California Institute of Technology v. Hughes..., Not Reported in...
`
`2015 WL 11089495
`Only the Westlaw citation is currently available.
`United States District Court,
`C.D. California, Western Division.
`
`The California Institute of Technology, Plaintiff,
`v.
`Hughes Communications Inc., Hughes
`Network Systems LLC, Dish Network
`Corporation, Dish Network L.L.C., and Dishnet
`Satellite Broadband L.L.C., Defendants.
`
`Case No. 2:13-cv-07245-MRP-JEM
`|
`Signed 05/05/2015
`
`ORDER GRANTING IN PART AND
`DENYING IN PART PLAINTIFF'S
`MOTION FOR SUMMARY JUDGMENT
`
`Hon. Mariana R. Pfaelzer, United States District Judge
`
`I. Introduction
`
`*1 Plaintiff California
`Institute of Technology
`(“Caltech”) has asserted U.S. Patent Nos. 7,116,710
`(“the
`'710 patent”), 7,421,032 (“the
`'032 patent”),
`7,916,781 (“the '781 patent”), and 8,284,833 (“the '833
`patent,”) against Defendants Hughes Communications,
`Inc., Hughes Network Systems, LLC, DISH Network
`Corporation, DISH Network L.L.C., and dishNET
`Satellite Broadband L.L.C. (collectively, “Hughes”). The
`Court issued a claim construction order on August 6,
`2014. See Cal. Inst, of Tech. v. Hughes Comme'ns Inc., 35 F.
`Supp. 3d 1176 (CD. Cal. 2014). The Court denied Hughes'
`motion for summary judgment for ineligibility under 35
`U.S.C. § 101 on November 3, 2014. See Cal. Inst, of Tech.
`v. Hughes Comme'ns Inc., No. 2:13-cv-07245, 2014 WL
`5661290 (CD. Cal. Nov. 3, 2014). Caltech now moves for
`summary judgment of infringement, no indefiniteness, no
`inequitable conduct, no laches, and no equitable estoppel.
`The Court grants Caltech's motion as to no indefiniteness
`and no equitable estoppel and denies Caltech's motion as
`to the other issues.
`
`II. Background
`
`The asserted claims are method and apparatus claims
`relating to error correction. 1 In modern electronic
`systems, data are stored in the form of bits having the
`value “1” or “0.” During data transmission, a random or
`irregular fluctuation (known as noise) can occur in the
`signal and corrupt data. For example, a transmitter may
`send a bit with the value “1,” but noise may corrupt this bit
`and cause the receiver to read the value as “0.” To mitigate
`this problem, electronic systems use error correction.
`Error correction depends on redundancy, which refers to
`“extra” bits that may be duplicates of original information
`bits 2 and are transmitted along with the original bits.
`These extra bits are not necessary, in the sense that the
`original information exists without them, but they serve
`an important purpose. Using these extra bits, the receiver
`can ensure that the original information bits were not
`corrupted during transmission.
`
`Caltech's patents are directed to a form of error correction
`code called an irregular repeat and accumulate (“IRA”)
`code. An IRA code operates as follows: the code can
`introduce redundancy by repeating (i.e., duplicating)
`different original bits irregularly (i.e., a different number
`of times). These information bits may then be randomly
`permuted and combined to form intermediate bits, which
`are accumulated to form parity bits. Parity bits reflect
`the values of a selection of original information bits.
`These parity bits are transmitted along with the original
`information bits. The receiver ensures that the received
`original information bits were not corrupted during
`transmission. It can do this by modulo-2 adding the
`original information bits and parity bits. 3 The receiver
`knows whether this sum is supposed to be odd or even.
`If the sum is supposed to be odd but is instead even, the
`receiver will know that an error occurred and can perhaps
`correct the error using other information it has received.
`
`*2 The benefit of an IRA code is that not all bits
`are repeated the same number of times. The repetition
`of certain bits provides redundancy. Although greater
`repetition of every bit would allow for better error
`correction, it would also force the transmitter to send
`more bits, decreasing the coding rate and increasing
`data transfer time. 4 IRA codes balance competing goals:
`data accuracy and efficiency. The asserted claims recite
`
` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
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`Apple v. Caltech
`IPR2017-00728
`Apple 1267
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`California Institute of Technology v. Hughes..., Not Reported in...
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`generally encoding and decoding bits in accordance with
`an IRA code.
`
`III. Standard for Summary Judgment
`
`The Court shall grant summary judgment if there is no
`genuine dispute as to any material fact, as supported by
`facts on the record that would be admissible in evidence,
`and if the moving party is entitled to judgment as a matter
`of law. Fed. R. Civ. P. 56; Celotex Corp. v. Catrett, 477
`U.S. 317, 322 (1986); Anderson v. Liberty Lobby, Inc., 477
`U.S. 242, 250 (1986). In order to grant summary judgment,
`the Court must identify material facts by reference to the
`governing substantive law, while disregarding irrelevant
`or unnecessary factual disputes. Anderson, 477 U.S. at
`248. If there is any genuine dispute about a material
`fact such that a reasonable jury could return a verdict
`for the nonmoving party, summary judgment cannot
`be granted. Id. The Court must view facts and draw
`reasonable inferences in favor of the nonmoving party.
`Scott v. Harris, 550 U.S. 372, 378 (2007). If the party
`moving for summary judgment does not bear the burden
`of proof as to a particular material fact, the moving party
`need only give notice of the absence of a genuine issue
`of material fact so that the nonmoving party may come
`forward with all of its evidence. See Celotex, 477 U.S. at
`325.
`
`IV. Discussion
`
`A. Infringement
`The Court denies Caltech's motion as to infringement.
`There are two steps for determining infringement. “First,
`the asserted claims must be interpreted by the court
`as a matter of law to determine their meaning and
`scope.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d
`1570, 1575 (Fed. Cir. 1995). Then, “[i]n the second step,
`the trier of fact determines whether the claims as thus
`construed read on the accused product.” Id. “[A]n accused
`product or process is not infringing unless it contains
`each limitation of the claim, either literally or by an
`equivalent.” Freedman Seating Co. v. Am. Seating Co.,
`420 F.3d 1350, 1358 (Fed. Cir. 2005). Infringement is a
`question of fact. Brilliant Instruments, Inc. v. Guide Tech,
`LLC, 707 F.3d 1342, 1344 (Fed. Cir. 2013).
`
`judgment of
`summary
`for
`Caltech has moved
`infringement for claims 1,18, 19, and 22 of the '032 patent
`and claims 16 and 19 of the '781 patent. As discussed
`in the Court's order striking portions of Stephen B.
`Wicker's expert report, Caltech's infringement contentions
`allege only literal infringement of the following fifteen
`products: HN9800 Satellite Router, HN9600 Satellite
`Router, HN9460 Satellite Router, HN9260 Satellite
`Router, HN7740S Broadband Satellite Router, HN7700S
`Satellite Router, HN7000 Satellite Modem, HX200
`Broadband Satellite Router, HX50L Broadband Satellite
`Router, HX Gateway, HX90 Broadband Satellite Router,
`HX260 Mesh/Star Broadband Router, HX280 Mesh/Star
`Broadband Router, HX System TGW100, and Hopper
`Set-Top Satellite TV Box. 5 Caltech's infringement theory
`for these products is based only on the operation of the
`DVB-S2 standard. Thus, that theory of infringement is the
`only theory in the case and the only theory the Court will
`address. 6 Based on the language of the claims, Caltech
`cannot succeed in proving infringement for any of these
`claims at summary judgment. 7
`
`i. Caltech Cannot Prove Infringement
`of Claims 16 and 19 of the '781 Patent
`
`*3 Caltech cannot show that DVB-S2 technology
`performs “an accumulation of mod-2 or exclusive-OR
`sums of bits in subsets of the information bits,” as required
`by the asserted '781 patent claims. The parties seem to
`agree on how the DVB-S2 technology works. The parties
`instead dispute the meaning of “sums of bits in subsets of
`the information bits,” even though the parties stipulated
`to a construction: “the result(s) of adding together two
`or more information bits from the subset of information
`bits.” The Court finds persuasive Hughes' argument that
`DVB-S2 does not perform this limitation.
`
`The DVB-S2 standard does not accumulate “sums of bits
`in subsets of the information bits.” DVB-S2 technology
`does not sum two or more bits that appear in a subset of
`information bits. DVB-S2 technology creates parity bits
`through a three-step process:
`
`1. Parity bit accumulators are initialized to each have a
`value of 0.
`
`2. Individual information bits are added recursively to
`the parity bit accumulators. 8
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`California Institute of Technology v. Hughes..., Not Reported in...
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`3. The final values stored in the parity bit accumulators
`are themselves accumulated to generate parity bits.
`
`To understand how this process works, imagine a parity
`bit accumulator with a value p0. Imagine the accumulator
`is encoding a subset of information bits consisting of
`information bits i1, i2, and i3. The following process would
`occur:
`
`1. In the first step, the value of p0 would be initialized
`to 0.
`
`2. In the second step, three calculations would be
`performed. Initially, the parity bit accumulator
`would perform the following equation: p0⊕ i1=p1.
`The value of p0 is 0. If the value of i1 were 1, the
`result of the equation would be 0⊕1=1. The new value
`of the parity bit accumulator would be p1, which
`has a value of 1. The next equation the accumulator
`would perform is p1⊕i2=p2. The value of p1 is 1. If
`the value of i2 were 1, the result of this equation
`would be 1⊕1=0. After this equation, the value of the
`parity bit accumulator is p2, which has a value of 0.
`The accumulator's next (and final) equation would be
`p2⊕i3=p3. The value of p2 is 0. If the value of i3 were
`0, the final value of the parity bit accumulator (p3)
`would be 0⊕0=0.
`
`3. Now, assume ten other parity bit accumulators
`were performing the same operation with different
`information bits. In the third step, the final values
`of these accumulators would be accumulated to
`generate parity bits.
`
`This explanation illustrates that the accumulator never
`adds two information bits together. The accumulator
`never adds together, for example, i1 and i2. Instead,
`the accumulator sums i1 and p0 to generate p1. The
`accumulator then sums p1 and i2. But p1 is not an
`“information bit from the subset of information bits.”
`Instead, p1 is a newly created bit that does not appear
`in the original subset of information bits (i1, i2, and i3).
`Given these facts, the procedure performed by DVB-S2
`technology does not “[accumulate] mod-2 or exclusive-
`OR sums of bits in subsets of the information bits.”
`
`Caltech does not dispute the operation of the DVB-S2
`standard. Moreover, Caltech does not dispute that in
`
`the above example, the accumulator would sum i1 and
`p0. Instead, Caltech argues that because p0 equals 0, p0
`should not be considered as part of the accumulator's sum.
`Caltech bases this theory on the fact that “any value plus
`‘0’ yields the original value.” Caltech's Reply in Supp. of
`PL's MSJ at 3 n.6. Under Caltech's theory, the final sum
`of the accumulator is i1⊕i2⊕i3. When presented in this
`manner, the accumulator appears to sum information bits
`with each other.
`
`*4 Caltech's theory is flawed. Practically speaking,
`Caltech is correct that in DVB-S2 technology, p0⊕i1⊕i2⊕i3
`equals i1⊕>i2⊕i3. But the Court cannot disregard the
`initial summation of p0 and i1, even though p0⊕i1
`has the same value as i1 itself. 9 Caltech conveniently
`ignores an operation performed by the accumulator in
`order to construct a viable theory. In effect, Caltech is
`arguing that the DVB-S2's summing and accumulation
`operations are equivalent to the claim limitation. But in
`literal infringement analysis, this Court cannot ignore any
`performed operation, and literal infringement is the only
`type of infringement before the Court. See Cybor Corp.
`v. FAS Technologies, Inc., 138 F.3d 1448, 1467 (Fed. Cir.
`1998) (“To prove literal infringement, the patentee must
`show that the accused device contains every limitation in
`the asserted claims.”).
`
`For these reasons, Caltech cannot show at summary
`judgment that the DVB-S2 standard infringes claim 16 or
`claim 19 of the '781 patent.
`
`ii. Caltech Cannot Prove Infringement of
`Claims 1, 18, 19, and 22 of the '032 Patent
`
`Caltech has not shown that DVB-S2 technology repeats
`information bits or that connections between information
`bits and parity bits are randomly chosen, as the asserted
`claims require. 10 See Cal. Inst, of Tech., 35 F. Supp. 3d at
`1191 (“[T]he Tanner Graph term is ‘a graph representing
`an IRA code as a set of parity checks where every message
`bit is repeated, at least two different subsets of message
`bits are repeated a different number of times, and check
`nodes, randomly connected to the repeated message bits,
`enforce constraints that determine the parity bits.’ ”); '032
`Patent, 8:16-17 (defining claim 1 term as “value of a sum
`of ‘a’ randomly chosen irregular repeats of the message
`
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`California Institute of Technology v. Hughes..., Not Reported in...
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`bits”). Thus, the Court cannot grant summary judgment
`of infringement for the '032 patent's asserted claims.
`
`For these reasons, the Court denies Caltech's motion for
`summary judgment as to infringement of the '032 patent.
`
`The DVB-S2 standard does not appear to require
`repetition of bits. Instead, the DVB-S2 standard calls
`for the reuse of a single information bit in the creation
`of multiple parity bits, as shown in the DVB-S2
`documentation. See First Deel, of Dr. Stephen B. Wicker
`¶ 150; Defs.' Opp'n to Caltech's MSJ at 16–17. Caltech
`claims that this process does repeat bits, because multiple
`parity bits incorporate the value of a single information
`bit. This theory is incorrect.
`
`Caltech's theory is based on the erroneous belief that
`the Court's construction of repeat does not require
`“concurrently storing multiple copies of the bits in
`memory.” First Wicker Deel. ¶ 156. The concept of a single
`bit contributing to multiple parity bits is a reuse of that
`bit, not a repeat of the bit. See Cal Inst. of Tech., 35 F.
`Supp. 3d at 1184–88. The Court's claim construction order
`makes clear that “the plain meaning of ‘repeat’ requires
`the creation of new bits corresponding to or reflecting the
`value of the original bits.” The Court's claim construction
`order further states, as an example, that “repeating a bit
`with the value 0 will produce another bit with the value
`0.” In order to repeat a bit, the technology must create a
`new copy of that bit. In order to create a new copy of a
`bit, the accused technology must store the new copied bit
`in memory. A copy of a bit simply does not exist unless it
`is stored in memory. See id. at 1184. Because the DVB-S2
`standard does not require the repetition of bits, Caltech
`cannot show infringement of the '032 patent at summary
`judgment.
`
`*5 Caltech also cannot show infringement at summary
`judgment because there is a dispute regarding whether
`the DVB-S2 standard requires the information bits
`contributing to parity bits to be randomly chosen.
`The DVB-S2 documentation seems to assign specific
`information bits to contribute to specific parity bits.
`See Hantson Decl., Ex. F at CALTECH000001614-15,
`CALTECH000001632; see also Stark Reb. Rpt. ¶¶
`422–24. Hughes also points to a Hughes' technical
`document that contrasts a random code with the allegedly
`deterministic code involved in this case. See Hantson
`Decl., Ex. H at HUGHES 00049308; Stark Reb. Rpt. ¶¶
`431–33. This evidence creates a genuine dispute of this
`material fact.
`
`B. Indefiniteness
`The Court grants Caltech's motion as to no indefiniteness.
`Hughes argued during claim construction that claims 1
`and 18 of the '032 patent and claims 1 and 8 of the
`'833 patent were indefinite. The Court concluded that
`the disputed terms were sufficiently definite. 35 F. Supp.
`3d at 1189–94. The law of the case doctrine precludes
`Hughes from relitigating this issue. See Christianson v.
`Colt Indus. Operating Corp., 486 U.S. 800, 815–16 (1988)
`( “As most commonly defined, the doctrine [of the law
`of the case] posits that when a court decides upon a rule
`of law, that decision should continue to govern the same
`issues in subsequent stages in the same case.” (internal
`quotation marks omitted)); Moore v. James H. Matthews
`& Co., 682 F.2d 830, 833 (9th Cir. 1982) (“The ‘law
`of the case’ rule ordinarily precludes a court from re-
`examining an issue previously decided by the same court,
`or a higher appellate court, in the same case.”); see also
`Diamond Coating Technologies, LLC v. Hyundai Motor
`Am., No. 8:13-cv-01480, 2014 WL 5698445, at *4 n.2
`(C.D. Cal. Aug. 25, 2014) (suggesting party must live with
`consequences of bringing early indefiniteness challenge at
`claim construction).
`
`Hughes' argument for revisiting the issue is unconvincing.
`Hughes contends that Teva Pharmaceuticals USA, Inc.
`v. Sandoz, Inc., 135 S. Ct. 831 (2015), changed the
`law governing indefiniteness, and therefore, Hughes
`is not barred from raising the issue again. Hughes
`misunderstands Teva. Teva does not change how district
`courts decide indefiniteness. Teva holds only that an
`appellate court should review a district court's factual
`findings regarding extrinsic evidence for clear error, not de
`novo. See id. at 836–42. Teva does not alter the dominant
`role of intrinsic evidence in construing claims. Id. at 840–
`41 (“We recognize that a district court's construction of
`a patent claim, like a district court's interpretation of
`a written instrument, often requires the judge only to
`examine and to construe the document's words without
`requiring the judge to resolve any underlying factual
`disputes.”); see Cadence Pharm. Inc. v. Exela PharmSci
`Inc., 780 F.3d 1364, 1368 (Fed. Cir. 2015).
`
`The Court was able to resolve the indefiniteness challenges
`based on the intrinsic evidence, and Hughes has offered
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`California Institute of Technology v. Hughes..., Not Reported in...
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`the Court no reason to disturb a settled issue. 11
`Therefore, the Court grants Caltech's motion for summary
`judgment that the disputed claims are definite.
`
`also factual disputes over the effect of the delay on Hughes'
`ability to gather evidence. Id. at 43–44. These factual
`disputes individually and together prevent the Court from
`granting summary judgment on this issue.
`
`C. Laches
`The Court denies Caltech's motion as to no laches. To
`invoke laches, the defendant must prove (1) that “the
`plaintiff delayed filing suit for an unreasonable and
`inexcusable length of time from the time the plaintiff knew
`or reasonably should have known of its claim against
`the defendant,” and (2) that “the delay operated to the
`prejudice or injury of the defendant.” A.C. Aukerman Co.
`v. R.L. Chaides Const. Co., 960 F.2d 1020, 1032 (Fed.
`Cir. 1992). “Material prejudice to adverse parties resulting
`from the plaintiff's delay is essential to the laches defense.
`Such prejudice may be either economic or evidentiary.” Id.
`at 1033. A presumption of laches attaches if the plaintiff
`delayed suit for more than six years. Id. at 1035. A court
`should consider any justification offered by the plaintiff
`for excusing the plaintiff's delay. Id. at 1033. “[A] district
`court must weigh all pertinent facts and equities in making
`a decision on the laches defense.” Id. at 1034.
`
`*6 A number of factual disputes preclude summary
`judgment. First, the parties debate the date on which
`Caltech became aware of the alleged infringement. See
`Defs.' Opp'n at 43 (alleging Caltech may have been
`aware of potential infringement as early as 2003). If
`Caltech became aware of potential infringement in 2003,
`a presumption of laches would apply, and Caltech would
`have the burden to rebut one of the laches factors.
`See Aukerman, 960 F.2d at 1037–39. Second, Caltech
`is incorrect that Meyers v. Brooks Shoe Inc., 912 F.2d
`1459 (Fed. Cir. 1990), establishes a per se rule that
`patent prosecution excuses delay. In fact, the Federal
`Circuit noted in Brooks Shoe that “there are times when
`a patentee must bring suit before the expected issuance
`of the second of two related patents,” though the Federal
`Circuit concluded that the Brooks Shoe case was “not one
`of them.” Id. at 1462. At the summary judgment stage,
`Caltech has not shown why this Court must conclude
`that Caltech's delay was reasonable. Third, Caltech cannot
`show at summary judgment that Hughes has not suffered
`evidentiary or economic prejudice. There are factual
`disputes over the extent of Hughes' investments in accused
`products in the period between when Caltech became
`effectively aware of the alleged infringement and Caltech's
`filing of the present lawsuit. Defs.' Opp'n at 44. There are
`
`D. Equitable Estoppel
`The Court grants Caltech's motion as to no equitable
`estoppel. A defendant may assert equitable estoppel when
`
`(a) the patentee, through misleading conduct, leads
`the alleged infringer to reasonably infer that the
`patentee does not intend to enforce its patent against
`the alleged infringer. “Conduct” may include specific
`statements, action, inaction, or silence where there was
`an obligation to speak.
`
`(b) the alleged infringer relies on that conduct.
`
`(c) due to its reliance, the alleged infringer will be
`materially prejudiced if the patentee is allowed to
`proceed with its claim.
`
`Meyers v. Asics Corp., 974 F.2d 1304, 1308 (Fed. Cir.
`1992). Hughes has wholly failed to show any material
`disputed fact. Hughes' argument against summary
`judgment consists of conclusory statements stating that
`Hughes reasonably relied on the silence of Inforon (a
`licensee of patents-in-suit) and Caltech during the time
`after Inforon first gave Hughes notice of infringement.
`See Defs.' Opp'n at 44–45. These conclusory statements do
`not fulfill Hughes' burden “to make a showing sufficient
`to establish the existence of an element essential to that
`party's case.” Celotex, 477 U.S. at 322; see Bryant v.
`Adventist Health Sys./West, 289 F.3d 1162, 1167 (9th Cir.
`2002) (“[A] conclusory statement that there is a genuine
`issue of material fact, without evidentiary support, is
`insufficient to withstand summary judgment.”). As the
`Federal Circuit has noted, “silence alone will not create
`an estoppel unless there was a clear duty to speak,
`or somehow the patentee's continued silence reenforces
`the defendant's inference from the plaintiff's known
`acquiescence that the defendant will be unmolested.”
`Aukerman, 960 F.3d at 1043–44 (citation omitted).
`Hughes has not put forth evidence showing that Caltech
`had a duty to speak or that Hughes had reason to infer
`that Caltech acquiesced in Hughes' allegedly infringing
`activity. Furthermore, Hughes has not pointed to specific
`facts demonstrating that Hughes relied on Caltech's
`silence. Finally, Hughes has shown no evidence that it
`would be prejudiced due to any reliance on Caltech's
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`silence. In light of Hughes' failure to adduce any evidence
`to establish a prima facie case of equitable estoppel, the
`Court grants Caltech's motion as to this issue.
`
`E. Inequitable Conduct
`The Court denies Caltech's motion as to no inequitable
`conduct. To prove inequitable conduct, the defendant
`must show “by clear and convincing evidence that
`the patent applicant (1) misrepresented or omitted
`information material to patentability, and (2) did so
`with specific intent to mislead or deceive” the Patent
`and Trademark Office (“PTO”). Am. Calcar, Inc. v.
`Am. Honda Motor Co., 768 F.3d 1185, 1188–89 (Fed.
`Cir. 2014) (internal quotation marks omitted). To prove
`materiality, the defendant must show that “prior art is
`but-for material,” meaning that “the PTO would not have
`allowed a claim had it been aware of the undisclosed prior
`art.” Therasense, Inc. v. Becton, Dickinson & Co., 649
`F.3d 1276, 1291 (Fed. Cir. 2011). “Intent and materiality
`are separate requirements” and “a district court should
`not use a ‘sliding scale,’ where a weak showing of intent
`may be found sufficient based on a strong showing of
`materiality.” Id. at 1290. Hughes alleges that Caltech
`committed inequitable conduct when it failed to disclose
`the following references: (1) Luby, et al, “Practical Loss-
`Resilient Codes” (1997) (“Luby97”); (2) Luby, et al.,
`“Analysis of Low Density Codes and Improved Designs
`Using Irregular Graphs” (1998) ( “Luby98”); and (3)
`Richardson, et al, “Design of Provably Good Low-
`Density Parity Check Codes” (1999) (“Richardson”).
`
`*7 Caltech puts forth various deficient arguments
`to demonstrate that Hughes cannot prove inequitable
`conduct for failure to disclose these references. To begin
`with, Caltech argues that it did disclose these references
`to the PTO on two occasions. Caltech cited to Luby97
`and Richardson in presentation slides submitted as a
`provisional application. Caltech's Mem. in Supp. of MSJ
`at 27. Caltech also disclosed to the PTO an IRA codes
`paper, which cited the references. Id. Neither of these
`actions necessarily fulfills Caltech's duty to disclose this
`prior art to the PTO. 12 Cf. Molins Plc v. Textron, 48 F.3d
`1172, 1184 (Fed. Cir. 1995) (“ ‘[B]urying’ a particularly
`material reference in a prior art statement containing a
`multiplicity of other references can be probative of bad
`faith.”). As a practical matter, if courts adopted Caltech's
`bright-line rule, brief citations to prior art somewhere in
`a patentee's submission would satisfy the patentee's duty
`
`to the PTO. This rule would create a perverse incentive
`for patentees to bury harmful prior art in their filings,
`increasing administrative costs and the general burden on
`the PTO. The Court finds it significant that Caltech did
`not disclose these references in accordance with 37 C.F.R.
`§ 1.56, which states that
`
`[t]he duty to disclose all information
`known
`to
`be material
`to
`patentability
`is deemed
`to be
`satisfied if all information known to
`be material to patentability of any
`claim issued in a patent was cited
`by the Office or submitted to the
`Office in the manner prescribed by §§
`1.97(b)-(d) and 1.98.
`
`Caltech cannot dispute that it failed to disclose these
`references in accordance with §§ 1.97 and 1.98. There is at
`least a question of fact as to whether Caltech omitted these
`prior art references or misrepresented their relevance.
`
`Caltech also argues that the references are not but-
`for material. There is a genuine dispute of fact on
`this issue. Hughes observes that during prosecution, the
`patentees distinguished their invention from the Wang
`prior art reference because Wang did not disclose irregular
`repetition of bits. While Wang does not disclose irregular
`repetition, the three references do disclose irregular
`repetition. Had the PTO considered these references, the
`PTO may have issued a rejection under § 103. Thus,
`Hughes may be able to show by clear and convincing
`evidence that Luby97, Luby 98, and Richardson would
`have prevented the PTO from granting the patents. At
`least at summary judgment, the Court cannot conclude
`that Hughes cannot establish materiality.
`
`Finally, Caltech argues that Hughes cannot show specific
`intent that the patentees intended to deceive the PTO.
`But “direct evidence of deceptive intent is rare, [and]
`a district court may infer intent from indirect and
`circumstantial evidence.” Therasense, 649 F.3d at 1290.
`Certainly, Caltech puts forth some evidence that the
`inventors lacked specific intent. For example, Caltech
`notes that the IRA codes paper describes the Luby
`references as showing that “on the binary erasure channel
`irregular LDPC codes can be decoded reliably.” Caltech's
`Reply at 17 (internal quotation marks omitted). Caltech
`also notes that the IRA codes paper describes Richardson
`as showing that “irregular LDPC codes are markedly
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` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
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`California Institute of Technology v. Hughes..., Not Reported in...
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`better than regular ones.” Id. (internal quotation marks
`omitted). These statements may cut against a specific
`intent to deceive the PTO. On the other hand, Hughes sets
`forth evidence showing that the inventors appreciated the
`significance of Luby97, Luby98, and Richardson before
`the PTO proceedings commenced. Hughes also notes
`that inventors Aamod Khandekar and Hui Jin could not
`explain in their depositions why they failed to disclose
`the references to the PTO in accordance with 37 C.F.R.
`§ 1.56. In combination with Hughes' other observations,
`this evidence is enough to create a dispute of material fact
`regarding intent. Thus, factual disputes preclude Caltech's
`motion as to inequitable conduct.
`
`V. Conclusion
`
`*8 The Court grants Caltech's motion for summary
`judgment as to no indefiniteness and no equitable
`estoppel. The Court denies Caltech's motion for summary
`judgment as to infringement, no inequitable conduct, and
`no laches.
`
`IT IS SO ORDERED.
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`All Citations
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`Not Reported in F.Supp.3d, 2015 WL 11089495
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`Footnotes
`1
`All four patents share a common specification and claim priority to the same patent application U.S. Serial Application
`No. 09/861,102.
`The '032 patent uses the term “message bits” rather than “information bits.” This Court will generally use the term
`“information bits” when discussing error correction.
`For an explanation of mod-2 arithmetic, see Modular Arithmetic — An Introduction, Rutgers University, http://
`www.math.rutgers.edu/~erowland/modulararithmetic.html.
`Coding rate is calculated through the following equation: Coding Rate = (Original information bits) / (Original information
`bits + Extra bits). The closer the coding rate is to 1, the more efficient it is.
`For the disposition of DISH products involved in this case, see the Court's Order Granting in Part and Denying in Part
`Defendants' Motion for Summary Judgment.
`The Court, however, notes that even if the Comtech, Xilinx, and Gershwin components were at issue, these components
`also appear to be noninfringing.
`Indeed, it is difficult to see how Caltech could prove infringement of these claims if Hughes' factual allegations are
`accurate. Nonetheless, Caltech endorses many of Hughes' explanations of the technology.
`The addition in this step is mod-2 addition. The symbol # denotes mod-2 addition.
`It states the obvious to say two bits with the same value are not the same bit. For example, in the Court's above
`hypothetical, i1and i2 both had the value 1, but they were different bits.
`Hughes also argues that the DVB-S2 technology does not receive a “data stream.” This argument may have merit, but
`the Court will require further briefing on the construction of “data stream” before deciding this issue.
`In any case, the more appropriate avenue for Hughes to revisit this issue was in a motion for reconsideration.
`Caltech notes that the examiner indisputably reviewed a paper in which the references are cited, and therefore, the
`examiner must have reviewed the references. This Court cannot assume that the examiner reviewed every reference
`cited in a paper.
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`End of Document
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`© 2018 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2018 Thomson Reuters. No claim to original U.S. Government Works.
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