Case 1:00-cv-00217-SS Document 75 Filed 08/30/01 Page 1 of 4
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`FILED
`AUG ~ 0 2001
`CLERK, U.S. DISTRICT COURT
`WESTE¥!;1 WTRICT OF TEXAS
`/:J..C_
`BY
`--~=--;:;-D;:-;:EP;;"'7U:;o:oTY:-:C~L=ER,....K-
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`vs.
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`CROSSROADS SYSTEMS, (TEXAS), INC. §
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`§
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`§
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`CHAPARRAL NETWORK
`STORAGE, INC.
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`NO. A 00 CA217 SS
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`ORDER
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`t"-
`BE IT REMEMBERED that on the 30 day of August 200 1 the Court reviewed the file in
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`the above-styled cause and specifically Defendant's Motion for Summary Judgment of Invalidity
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`[#53], plaintiffs response thereto [#70] and defendant's reply thereto [#74]. After considering the
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`motion, response and reply briefs, the file as a whole and the applicable law, the Court enters the
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`following opinion and order.
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`Summary Judgment Standard
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`Summary judgment may be granted if the moving party shows there is no genuine issue of
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`material fact, and it is entitled to judgment as a matter of law. See FED. R. CIV. P. 56( c); Anderson
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`v. Liberty Lobby, Inc., 106 S. Ct. 2505, 2513 (1986). In deciding summary judgment, the Court
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`should "construe all facts and inferences in the light most favorable to the nonmoving party." Hart
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`v. O'Brien, 127F.3d424,435(5thCir.1997),cert. denied, 119S.Ct. 868(1999). Thestandardfor
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`determining whether to grant summary judgment "is not merely whether there is a sufficient factual
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`dispute to permit the case to go forward, but whether a rational trier of fact could find for the
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`nonmoving party based upon the record evidence before the court." James v. Sadler, 909 F .2d 834,
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`837 (5~ Cir. 1990).
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`1~
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`1 .
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`(cid:20)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)
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` CROSSROADS EXHIBIT 2002
`Oracle Corp. et al v Crossroads Systems, Inc.
` IPR2014-01209
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`Case 1:00-cv-00217-SS Document 75 Filed 08/30/01 Page 2 of 4
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`Analysis
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`Defendant asserts the '972 patent is invalid, as a matter of law, under the doctrine of prior
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`inventorship. Proving invalidity under this theory requires clear and convincing evidence. See
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`Robotic Vision Sys., Inc. v. View Eng'g, Inc., 189 FJd 1370, 1377 (Fed. Cir. 1999) ("There is a
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`strong presumption of validity for issued patents, see 35 U.S.C. § 282 (1994), therefore an accused
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`infringer who raises patent invalidity as a defense bears the burden of showing invalidity by facts
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`supported by clear and convincing evidence."). Under the doctrine of prior inventorship, a patent
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`is invalid if, prior to the patentee's invention, the invention "was made in this country by another
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`who had not abandoned, suppressed, or concealed it." See 35 U.S.C. § 102(g). The party seeking
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`to invalidate under this doctrine must establish the prior invention was "reduced to practice" before
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`the patented invention. See Dow Chern, Corp. v. Astro-Valcour, Inc., 110 F. Supp. 2d 104, 106
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`(N.D.N.Y. 2000) (citing Checkpoint Sys., Inc. v. United States Int'l Trade Comm'n, 54 FJd 756,761
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`(Fed. Cir.l995)). This can be done by an "actual reduction to practice," or by filing a patent
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`application. See id. In order to show actual reduction to practice, "the inventor must prove: (1) he
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`constructed an embodiment or performed a process that met all the limitations of the interference
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`count; and (2) he determined that the invention would work for its intended purpose." Mycogen
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`Plant Science v. Monsanto Co., 243 FJd 1316, 1332 (Fed. Cir. 2001).
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`Defendant is not entitled to summary judgment on this issue. Defendant contends the
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`invention in U.S. Patent No. 6,219, 771 ("the '771 patent") discloses (and/or renders obvious) all the
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`claims of plaintiffs '972 patent. The '771 patent application was filed some four months before
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`plaintiffs '972 patent application was filed. See Defendant's Motion for Summary Judgment of
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`2
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`(cid:21)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)
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`Case 1:00-cv-00217-SS Document 75 Filed 08/30/01 Page 3 of 4
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`Invalidity [#53], Ex. 1 and Ex. 2. 1 However, plaintiffhas presented competent summary judgment
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`evidence that the invention of the '972 patent was actually invented- that is, was actually conceived
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`of and reduced to practice- by May 28, 1997, at the latest. See Plaintiffs Response [#70], at 6; see
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`also id., Declaration of Matthew Bernstein, Ex. 5 (May 28, 1997letter faxed to plaintiffs patent
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`counsel, describing alleged reduction to practice) and Ex. 6, at 8-11 (deposition testimony of' 972
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`patent inventor, stating invention was conceived on March 22, 1997 and memorialized in a document
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`on May 15, 1997). This is sufficient to create a genuine issue of fact regarding whether the invention
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`claimed in the '972 patent was actually invented prior to August 18, 1997 (the filing date of the '771
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`patent). In addition, the competent summary judgment evidence indicates the '972 inventor created
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`a document showing his alleged reduction to practice, and disclosed this document to his third party
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`patent counsel in May 1997. See id., Ex. 5. This exhibit is sufficient to create a genuine issue of fact
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`on corroboration. See, e.g., Mahurkar v. CR. Bard, Inc., 79 FJd 1572, 1577 (Fed. Cir. 1996), cert.
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`denied, 119 S. Ct. 874 (1999) ("This court does not require corroboration where a party seeks to
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`prove conception through the use of physical exhibits."); Price v. Symsek, 988 F.2d 1187, 1196 (Fed.
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`Cir. 1993) C'[C]orroboration is not necessary to establish what a physical exhibit before the board
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`includes. Only the inventor's testimony requires corroboration before it can be considered. While
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`evidence as to what the drawing would mean to one of skill in the art may assist the board in
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`evaluating the drawing, the content of Exhibit 13 does not itself require corroboration.") (citations
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`omitted). Cj Kridl v. McCormick, 105 F .3d 1446, 1449-50 (Fed. Cir. 1997) ("Conception must be
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`proved by corroborating evidence which shows that the inventor disclosed to others his complete
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`1 The '771 patent did not issue, however, until much later than plaintiffs '972 patent.
`The '972 patent issued in August 1999, while the '771 patent issued in April2001. See id.
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`3
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`(cid:22)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)
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`Case 1:00-cv-00217-SS Document 75 Filed 08/30/01 Page 4 of 4
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`thought expressed in such clear terms as to enable those skilled in the art to make the invention.").
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`Accordingly, because a genuine issue of material fact exists on these essential elements of
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`defendant's asserted defense of invalidity, summary judgment is inappropriate.2 This ruling does
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`not, of course, preclude defendant from arguing this defense on a proper Rule 50 motion.
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`In accordance with the foregoing:
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`IT IS ORDERED that Defendant's Motion for Summary Judgment of Invalidity [#53] is
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`DENIED.
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`SIGNED on this ao day of August 2001.
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`'Q.
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`UNITED STATES DISTRICT JUDGE
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`2 Because the Court denies summary judgment on this ground, it need not and therefore
`does not consider whether the invention of the '771 patent discloses (or renders obvious) all the
`claims of the '972 patent.
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`4
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`(cid:23)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)