). The eight prior art references identified by Medtronic thus do not anticipate each
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`limitation of Claim 21.
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`Regarding the ninth Baker prior art reference, Atlas argues Lanning did not identify
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`repeating communication cycles for the Baker reference. (See Mot. 4). Further, Atlas contends
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`Lanning failed to identify a medium access control protocol, a required limitation to anticipate
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`Claim 21. (See id. 3–4). For support, Atlas cites Lanning’s Deposition testimony (see Reply 5):
`
`Q: What are the communication cycles you’ve identified in Baker?
`
`A:
`
`Baker only identifies at most one cycle. There is [sic] not two cycles
`identified by Baker.
`
`
`(Lanning Dep. 70:2–5 (alteration added)).
`
`Nevertheless, Medtronic argues Lanning stated in his Report “the programmer and
`
`
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`8
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`pacemaker disclosed in Baker communicate during predeterminable intervals of time in
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`repeating communication cycles using a switching circuit and a voltage-controlled oscillator.”
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`(Resp. 15 (emphasis omitted) (quoting Lanning Report 54)). Although Lanning’s Report cites to
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`certain sections of the Baker Patent in an effort to demonstrate Baker’s claims satisfy the
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`repeating communication cycle limitation (see Resp. 16 (citing Baker, col. 13, ll. 36–52)),
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`nothing in those sections of the Patent expressly identifies repeating communication cycles in
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`Baker (see Baker, col. 13, ll. 36–52). Lanning’s statement that Baker has repeating
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`communication cycles seems rather conclusory. Further, the only evidence in support of
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`Medtronic’s position is from Lanning’s Report, which Atlas argues is unsworn and cannot be
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`relied upon in summary judgment. (See Reply 5 (citing Carr v. Tatangelo, 338 F.3d 1259, 1273
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`n.27 (11th Cir. 2003)). At the September 24 hearing, Medtronic admitted as much.6 (See Sept.
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`24, 2014 Hr’g Tr. 160:5–20). As a result, Medtronic has not established a genuine issue of
`
`material fact.7
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`Thus, even if Baker discloses a medium access control protocol, it does not disclose the
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`repeating communication cycle limitation. Accordingly, the nine prior art references do not
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`anticipate each of Claim 21’s limitations, and Atlas is entitled to summary judgment on the
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`invalidity challenge of anticipation.
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`B. Obviousness
`
` “An obviousness inquiry assesses ‘the differences between the subject matter sought to
`
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`6 Medtronic stated, “We have cited an unsworn report. I would disagree that we are relying on it. And
`that’s our only evidence of that limitation.” (Sept. 24, 2014 Hr’g Tr. 160:7–9). Medtronic did not cite to
`other evidence in its briefing or in oral argument regarding the Baker reference.
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`7 Even if the evidence in Lanning’s Report can be submitted in an admissible form at trial, see Jones v.
`UPS Ground Freight, 683 F.3d 1283, 1294–95 (11th Cir. 2012), the inconsistent statements in Lanning’s
`Deposition and Report — both made by Medtronic’s own expert — cannot be used to manufacture a
`triable issue of fact to avoid summary judgment in favor of Atlas.
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`
`
`9
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`be patented and the prior art’ to ascertain whether ‘the subject matter as a whole would have
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`been obvious at the time the invention was made to a person having ordinary skill in the art to
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`which said subject matter pertains.’” Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 725
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`(Fed. Cir. 2002) (quoting 35 U.S.C. § 103(a) (1994)). A determination of obviousness considers
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`the following “underlying factual inquiries”: “‘(1) the scope and content of the prior art; (2) the
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`level of ordinary skill in the prior art; (3) the differences between the claimed invention and the
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`prior art; and (4) objective evidence of nonobviousness.’” Id. at 725–26 (quoting In re
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`Dembiczak, 175 F.3d 994, 998, (Fed. Cir. 1999)). “Obviousness is a question of law . . .
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`premised on underlying factual determinations.” Id. at 722 (alterations added; internal and other
`
`citations omitted). “[A] district court properly may grant summary judgment on obviousness or
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`anticipation only when the underlying factual inquiries present no lingering genuine issues.” Id.
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`at 723 (alteration added).
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`Atlas argues the asserted claim is not obvious because eight of the nine prior art
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`references do not disclose the establishing limitation, and there is no evidence any combination
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`of references is specifically intended to satisfy this limitation. (See Mot. 5). Medtronic’s
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`Response does not separately discuss obviousness. Only Lanning’s Report discusses several
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`“obvious combinations of the prior art” references that Medtronic argues render the asserted
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`claims invalid. (Lanning Report ¶ 161). The Court, however, does not rely on Lanning’s
`
`unsworn Report.
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`Even if the Court were to consider Lanning’s Report, the combinations he cites do not
`
`address the establishing limitation. (See id. 66–76). As Atlas observes, “Medtronic does not
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`dispute that its expert, Mark Lanning, has failed to identify any combination of references that
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`uniquely satisfies the limitation ‘communication cycles, each of which has intervals during
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`10
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`which the hub and the remotes transmit and receive frames.’” (Reply 5). For the same reasons
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`the nine prior art references do not anticipate Claim 21 of the ’734 Patent, they are not obvious
`
`and no genuine issues of material fact exist precluding summary judgment in favor of Atlas on
`
`the issue of obviousness.
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`C. Written Description and Enablement
`
`Pursuant to 35 U.S.C. section 112(a), “[t]he specification shall 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.” Id.
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`(alteration added). The statute requires “two separate description requirements: a ‘written
`
`description [i] of the invention, and [ii] of the manner and process of making and using [the
`
`invention].’” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010)
`
`(alterations and emphasis in original) (quoting 35 U.S.C. § 112, ¶ 1). The “written description
`
`requirement [is] separate from enablement . . . .” Id. at 1345. “A determination that a patent is
`
`invalid for failure to meet the written description requirement of 35 U.S.C. [section] 112,
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`[paragraph one] is a question of fact . . . .” Id. at 1355 (alterations added). “To be enabling, the
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`specification of a patent must teach those skilled in the art how to make and use the full scope of
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`the claimed invention without undue experimentation.” ALZA Corp. v. Andrx Pharms., LLC,
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`603 F.3d 935, 940 (Fed. Cir. 2010) (citation and internal quotation marks omitted). This inquiry
`
`is a question of law based on underlying facts. See id. (citation omitted). Because a patent is
`
`presumed valid, “lack of enablement must be proven by clear and convincing evidence.” Id.
`
`(citations omitted).
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`11
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`Medtronic argues Atlas’s Motion regarding written description should be denied. (See
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`Resp. 16). In particular, Lanning identified the following claim limitations as not being
`
`supported by the specification:
`
`(1) [a] communicator for wirelessly transmitting frames to and receiving frames
`from a [sic] least one additional communicator, or communication systems
`involving only one remote; (2) designating one of the communicators of the
`Group as a hub and the remaining the [sic] communicators of the Group as
`remotes; (3) the hub allocating a number of transmission opportunities during at
`least one communication cycle which is at least one less in number than the
`number of remotes
`in
`the Group; (4)
`the hub establishing repeating
`communication cycles, each of which has intervals during which the hub and the
`remotes transmit and receive frames; and (5) the hub assigning transmission
`opportunities to the remotes.8
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`(Resp. 16 (alterations in original) (quoting Lanning Report 77–81)).
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`According to Atlas, “original claims are part of the specification and in many cases will
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`satisfy the written description requirement.” (Mot. 6 (citing Crown Packaging Tech., Inc. v. Ball
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`Metal Beverage Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011))). Atlas stresses
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`Lanning does not recall whether he considered the original claim language in opining on the
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`written description requirement. (See id.; Pl.’s SMF ¶ 44; Def.’s SMF ¶ 44). Yet Medtronic
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`insists “‘[i]f a purported description of an invention does not meet the requirements of the
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`statute, the fact that it appears as an original claim or in the specification does not save it.’”
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`(Resp. 16 (alteration added) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968–
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`69 (Fed. Cir. 2002))). See LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336,
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`1346 (Fed. Cir. 2005) (“While it is true that an originally filed claim can provide the requisite
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`written description to satisfy section 112, . . . nothing in claim 21 or the specification constitutes
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`an adequate and enabling description of all seamless DWTs.” (alteration added; internal citation
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`8 The Court does not consider the third and fifth limitations (found in Claims 6 and 11), as they are not
`applicable to Claim 21 (or the preamble).
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`12
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`Case 1:13-cv-23309-CMA Document 258 Entered on FLSD Docket 10/15/2014 Page 13 of 15
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`CASE NO. 13-23309-CIV-ALTONAGA
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`omitted)). The Federal Circuit has found “a patent can be held invalid for failure to meet the
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`written description requirement, based solely on the language of the patent specification.” Univ.
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`Of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927 (Fed. Cir. 2004) (citation omitted). In this
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`case, that the original claims are included in the specification, without more, is not sufficient to
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`satisfy the written description requirement. See Enzo Biochem, Inc., 323 F.3d at 968–69.
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`Medtronic raises two arguments why summary judgment is inappropriate: Atlas fails to
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`provide any evidence demonstrating the disputed limitations are supported by the ’734 Patent;
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`and genuine issues of material fact exist as to whether the written description requirement is
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`satisfied for the asserted claim because the parties’ experts disagree whether the written
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`description and enablement requirements are satisfied. Medtronic’s reasoning is persuasive.
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`Beyond stating the limitations were contained in the claims as originally filed in the ’734 Patent,
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`Atlas does not provide additional support “the disclosure clearly allow[s] persons of ordinary
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`skill in the art to recognize that [the inventor] invented what is claimed.” Crown Packaging
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`Tech., Inc., 635 F.3d at 1380 (alterations in original; internal quotation marks omitted) (quoting
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`Ariad Pharms., Inc., 598 F.3d at 1351). Although the ’734 Patent is presumed valid, Atlas, as
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`the moving party, has not sufficiently rebutted Medtronic’s invalidity challenge.
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`Neither the Lanning Report nor Atlas’s rebuttal expert report of J. Nicholas Laneman
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`(“Laneman Rebuttal Report”) [ECF No. 160-4], is a sworn report. (See Resp. 19 n.5; Reply 6).
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`Nonetheless, Medtronic demonstrates a genuine issue of material fact by submitting evidence
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`that may be supplied in admissible form at trial. Cf. Macuba v. Deboer, 193 F.3d 1316, 1324
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`n.18 (11th Cir. 1999) (explaining on summary judgment a district court could consider evidence
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`submitted to establish a genuine issue of material fact where the evidence “could later be given
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`in admissible form (by the doctor testifying at trial”); see also Jones, 683 F.3d at 1294–95
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`13
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`Case 1:13-cv-23309-CMA Document 258 Entered on FLSD Docket 10/15/2014 Page 14 of 15
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`CASE NO. 13-23309-CIV-ALTONAGA
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`(“‘[A] district court may consider a hearsay statement in passing on a motion for summary
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`judgment if the statement could be reduced to admissible evidence at trial or reduced to
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`admissible form[,]’” such as having the “declarant testify directly to the matter at trial.”
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`(alterations added; citations omitted)). The parties’ experts may both testify at trial. Beyond
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`observing the expert reports are unsworn, neither party has challenged the admissibility of the
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`expert testimony nor presented any reason why Lanning’s or Laneman’s expert testimony would
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`not be admissible at trial.
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`In considering this evidence, the experts disagree about the limitations’ written
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`descriptions, creating disputed factual issues. (See Resp. 19–20). For example, Lanning and
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`Laneman dispute the adequacy of the written description for Claim 21’s designating limitation.
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`(See id. (comparing Lanning Report 79 (“[T]here is no disclosure of a system where the hub and
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`remote could not serve the alternate function.” (alteration added)), with Laneman Rebuttal
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`Report 51–52 (“The issue as I understand it is not whether the hub and remote ‘could’ serve
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`alternate functions, but whether such devices must be able to serve such function . . . . [I]t is clear
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`that the invention contemplates a ‘hub’ that only functions as a hub . . . . None of the asserted
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`claims contain these limitations regarding the conversion of a hub to a remote, and vice versa . . .
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`. As the ‘designating’ language was also part of the claims as originally filed, in my opinion,
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`such language would satisfy the written description requirement.” (alterations added))). The
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`experts also disagree on the first limitation found in the preamble and the establishing
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`limitation.9 (See id. 18–21).
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`Finally, Atlas contends Lanning’s testimony that the asserted claim is not enabled is
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`conclusory, explaining Lanning failed to consider the length of time it would take to practice the
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`9 As discussed in the October 8 Order, a trier of fact may find the accused hubs have the capability to
`establish a communication cycle as set out in the establishing limitation. (See Oct. 8 Order 21).
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`
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`14
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`

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`Case 1:13-cv-23309-CMA Document 258 Entered on FLSD Docket 10/15/2014 Page 15 of 15
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`CASE NO. 13-23309-CIV-ALTONAGA
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`asserted claim, and whether that amount of time was “undue.” (Mot. 7). Nonetheless, for the
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`same reasons summary judgment is inappropriate regarding written description, it is likewise
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`inappropriate as to enablement. Atlas has not presented sufficient evidence it satisfies
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`enablement, precluding summary judgment. (See Resp. 20). Further, because factual issues
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`remain regarding written description, granting summary judgment as to enablement would be
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`improper where the two issues involve many of the same underlying facts and “usually rise and
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`fall together,” LizardTech, Inc., 424 F.3d at 1345, even if they involve separate analyses. (See
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`Resp. 20; Reply 6). While Medtronic has the burden of proof to demonstrate invalidity at trial,
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`Atlas as the moving party has failed to satisfy its burden to establish no factual issues remain
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`regarding written description or enablement in order to succeed on its summary judgment
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`motion.
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`IV. CONCLUSION
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`For the foregoing reasons, it is
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`ORDERED AND ADJUDGED that Atlas’s Motion for Summary Judgment [ECF No.
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`139] is GRANTED in part and DENIED in part. Summary judgment on invalidity of Claim
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`21 is granted in Atlas’s favor as to anticipation and obviousness and is denied as to written
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`description and enablement.
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`DONE AND ORDERED in Chambers at Miami, Florida this 15th day of October, 2014.
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