MYSPACE, INC. v. GRAPHON CORPORATION (N.D.Cal. 11-23-2010)

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Docket Number

Nos. C-10-0604 EDL, C-10-1156 EDL.

Motions

Motion to strike : Denied

Motion for summary judgment : Granted

Acts

Labor — Regulatory Provisions — Employee Retirement Income Security Program — Protection Of Employee Benefit Rights — Administration And Enforcement — Other Laws
Labor — Regulatory Provisions — Employee Retirement Income Security Program — Protection Of Employee Benefit Rights — Administration And Enforcement — Interference With Protected Rights
Government Of The State Of California — California Government Code — Executive Department — Definitions — Definitions in connection with unlawful practices
Patents — Remedies For Infringement Of Patent, And Other Actions — Patents And Protection Of Patent Rights — Presumption Of Validity; Defenses
Patents — Patentability Of Inventions — Patentability Of Inventions And Grant Of Patents — Conditions For Patentability; Novelty
Patents — Patentability Of Inventions — Patentability Of Inventions And Grant Of Patents — Conditions For Patentability; Non-Obvious Subject Matter

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MYSPACE, INC., Plaintiff, v. GRAPHON CORPORATION, Defendant. Craigslist, Inc., Plaintiff,

Affirmed.

(9th Cir. 2000) (citations omitted).

IV. Blaj's Wrongful Discharge Claim

A. Preemption

Stewart argues, first, that Blaj's wrongful discharge claim is pre-empted by ERISA because the claim is related to an employee benefit plan. ERISA "supersedes any and all State laws insofar as they may now or hereafter relate to any employee benefit plan. . . ." 29 U.S.C. § 1144(a). This preemption clause is one of the broadest ever enacted by Congress. San Francisco Culinary, Bartenders and Serv. Employees Welfare Fund v. Lucin, 76 F.3d 295, 298 (9th Cir. 1996) (internal quotations omitted). The Court disagrees, however, that it reaches as far as an employee's claim that she was wrongfully terminated on account of a medical condition.

A state law claim is related to an employee benefit plan if it is "premised on the existence" of one, or if the existence of the plan "is essential to the claim's survival." Providence Health Plan v. McDowell, 385 F.3d 1168, 1172 (9th Cir. 2004). This simply cannot be said of a claim that an employer wrongfully terminated an employee on account of her medical condition. The law on which that claim is based governs, strictly, the relationship between employers and employees; it has no connection with or reference to ERISA plans. See Shaw v. Delta Air Lines, Inc., 463 U.S. 85, 96-97 (1983); see also Chasan v. The Garrett Group, No. 06-CV-1090, 2007 WL 173927 at *7 (S.D. Cal. Jan. 18, 2007). Blaj may have sought coverage from an ERISA plan for treatment for the medical condition that she alleges inspired her unlawful termination, but it is the mere fact that she was ill that she alleges caused Stewart to terminate her employment. (Compl. ¶ 28.)

Stewart relies on Ramer v. Southern California Gas Company, 6 Fed.Appx. 577 (9th Cir. 2001), but the case cannot do the work that Stewart needs it to. Ramer does contemplate that a wrongful termination claim may be preempted by ERISA, but only when "the employee alleges that a principal reason for his discharge was his employer's desire to avoid paying him benefits under an ERISA plan." Id. at 579. ERISA won't preempt a wrongful termination claim, however, "to the extent it relies on theories independent of the benefit plan." Id. (internal quotations omitted). Even if part of what motivates Blaj's wrongful termination claim is her suspicion that Stewart wanted to eliminate the costs of having a sickly employee on its health insurance plan, it's clear from the complaint that one theory behind Blaj's wrongful termination claim is that Stewart thought her job performance had suffered and would continue to suffer on account of her liver condition. This is why Blaj places so much emphasis, for example, on Elliot Stein's memo in which he said, "[Blaj] has a documented medical condition that effects some aspects of her job." (Opp'n Br. at 3, 10, 11.) Insofar as Blaj's wrongful termination claim alleges that Stewart fired her because of her medical condition, the claim is not preempted by ERISA.

B. Anatomy of the Analysis

California has adopted the three-stage burden-shifting test for employment discrimination claims set forth in McDonnell Douglas Corp. v. Green, 411 U.S. 792 (1973). Sandell v. Taylor-Listug, Inc., 188 Cal.App.4th 297, 307 (Cal. Ct. App. 2010). First, the plaintiff must present sufficient evidence to establish a prima facie case that she was the victim of discrimination. If she can do that, a presumption of discrimination arises and the burden shifts to the defendant to offer a legitimate, nondiscriminatory reason for the allegedly discriminatory act. Id. at 307-308. Assuming the employer sustains this burden, the presumption of discrimination evaporates and the burden shifts back to the plaintiff to offer additional evidence that the employer's proffered reason is a pretext for discrimination. Id. at 308.

1. Blaj's Prima Facie Case

The requirement that a plaintiff alleging discrimination establish a prima facie case "is designed to eliminate at the outset the most patently meritless claims, as where the plaintiff is not a member of the protected class or was clearly unqualified, or where the job . . . was withdrawn and never filled." Id. at 307. The burden here is a light one; minimal evidence suffices to satisfy it. Id. at 310. A plaintiff can meet the burden in a disability discrimination case with either direct or circumstantial evidence that: (1) she suffered from a disability, or was perceived to suffer from one; (2) she could perform the essential duties of the job with or without accommodations; and (3) she was terminated because of the disability, actual or perceived. Id. The evidence need only allow for a reasonable inference of discrimination. Id. See also Jensen v. Wells Fargo Bank, 85 Cal.App.4th 245, 255 (Cal. Ct. App. 2000) (citing Brundage v. Hahn, 57 Cal.App.4th 228, 236 (Cal. Ct. App. 1997)).

There is no doubting that Blaj suffered a liver-related illness and that Stewart knew she did. ( See, e.g., Blaj Dep. 66:9-23.) Blaj's ability to handle the basics of her job selling funeral merchandise and services for Stewart also appears not to be in dispute. Finally, Blaj was terminated by Stewart within one month of returning to work after recovering from a liver transplant — and just a few months after a drawn-out and ostensibly acrimonious back-and-forth between Blaj and Stewart regarding CIGNA's willingness to cover her medical treatment at Scripps. Viewing this evidence in the light most favorable to Blaj, there is enough to support the inference that Stewart discriminated against her on the basis of her medical condition.

2. Stewart's Rebuttal

To rebut the presumption that its termination of Blaj was discriminatory, Stewart explains that she violated its conflict of interest policy. (Stein Dep. 15:11-16:14 and 25:5-25; Madigan Dep. 34:14-25.) Specifically, as Stewart explains it, Blaj "referred an STEI customer to an outside vendor to purchase a grave marker and acted as a liaison between the customer and the outside vendor, which was prohibited under the policy." (Opp'n Br. at 11.) Blaj admits to most of this. (Blaj Dep. 182:11-188:11.)

What isn't clear, at least to the Court, is whether Blaj's conduct was a plain violation of Stewart's policies, a borderline transgression, or something in between. For example, Ken Stephens, in his deposition, used the word "clearly" and the phrase "without any doubt" when asked if Blaj's referral of clients to an outsider vendor created a conflict of interest. (Stephens Dep. 15:22-17:1.) But Stein testified that "it was . . . the perception of the company that what [Blaj] did was a conflict of interest" and that Stewart "believed it to be a conflict." (Stein Dep. 22:8-24:17.) Arguably, Stein's words imply that the propriety of Blaj's conduct was open to some interpretation. The section of Stewart's Employee Handbook devoted to "Conflicts of Interest" is about 5 pages long, and it does not specifically address Blaj's conduct.

In any event, the violation of company policy is a perfectly legitimate reason for firing an employee, so the burden returns to Blaj to show that this proffered reason for her termination is a pretext for discrimination. Sandell, 188 Cal.App.4th at 308.

3. Blaj's Additional Evidence

Blaj can do this in one of two ways. First, she can point to direct evidence that Stewart acted with a discriminatory motive. Id. Alternatively, because direct evidence of intentional discrimination is so rare, she may attack Stewart's proffered reason as inconsistent or not believable. Id. at 308, 314. "In an appropriate case, evidence of dishonest reasons, considered together with the elements of the prima facie case, may permit a finding of prohibited bias." Id. at 308. It isn't enough to argue that Stewart made a bad or unwise decision in her case, "since the factual dispute at issue is whether discriminatory animus motivated [Stewart]." Id. at 314 (internal quotations omitted) (emphasis added). Rather, Blaj "must demonstrate such weaknesses, implausibilities, inconsistencies, incoherencies, or contradictions in [Stewart's] proffered legitimate reasons for its action that a reasonable fact finder could rationally find them unworthy of credence." Id. (internal quotations omitted).

Blaj goes both routes. She presents some arguably direct evidence that Stewart did act with a discriminatory motive, and she presents other evidence to suggest that Stewart's proffered reason for the termination doesn't hold water.

The first piece of direct evidence is that Eliot Stein, in an April 2, 2008 email, wrote that "Liz has a documented medical condition that effects some aspects of her job." ( See Opp'n Br. at 11; Gienap Decl., Ex. 2.) The second is that "other Family Service Counselors were complaining to Blaj's supervisors about Blaj using the medical condition to relate to and sell to customers." (Opp'n Br. at 9.) The Court isn't inclined to recognize either for the purpose of Blaj's complaint surviving summary judgment. Stein's comment about Blaj's medical condition is excerpted entirely out of context. The email betrayed no hostility to Blaj and was in fact sympathetic to her. It was sent to Marie Johnson, Blaj's manager, and its purpose was to encourage Johnson to "give [Blaj] the necessary tools, guidance, and support to help her succeed in her position." (Gienap Decl., Ex. 2.) That is hardly evidence that Stewart had it out for Blaj because of her illness; in fact, it carries the opposite implication, namely that Stewart was aware of Blaj's condition and committed to working with her in spite of it. Perhaps it shows that Stewart was aware of Blaj's condition, which is of course an element of Blaj's discrimination claim, but Stewart's awareness of Blaj's condition isn't in dispute.

The Court also makes little of Blaj's allegation that her co-workers were complaining about her capitalizing on her illness for the purpose of relating to customers. ( See Bongard Decl. ¶ 7.) Even if that's true, and even if these complaints factored into the decision to terminate Blaj (the Court has no evidence), the allegation relates to Blaj's sales tactics, which the Court doubts are protected under the Fair Employment and Housing Act even if an employee's underlying medical condition is.

Having rejected Blaj's purported direct evidence of discrimination as impertinent, the Court turns to her evidence that Stewart's proffered reason for her termination isn't believable. First, Blaj argues that prior to her illness she was a model employee and one of Stewart's highest-grossing salespeople. (Opp'n Br. at 2; Blaj Decl. ¶ 4.) Second, she argues that "there are at least two other family service counselors who violated the same conflict of interest policy as Blaj and were not terminated and in one case not disciplined." (Opp'n Br. at 10.) Third, Blaj claims that when she was confronted about violating Stewart's policies on January 26, 2009, she was told she would not be disciplined, that her conduct fell in a "gray area," and that it was the proper subject of further training for Stewart's sales staff. (Compl. ¶ 25.) Fourth, Blaj suggests there is no consensus on who terminated Blaj or how the decision was made. (Opp'n Br. at 10.) Fifth, Blaj asserts that Stein knew some of Blaj's peers wanted her fired and were falsely accusing her of "profiting from outside transactions." (Opp'n Br. at 9.)

The last two items are simply unavailing. The fact that there's no consensus on who terminated Blaj or how the decision was made says nothing about authenticity of the reason given by Stewart for Blaj's termination — the why of the termination. And the fact that Blaj's peers had it out for her and accused her of engaging in "outside" transactions only buffers Stewart's stated justification for her termination, even if the termination was unreasonable or unfair. It certainly doesn't suggest that the justification was a pretext, nor does it suggest that Stewart's justification was in fact inspired by her medical condition. That leaves Blaj's past job performance, her comparison to other similarly-situated employees, and the "gray area" allegation as the most she has to attack Stewart's proffered reason for her termination. The first two of these, incidentally, are typical of the kinds of kinds of circumstantial evidence used to show an employer's attempt to retaliate unlawfully against an employee. See Colarossi v. Coty US Inc., 97 Cal.App.4th 1142, 1153 (Cal. Ct. App. 2002).

Blaj received sales awards in 2005, 2006, and 2007, and she was singled out for recognition in 2006. (Blaj Decl. ¶ 4.) In and of itself, this fact could not defeat summary judgment, even if in other employment retaliation cases it cuts heavily in a plaintiff's favor. The fact is that Stewart's stated justification for Blaj's termination had nothing to do with how good of a salesperson she was, but rather with her observance of company policy. In addition, Blaj was fired in early 2009, allegedly for conduct that occurred in late 2008. Blaj would even concede that after 2007, leading up to her October 2008 liver transplant, her job performance suffered. (Blaj Decl. ¶ 3.) Stewart convened a meeting in April 2008 to address just this. (Gienap Decl. ¶ 3.) Blaj's solid performance in the past may support the accusation that Stewart's termination of her employment was unwise, but alas, what's unwise isn't unlawful. See Sandell, 188 Cal.App.4th at 314.

Blaj's allegation that other Stewart employees — Rebecca Melendez and Rose Tran — violated the conflicts policy and were not terminated is a serious one. It cuts to the heart of Stewart's legal defense, and has the power, unrebutted, to give rise to precisely the kind of conflicting inference that requires claims to be sent to a jury. But the matter is hardly as simple as Blaj would like it to be.

Rebecca Melendez did indeed receive only a verbal disciplinary warning for her involvement in the transaction that ostensibly led to Blaj's termination, but on Stewart's telling Melendez's role was a minor and borderline exculpatory one. ( See Stein Dep. 27:7-15; 2d Stein Decl. ¶¶ 2-4.) On top of that, Blaj's alleged violation of Stewart's conflicts policy was not her first infraction on the job; she'd been previously disciplined which, according to Stewart, distinguished her from Melendez and weighed in favor of termination. (Stein Dep. 23:7-14 and 29:7-14.) This certainly lessens the nefarious inferences one may draw from the differential treatment of Blaj and Melendez. It may allow a reasonable person to conclude that Stewart came down especially hard on Blaj, but that's not the same thing as being motivated by discriminatory animus. Employers are allowed to react severely, and indeed, to overreact, to the transgressions of at-will employees. The Court therefore attaches some, but not much, significance to Stewart's allegedly disparate treatment of Melendez.

Blaj also alleges that Rose Tran violated Stewart's conflicts policy, frequently, openly, and with impunity. The sole basis for this is Bongard's sparse testimony that "Rose Tan, another salesperson who still works at Stewart, violates this outside vendor policy all the time. She does so openly and it is well known she does." (Bongard Decl. ¶ 6.) Though there may be some truth to Bongard's testimony — Tran was, after all, fired for referring a customer to an outside mortuary well after Blaj initiated this case (2d Stein Decl. ¶¶ 5-8) — the Court is tempted to disregard it because Blaj failed to identify Bongard as a witness until months after the close of discovery in this case. (See Doc. No. 39 n. 2.) A case management order entered on May 15, 2009 provided that "[a]ll discovery shall be completed by all parties on or before February 8, 2010." (Doc. No. 7 ¶ 1.) It also warned that "failure to comply with expert discovery or any other discovery order of the Court may result in the sanctions provided for in Fed.R.Civ.P. 37 including a prohibition on the introduction of experts or other designated matters in evidence." ( Id. at ¶ 2.) The Federal Rules allow for parties to supplement their Rule 26(a) disclosures, see Fed.R.Civ.P. 26(e), but Blaj did not attempt to do that. She just sprung Bongard's declaration on Stewart in her opposition to its summary judgment motion.

Blaj argues that "[a]t no time have the parties exchanged or been ordered to exchange supplemental disclosures" (Doc. No. 44 n. 2) but Rule 26(e) requires a party to supplement its Rule 26(a) disclosure "in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing." Fed.R.Civ.P. 26(e)(1)(A).

"If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless." Fed.R.Civ.P. 37(c)(1). Here, the failure is certainly not harmless; it surprises Stewart with relevant witness testimony at a stage in the litigation when Stewart cannot cross examine that witness. Moreover, the testimony is testimony Stewart could not have seen coming, and it is quite advantageous to Blaj. This is precisely the kind of late and opportunistic disclosure of evidence that Rule 37 forbids. Cf. Ashman v. Solectron, Inc., No. CV 08-1430, 2010 WL 3069314 at *4 (N.D. Cal. Aug. 4, 2010) (allowing supplemental disclosure of witness testimony after close of discovery when witness was likely and testimony was foreseeable). The wholesale exclusion of undisclosed witness testimony from the evidentiary record on summary judgment may seem severe, but the Court also has an interest in seeing its cases to an efficient resolution that is undermined when parties don't observe deadlines. Wong v. Regents of the Univ. of Cal., 410 F.3d 1052, 1060 (9th Cir. 2005) ("Parties must understand that they will pay a price for failure to comply strictly with scheduling and other orders, and that failure to do so may properly support severe sanctions and exclusion of evidence.").

Blaj is right that "[n]othing in the F.R.C.P. holds that a party cannot produce witnesses after the initial Rule 26 disclosures" (Doc. No. 44 n. 2) but this certainly isn't a license to spring new witnesses on an opposing party even after the close of discovery.

It is slightly tempting to accord some weight to Bongard's testimony considering that Stewart corroborates part of it — the fact that Tran violated its conflicts policy — but the timing of the testimony is suspicious. Stewart presents evidence that it learned of Tran's transgression on April 16, 2010 and discharged her on April 28, 2010. Bongard approved and signed her declaration (she apparently did not write it herself) on May 1, 2010. (Bongard Decl. at p. 4.) Blaj initiated this action in March 2009, and had almost a year to build a case against Stewart; Bongard should have been tracked down sooner than she was. The Court does not overlook Bongard's testimony lightly. The accusation that Tran's violation of Stewart's policies was frequent and open is a weighty piece of evidence, and would give rise to precisely the kind of conflicting testimony that the Court has no commission to adjudicate on summary judgment. But the sparsity and timing of Bongard's testimony with respect to Tran, coupled with the fact that Blaj never identified Bongard as a witness, convinces the Court that her testimony is not entitled to meaningful recognition.

Finally, the Court must determine what to make of Blaj's allegation that, when first confronted about a violation of the conflicts policy, she was told her conduct fell into a "gray area" and that she would not be disciplined. (Compl. ¶ 25.) It's odd that this allegation, critical as it is, doesn't make its way into Blaj's declaration that accompanies her opposition brief. Blaj's counsel attempted to have Stein corroborate it in his deposition, but counsel for Stewart objected to the question and it wasn't put to Stein again. (Stein Dep. 22:1-6.) What Stein did give up in his deposition was that Blaj asked him how she was supposed to know her conduct created a conflict, and "I said, `that's a good question, and maybe we need to review this matter with all of family service.'" (Stein Dep. 22:17-23 and 24:14-17.) Contrary to Blaj's allegation that she was told she would not be disciplined, Stein testified that he told her she would not be terminated that day. ( Id. at 22:10-23.)

The ambiguity of Stewart's Employee Handbook as to the propriety of her conduct arguably supports Blaj's account of her conversation with Stein, and the same can be said of the deposition testimony noted above that gives the impression that Stewart wasn't even sure whether Blaj's conduct violated its policies. But it is telling to the Court that Blaj's declaration doesn't repeat the "gray area" allegation and that her opposition brief doesn't rely on it. ( See Opp'n Br. at 9-11.) Moreover, Stein's deposition testimony — the only testimony that confronts the issue head-on — refutes the allegation. The Court is therefore inclined to disregard it. In any event, even assuming it wasn't crystal clear that Blaj's conduct violated Stewart's policies, to Stewart or to Blaj, Stewart is still entitled to reach the conclusion that it did and to terminate Blaj as a result. This doesn't show that Stewart's stated reason for terminating Blaj was a pretext for discrimination as much as it says that Stewart's decision was simply unfair. And Blaj needs to show more than that.

4. Discussion

By the above analysis, the Court concludes that only two pieces of evidence are relevant to the question whether Stewart's stated justification for terminating Blaj was a pretext for discrimination. The first is the fact that before she fell ill, and particularly in the years 2005-2007, Blaj was a successful and recognized salesperson for Stewart. The second is that another Stewart employee, Rebecca Melendez, received only a verbal reprimand for her role in the prohibited transaction Blaj engaged in — although Melendez's role was minor and subservient to Blaj's, and she had not been previously disciplined.

"To survive summary judgment, plaintiffs must introduce evidence sufficient to raise a genuine issue of material fact as to whether the reason the employer articulated is a pretext for discrimination." Lee v. Eden Med. Ctr., 690 F.Supp.2d 1011, 1023-24 (N.D. Cal. 2010). This evidence must be both specific and substantial. Steckl v. Motorola, Inc., 703 F.2d 392, 393 (9th Cir. 1983). It must be enough for a reasonable jury to return a verdict in Blaj's favor. Anderson, 477 U.S. at 248. Having considered all of the evidence produced by Blaj, and reduced it to the two pieces worth even considering as Blaj's rebuttal to Stewart's stated justification for her termination, the Court does not believe Blaj has a plausible claim of disability discrimination worth sending to a jury. The emphasis is intentional, because it bears repeating that however unfairly or harshly Blaj believes she was treated by Stewart, it is another matter altogether to allege that her medical condition and related disability were the reason for the treatment. The Court does not believe that Stewart's treatment of Melendez or Blaj's past performance as a salesperson, independently or cumulatively, allow for the conclusion that Blaj was terminated on account of her medical condition. The fact that Stewart retained Melendez despite her involvement in the transaction for which Blaj was terminated doesn't say much considering that Melendez had no prior disciplinary record and played a minor role. Likewise, the fact that Blaj was a prominent member of Stewart's sales staff at some point in the past does not allow for the conclusion that Stewart was moved to terminate her employment by her medical condition; this would be more helpful if Stewart alleged that Blaj was an underperformer in her sales capacity, but Stewart's stated justification for terminating Blaj had nothing to do with her performance. It had to do with her observance of company policies.

The Court doesn't reach this decision lightly. Very little evidence is required to survive summary judgment in a discrimination case, "because the ultimate question is one that can only be resolved through a `searching inquiry'-one that is most appropriately conducted by the factfinder, upon a full record." Lam v. Univ. of Hawaii, 40 f.3d 1551, 1563 (9th Cir. 1994). But the Court is also mindful that "[i]n some cases, an injustice can result simply from allowing an unmeritorious case to proceed to trial." Holly D. v. Cal. Inst. of Tech., 339 F.3d 1158, 1174 (9th Cir. 2003). This is just that kind of case.

A jury could return a verdict in Blaj's favor on her discrimination claim, but that verdict could not possibly be based on the evidence she presented at trial; it would be based, instead, on the fact that Blaj told a compelling story and presented as a sympathetic plaintiff. If the Court were to send this claim to a jury, in other words, it would do so only on the thinking that anything can happen at trial and by waving away the firm principle that a nonmoving party cannot defeat summary judgment "with unsupported conjecture or conclusory statements." Hernandez v. Spacelabs Med. Inc., 343 F.3d 1107, 112 (9th Cir. 2003). Blaj has not produced enough evidence to convince a reasonable trier of fact that Stewart discriminated against her on the basis of her medical condition. Stewart's motion for summary judgment on Blaj's FEHA claim is therefore GRANTED.

V. Blaj's ERISA Retaliation Claim

ERISA creates a right to be free from retaliation for the exercise of substantive guaranteed elsewhere in the statute. 29 U.S.C. § 1140. Specifically, section 510 of ERISA provides in pertinent part:

It shall be unlawful for any person to discharge, fine, expel, discipline, or discriminate against a participant or beneficiary for exercising any right to which he is entitled under the provisions of an employee benefit plan . . . or for the purpose of interfering with the attainment of any right to which such participant may become entitled under the plan."

29 U.S.C. § 1140. "[E]very federal court of appeals to have addressed the question has demanded a showing of specific intent in ERISA retaliation cases." Kouvchinov v. Parametric Tech. Corp., 537 F.3d 62, 67 (1st Cir. 2008). The analytical framework for ERISA retaliation claims is the now-familiar burden-shifting framework for adjudicating discrimination claims. Id. This explains Blaj's claim that "the same evidence that Blaj is using to show medical condition discrimination also suggests retaliatory firing under ERISA." (Opp'n Br. at 15:1-2.)

Although the Court has concluded Blaj has insufficient evidence that she was discriminated against on account of her medical condition, it reaches a different conclusion with respect to her ERISA claim. The claim does lack precision, as the Court has noted, but on the evidence in the record, it is far easier to believe that Stewart found Blaj to be a pest based on her benefit needs and demands than it is to believe the company had something against her because of her medical state. The fact is that Blaj's attempt to have CIGNA cover her ongoing care at Scripps was acrimonious and seemingly endless, and the parties tell conflicting stories about their respective roles and duties. It would not be unreasonable for a jury to conclude that Stewart developed some animosity toward Blaj as a result of her attempts to obtain coverage under its health insurance plan, and that this animosity manifested itself in the decision to terminate her employment.

It's true that Blaj doesn't have more or better evidence to support her ERISA claim than her wrongful discharge claim, and the Court stands by its reasons for finding the evidence insufficient to establish a violation of the FEHA. The difference is that Blaj's prima facie case for a violation of ERISA is comparatively strong and manifestly more believable, and the Court must consider the strength of that case in determining whether summary judgment is ultimately appropriate. Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 143 (2000); see also Balkenbush v. Ortho Biotech Products, L.P., 653 F.Supp.2d 1115, 1121 (E.D. Wash. 2009).

VI. Failure to Accommodate

Blaj's final claim, which she brings under the Fair Employment and Housing Act, alleges that Stewart failed to accommodate her medical condition. (Opp'n Br. at 1:9-11.) This claim is legally distinct from her wrongful termination claims, and, problematically, Blaj asserts it for the first time in her opposition brief. ( See Opp'n Br. at 10:26-11:22.) There is no need, however, to dwell on points of procedure and debate whether to allow Blaj to amend her complaint, because she pleads no facts that can lend support to this claim. Instead, she notes that employers have an affirmative and impromptu duty to accommodate workers with known medical conditions (Opp'n Br. at 10:26-27), and then accuses Stewart of a "complete failure to engage in any process of reasonable accommodation" (Opp'n Br. at 11:20). It may be that employers have an affirmative duty to accommodate medically disabled employees, but a claim can't stand unless the employee can point to some particular accommodation that she sought and/or required and that was denied to her.

The best Blaj can do is say that Stewart made no attempt "to determine if her medical condition was in any way related to the issues that led to her termination," but it's implausible that Blaj's medical condition led her to violate Stewart's conflicts policy, or that a reasonable accommodation would have been to exempt her from observing the policy. ( See Opp'n Br. at 11.) Regardless, Blaj pleads no facts that could form the beginning of an argument. With only the conclusory and vague allegation that Stewart failed to accommodate Blaj's medical condition, Stewart's motion for summary adjudication of Blaj's failure-to-accommodate claim is GRANTED.

VII. Romero's Discharge

Finally, the Court comes to Romero's wrongful discharge claim, which is predicated on her association with Blaj. Under California law, it is unlawful for employers to discriminate against employees on the basis of certain protected characteristics, and it is also unlawful to discriminate against employees because of their association with a person who has those characteristics. Cal. Gov. Code § 12926(m).

Stewart explains that it terminated Romero — or, more precisely, eliminated her position — as part of a reduction in force. (Stein Dep. 121:-23.) Romero's rebuttal to this is that only two other Stewart employees were also targeted as part of this reduction, and both were reassigned to other positions. (Stein Dep. 126-127.) It may be, as Romero asserts, that she was an excellent employee who wore many hats at Stewart, and that she could have easily transitioned to another opening within the company, but this is not enough to defeat summary judgment. Stewart is well within its rights to reassign other employees and not Romero, so long as her relationship to Blaj has nothing to do with it. Romero perhaps makes a compelling case that it was unwise of Stewart to terminate her employment, unfair even, but she offers insufficient evidence to suggest that Stewart was motivated to rid itself of Romero because of her relationship to Blaj. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-587 (1986) ("some metaphysical doubt as to material facts" insufficient to avoid summary judgment). Stewart's motion to dismiss Romero's wrongful discharge claim is GRANTED.

VIII. Conclusion

The Court does not dismiss claims lightly, especially in a case of this nature. But after a thorough review of the evidence and consideration of the parties' respective arguments, it cannot but reach the conclusion that, at best, Blaj can show that Stewart terminated her in retaliation for exercising certain rights under an ERISA plan. Stewart's summary judgment motion is GRANTED as to all claims but this one.

IT IS SO ORDERED.

. A hierarchical database is well suited for organizing information that breaks down logically into successively greater levels of detail." Taub Decl. Ex. D. Construing "database" as proposed by Defendant would read out this preferred embodiment.

Conversely, Defendant's proposed construction attempts to improperly incorporate other limitations from the preferred embodiment that are not in the claim terms, such as importing the concept of SQL into the unmodified term "database." For example, Defendant's expert Spielman stated that "databases are structured by definition of a schema, to allow for a result set to be returned based on a user's request through an SQL query." Spielman Decl. ¶ 47. She also stated: "SQL is a query language that is used to access specifically relational databases. So, yes, they would equate SQL with a relational database." Taub Decl. Ex. A at 51. Finally, she stated: "that's the only way you would use the structured query language to access the relational database is through SQL. It

was designed specifically for that reason." Taub Decl. Ex. A at 51. Spielman also opines that there is "not a single line of SQL code present in the MBB source code. The MBB would therefore have been unable to access an actual relational database in any way." Spielman Decl. ¶ 63. Defendant then goes beyond the specification to rely on extrinsic evidence that relational databases use the ACID (atomicity, consistency, isolation, durability) and CRUD (Create Read Update Delete) properties. Taub Decl. Ex. A at 147. Plaintiffs respond that the inventors did not claim the use of SQL or a query language, and that they could have done so if they had wanted to. See Taub Decl. Ex. E (`367 patent, parent of the asserted patents) ("The method of claim 4, wherein said database is a Structured Query Language."). Thus, the claim language and the specification support a broader construction than that proposed by Defendant.

The Court also considered the extrinsic evidence proffered. Defendant's expert Spielman testified that a novel aspect of the invention of the `538 patent was that it overcame the limitations of a file system. Spielman Decl. ¶ 43. For example, she testified that file systems do not support relational data between files or schemas, do not support transactional operations, or ACID properties, and do not have the ability to prepend to a file or do arbitrary insertion into or deletion from a file, all of which are apparent in the claimed inventions based on the database specific language used in the claims and specification. Spielman Decl. ¶¶ 39-41, 45-46.

Plaintiffs argue generally that the Court should disregard the Spielman opinions. Phillips, 415 F.3d at 1318 ("conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court."). First, Plaintiffs argue that Spielman describes the differences between file systems and databases without reference to the asserted patents. Spielman Decl. ¶¶ 38-48. Also, she relies for this part of the declaration on Wikipedia as it exists now, which does not address the meaning of the claims of the patents from the viewpoint of a person skilled in the art as of 1995. Id. While the Court will not disregard the Spielman opinions, these points do limit their weight.

There is testimony from Coley, one of the inventors of the `538 patent, in prior litigation in 2007 that he considered a file system to be a kind of database:

Q. What is your definition of database?

A. In my definition of database, yes, it was a database. It was a set of files stored on the hard disk of a computer that were accessed in that particular case based on file name, based on some reference identifier.

Q. Why did you say depends on my definition of a database?

A. In the work that I do now, database can mean one of several things. In a lot of laymen's terms database is, for example, Microsoft Access program running on a machine. In software programming, a database is anything that stores related or maybe even unrelated portion of database. A file system, the disk for storage on your hard disk, is a database of sorts. And so from a software perspective we think of everything or a lot of things as databases in that.

Q. When you said database of sorts, what does that mean?

A. It's usually — the usual concept of a database is a file or a set of files that contain lots of pieces of information, lots of records. In the case of where I say database of sorts, we had a set of files containing those. So they were separate files. So maybe in some people's concept of database is different, but from the concept they were all within one file system, different records of the data absolutely fits the definition of a database in my mind.

Taub Decl. Ex. C at 80-81. McBryan states that the MBB uses a "set of files stored on the hard disk of a computer that were accessed . . . based on file name, based on some reference identifier." McBryan Decl. ¶¶ 7-13, 22, 25-26.

Defendant, however, argues that inventor testimony is generally irrelevant to the topic of claim construction (Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1338 (Fed. Cir. 2009)), although that case addressed inventor testimony in the context of an inventor of a patent-in-suit engaging in seemingly self-serving testimony regarding the allegedly infringing product, unlike here. Defendant also argues that Coley's testimony regarding databases was in the context of describing the first implementation of what eventually was developed into an embodiment of the invention. Coley testified that the first incarnation of the invention was simply a set of files on the web, but then evolved into using a database. Rounds Surreply Decl. Ex. 2 at 77-80. This does not entirely explain away Coley's testimony that a database could include a file system. However, as Defendant points out, Coley was not asked what he thought the definition of database was in the context of the patents-in-suit.

Plaintiffs note that Dr. Meier, Defendant's expert in the priorAutotrader.com litigation, which involved some of the same patents at issue in this case, testified that "a database is an organized collection of information," thereby supporting Plaintiffs' construction. Taub Decl. Ex. B at 37-38. With regard to two of the patents in suit, Dr. Meier defined "database" as "an organized collection of information that is both a data store and a data source." Taub Decl. Ex. B at 48-49. Plaintiffs also argue that Meier conceded that the MBB included a database, but his testimony on that point is not entirely clear: "You could have a distributed database in the sense that I've used within the patent with an instance of GENVL and multiple image servers. . . ." Taub Decl. Ex. B. at 155-56.

Defendant argues that Meier's testimony is not entitled to much weight in this case primarily because in the Autotrader.com case, Meier was not asked to opine on the definition of the term "database." Further, he did not provide an opinion as to whether any prior art constituted a database. Rounds Sur-reply Decl. Ex. 3 at 150. Defendant points out that Meier's testimony about a database outside the context of the patents-in-suit being "an organized collection of information" differed from his definition in the context of the patents. Defendant also argues that Meier's testimony was that the patents require that transactions are processed reliably and that the MBB did not meet the limitations of claim 1 of the `538 patent. Rounds Sur-reply Decl. Ex. 3 at 49-50, 151-52. Defendant argues that the reliability aspect of Meier's testimony is consistent with Spielman's testimony that a database must contain ACID and CRUD properties. Spielman Decl. ¶ 40, n. 10. Still, this testimony reinforces the appropriateness of a broader definition of database.

Finally, Defendant points out that McBryan could not answer the foundational question of whether the `538 patent related to a relational database. Rounds Decl. Ex. 10 at 70-71. McBryan explained that he could not say whether the `538 patent involved a relational database because he thought the major issue was user access to a database, but he stated that elements of the patent could be aspects of a relational database. Id. Defendant argues that McBryan could not answer this question because he had testified earlier that he had little knowledge about databases. See Rounds Decl. Ex. 10 at 71, 98, 112-12, 116-17, 118, 123. However, McBryan also testified about databases during his deposition. Id. at 72-73. In sum, contrary to Defendant's argument, McBryan's deposition does not show a lack of knowledge of databases during the relevant time period; rather, he testified that he last worked in database research fifteen years ago, which is around the relevant time frame of 1995. Id. at 112.

Citing various dictionaries, Plaintiffs also argue that the ordinary meaning of "database" is simply a collection of data that can be stored and retrieved. Pls.' Reply at 7-8. For example, the 1994 edition of the Microsoft Press Dictionary defined database as: "Loosely, any aggregation of data." Microsoft Press Dictionary at 105 (2d ed. 1994). Further, the Dictionary of IBM and Computing Terminology defined database as of 1994 as: "(1) a collection of data with a given structure for accepting, storing and providing, on demand, data for multiple users." Dictionary of IBM and Computing Terminology at 21 (10th ed. 1994).

Defendant's proposed construction is supported primarily by extrinsic evidence in the nature of an expert declaration. Further, Spielman's proposed construction contains many limitations not found in the patents. Specifically, Spielman testified that the term "database" requires substantially all of the nineteen features she identified in exhibit E to her declaration, including SQL language, a database management system and fast user response performance. Taub Reply Decl. Ex. A at 65;id. at 61-65 (Spielman Depo.: "Q: So again, just for the sake of clarity, if one of these features was missing, it would not be a relational database? A: You don't have to have that [feature called support for normalization], but I would say yes to everything else."). Yet, many of these limitations are not supported by language in the patent. Spielman also acknowledged that other types of database systems were in use in the prior art period, including a hierarchical database, which cuts against Defendant's proposed construction. Taub Decl. Ex. A at 152.

In sum, and for all the reasons set forth above, the Court adopts Plaintiffs' proposed construction as modified to include "with a given structure." The addition of language regarding structure is supported not only by the claims, which contemplate, among other things, the presentation of a "data entry form to a user with a plurality of categories, wherein the categories have subcategories" (see Taub Decl. Ex. 1 at claim 4), but also by the specification, which states, among other things, that a user "can click on any category to go to the next level" (see Taub Decl. Ex. 1 at 11:5-6). In addition, Exhibit E of Spielman's declaration, which sets out the qualities of Defendant's proposed construction of "database," contemplates a structure. Finally, the dictionary definitions proposed by Plaintiffs support the addition of language regarding structure. At the hearing, counsel indicated that the addition of language regarding structure would not change their arguments regarding "database." Thus, the Court construes "database" as "a collection of data with a given structure that can be stored and retrieved." C. "Image" Plaintiffs' proposed construction Defendant's modified proposed construction Data representing a graphic or picture (original) Binary data representing a graphic or picture (original) OR OR Data displayed as a picture by an output device (as of October 1, 2010) Non textual content representing graphics or image (as of October 1, 2010) The second proposed constructions above constitute the current constructions proposed by the parties. The key issue dividing the parties is whether the proper construction of "image" requires non-textual content, such as .jpg files. Claim 1 of the `538 patent reads: ". . . wherein the information includes data representing text, a universal resource locator, an image, and a user-selected category." Taub Decl. Ex. 1 at 12:48-51. Defendant argues that the Court must consider "data representing text" to be distinct from "image," (Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001)) and in that case, a person of ordinary skill in the art would understand an image to be binary data such as a .gif, .jpg, or similar format defined specifically for graphic images. Spielman Decl. ¶ 78. Defendant points to the specification, which states that a database entry need not be limited to "text alone, but may be a complete hypermedia page, including possible graphics or other non-textual content." Taub Decl. Ex. 1 at Col. 9:12-15.

Plaintiffs argue that the claims use "image" without any qualifier, and the specification does not use the term "binary." Spielman notes that an ASCII file, which she believes that McBryan refers to as an image, cannot be an image because it is simply data representing text (because an ASCII file consists of characters from the 128-character set defined by the ASCII standard) as referred to in another phrase of the claim. Spielman Decl. ¶ 78. The primary support for the "binary" language is Spielman's testimony, which is somewhat conclusory as to what a person skilled in the art at the time would understand "image" to mean. Plaintiffs, however, have provided no contrary evidence. Further, the specification describes several ways to add images to the database. See Taub Decl. Ex. 1 at 9:51-54, 57-61 ("The form may have one or more checkboxes to indicate the desire to include with the entry one or more non-textual elements, such as a graphic image, etc. . . . . Non-textual content may be obtained from the user in any of a number of different ways."). Even though the claim language does not qualify the term "image," this language from the specification supports Defendant's construction.

The term "data representing" in claim 1 is more plainly read to modify "text" only, and not "image." Defendant's expert has testified that one of ordinary skill in the art would understand that "image" means binary data. Further, the specification language supports Defendant's construction and would not appear to preclude binary data or content. Thus, the Court adopts Defendant's proposed construction and construes "image" as "non textual content representing graphics or images."

C. "Transaction ID"

Plaintiffs concur with Defendant's proposed construction of "transaction ID." Thus, the Court construes "transaction ID" as "a unique identifier for a particular database entry."

D. "Password protecting"

Plaintiffs concur with Defendant's proposed construction of "password protecting." Thus, the Court construes "password protecting" as "restricting access to the data by means of a password."

Motion to Strike Opinions and Evidence of McBryan

Defendant has moved to strike the McBryan opinions on the grounds that McBryan is not qualified as an expert witness and his opinions are based on insufficient data and unreliable methods. Defendant also argues that Exhibit R to the McBryan declaration is unsworn and prejudicial hearsay and should be excluded. Plaintiffs oppose the motion.

A. McBryan's opinions

Federal Rule of Civil Procedure 702 governs the admissibility of expert testimony. The trial court acts as a "gatekeeper" to the admission of expert scientific testimony under Rule 702.Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 579-80 (1993). The court must conduct a preliminary assessment to "ensure that any and all scientific testimony or evidence admitted is not only relevant but reliable." Id. at 589. This two-step assessment requires consideration of whether (1) the reasoning or methodology underlying the testimony is scientifically valid (the reliability prong); and (2) whether the reasoning or methodology properly can be applied to the facts in issue (the relevancy prong). Id. at 592-93;Kennedy v. Collagen Corp., 161 F.3d 1226, 1228 (9th Cir. 1998). "Daubert's list of specific factors neither necessarily nor exclusively applies to all experts or in every case. Rather the law grants a district court the same broad latitude when it decides how to determine reliability as it enjoys in respect to its ultimate reliability determination." Kumho Tire Co. v. Carmichael, 526 U.S. 137, 141-42 (1999). The proponent of expert testimony has the burden of proving admissibility pursuant to Rule 702 by a preponderance of the evidence. Fed.R.Evid. 702, Advisory Committee Notes (2000 amendments).

Defendant argues that the patents-in-suit are directed toward database operations, yet McBryan has no experience with database operations. McBryan developed the MBB and the WWWW, which uses a UNIX file system, which is a hierarchical, not a relational, database. McBryan Decl. ¶ 25; Rounds Opp. Decl. Ex. 10 at 29. McBryan has used SQL to access data. Rounds Opp. Decl. Ex. 10 at 26, 35. McBryan testified that he was not familiar with some terms relating to databases, and that he was not an expert in database terminology. Rounds Opp. Decl. Ex. 10 at 26, 79, 94, 118-20. Specifically, Defendant notes that a database schema describes the structure of a database, yet McBryan testified that he could not precisely say what a schema was. Rounds Opp. Decl. Ex. 10 at 118, Further, Defendant notes that a schema defines the database fields and tables, among other things, but McBryan testified that he did not know what a database field was. Id. at 94. As another example, Defendant argues that the ACID properties are a set of properties that ensure that database transactions are processed reliably (Spielman Decl. ¶ 40), yet McBryan was unfamiliar with those properties. Rounds Opp. Decl. Ex. 10 at 123.

Plaintiffs counter that McBryan has the educational and academic qualifications of an expert in the field of the asserted patents. McBryan Decl. ¶ 3; Ex. A. He designed one of the world's first web search engines. Id. ¶ 5. The relevant expertise, as Defendant appears to concede, is knowledge of databases in 1995. McBryan worked with databases in his line of work at the relevant time, although he has not done so in recent years. Taub Decl. Ex. A at 17 (McBryan testified that he used a database management system many times in his work). He testified that: "almost all of my scientific work since about 1980 has — has involved using computers and — and storing substantial

amounts of data." Taub Decl. Ex. A at 17. In doing his work, he "was always using some form of database management." Id. at 17. He worked on a number of web-based applications for accessing data other than the MBB. Id. at 23. Plaintiffs argue that Defendant relies on out-of-context questions from McBryan's deposition in which McBryan was not asked about the patents-in-suit. Although those questions reveal some lack of detailed familiarity with database terms in their current usage, the terms used by Defendant's counsel in the deposition (e.g., ACID and CRUD properties) were not part of the patent claims at issue in this case.

Moreover, the Court has rejected Defendant's construction of the term "database" as a relational database. McBryan testified that he has used SQL to access data, and that he used other data languages as well. Taub Decl. Ex. A at 26, 29. McBryan testified as to how SQL worked. Id. at 39. Further, McBryan testified briefly regarding the differences between file systems and relational databases. Id. at 72-76. Defendant notes that while McBryan forgot the precise full text for the acronym SQL (Structured Query Language, not "symbolic query language or something of that sort," as he stated), so did the inventor in the `538 patent. Taub Decl. Ex. A at 29; Taub Decl. Ex. 1 at 4:12 (`538 patent states: "Standard Query Language").

The Court finds that McBryan's testimony is reliable given his experience with databases and relevant to the issues in this case. Thus, he is qualified to testify as an expert in this case. Defendant's Motion to Strike McBryan's opinions is denied.

B. Exhibit R

Defendant also seeks to exclude Exhibit R of McBryan's declaration, which is an audio/video demonstration by McBryan of the modified MBB software through a question and answer format. The video goes somewhat beyond being a multimedia form of McBryan's declaration because it includes questions by Plaintiffs' counsel, some of which are leading, and some comments by counsel. Defendant was not present for the video recording. Rounds Decl. ¶ 14.

The video is more akin to a declaration than a deposition, and McBryan has since filed a declaration stating that he reviewed the videotape of Exhibit R and verified that the statements made and the operation of the MBB described in that exhibit are true and accurate. See McBryan Decl. ¶ 42. While the Court is not adverse to video demonstrations by witnesses as a general matter, the Court did not need to consider the demonstration in reaching its decision, so the motion to strike is denied as moot.

Motion for Summary Judgment A. Legal Standard

1. Summary judgment

Summary judgment shall be granted if "the pleadings, discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.Pro. 56(c). Material facts are those which may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. Id. The court must view the facts in the light most favorable to the non-moving party and give it the benefit of all reasonable inferences to be drawn from those facts. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The court must not weigh the evidence or determine the truth of the matter, but only determine whether there is a genuine issue for trial. Balint v. Carson City, 180 F.3d 1047, 1054 (9th Cir. 1999).

A party seeking summary judgment bears the initial burden of informing the court of the basis for its motion, and of identifying those portions of the pleadings and discovery responses that demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the moving party will have the burden of proof at trial, it must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party. On an issue where the nonmoving party will bear the burden of proof at trial, the moving party can prevail merely by pointing out to the district court that there is an absence of evidence to support the nonmoving party's case. Id. If the moving party meets its initial burden, the opposing party "may not rely merely on allegations or denials in its own pleading;" rather, it must set forth "specific facts showing a genuine issue for trial." See Fed.R.Civ.P. 56(e)(2); Anderson, 477 U.S. at 250. If the nonmoving party fails to show that there is a genuine issue for trial, "the moving party is entitled to judgment as a matter of law." Celotex, 477 U.S. at 323.

2. Invalidity

A patent is presumed valid. 35 U.S.C. § 282. Invalidity must be proven by clear and convincing evidence. See i4i Ltd Partnership v. Microsoft Corp., 598 F.3d 831, 848 (Fed. Cir. 2010).

a. Anticipation

A patent claim is invalid as anticipated if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, . . ." 35 U.S.C. § 102(b). To anticipate a claim under § 102(b), a prior art reference must disclose and enable each and every element of the claimed invention, either explicitly or inherently. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) ("Moreover, a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.").

b. Obviousness

"Section 103 forbids issuance of a patent when the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR Int'l co. v. Teleflex, Inc., 550 U.S. 398, 406, 417 (2007) (internal citation omitted) (in evaluating obviousness, "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."). "The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. Further, "[c]ommon sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id.

Determination of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts, including the scope and content of the prior art, differences between the prior art and the claimed invention, the level of ordinary skill in the art and any relevant secondary considerations. See Power-One v. Artesyn Technologies, 599 F.3d 1343, 1351-52 (Fed. Cir. 2010);Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1324 (Fed. Cir. 2008); In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005). When the underlying facts are not in dispute, summary judgment is appropriate. See KSR, 550 U.S. at 427 ("Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.").

B. Discussion

1. MBB is prior art

There is no dispute that MBB is prior art. The first filing date of the asserted patents is December 14, 1995. The MBB was in public use by at least April 1994, more than one year prior to the date of the application of the asserted patents. McBryan Decl. Ex. C (MBB paper dated May 1994 stating that the MBB had been accessed more than 100,000 times since April 1994); Ex. D (MBB source code archive). The issue is whether there is a triable issue of fact as to whether the patents-in-suit are invalid as anticipated or obvious based on the MBB.

2. "Database"

Defendant argues that even under Plaintiff's construction of "database," which the Court has largely adopted as set forth above, there is a dispute of fact as to whether the MBB teaches a database, and contends that the MBB is actually a file system and not a database at all. McBryan testified in his declaration that:

the files and directories for the entries were stored in a hierarchical structure in the file system of a computer — either the computer running the web server of another computer on the same network. The MBB database system utilized the UNIX file system of the computer as its underlying physical database system (physical level). The UNIX file system is a hierarchical database of data files, where files are stored in directories and the directories form a directory tree.

McBryan Decl. ¶ 25. He also testified that:

Each entry in the MBB was given a unique transaction identifier allowing it to be retrieved later for viewing or modification. An entry was assigned an integer at the time of its creation, which was unique within the context of the entry's category, and could be used later to delete the entry.

Id. ¶ 26; see also Spielman Decl. ¶ 85 ("In addition, because the MBB stores its categories in a hierarchical way, this tree structure meant that sub-categories would be created within categories."). The MBB has characteristics of a hierarchical database, which has been defined as:

a database in which records are grouped in such a way that their relationships form a branching, treelike structure . . . A hierarchical database is well suited for organizing information that breaks down logically into successively greater levels of detail.

Taub Reply Decl. Ex. D at 197; McBryan Decl. ¶ 8 (explaining treelike structure of MBB). Plaintiffs note that one of the preferred embodiments of the patents-in-suit describes a hierarchical structure: "Categories are represented in computer memory in the form of a tree structure." Taub Decl. Ex. 1 at 11:1-7.

Defendant relies on its expert Spielman's testimony that the MBB is designed to use a file system, not a database, and a file system is not a database. Spielman Decl. ¶¶ 50-51. Defendant also points to McBryan's testimony that MBB's file system is only managed by the server computer's operating system (McBryan Decl. ¶ 25), but under the construction of "database" adopted by the Court, the management of the file system would not preclude a finding that the MBB is a database.

Next, Defendant points to McBryan's testimony in which he states that the files for the MBB were stored in a hierarchical catalogue or structure, "somewhat like a tree." McBryan Decl. ¶¶ 5, 25; Rounds Opp. Decl. Ex. 10 at 85-86. Spielman testified that a tree structure was similar to files saved on a computer in an application like Microsoft Word, not the multi-dimensional structure disclosed in the patents-in-suit. Spielman Decl. ¶¶ 23, 39, 42-44. Spielman testified that when a user searches on the MBB, the search is performed by opening and closing each and every file in the file system through use of the operating system and then listing the content of files containing the search term. Spielman Decl. ¶ 47, 66-70. Spielman testified that this time-consuming process is distinct from the process used in the patents-in-suit, which use a database management system rather than an operating system to obtain results. Id. She also testified that file systems do not support SQL (Spielman Decl. ¶ 47), but as described above, the claims do not require SQL. Spielman also states that all databases support ACID and CRUD properties. See, e.g., Spielman Decl. ¶ 45 ("At the time of the patents, any database would have been required to support transactional operations and have ACID properties.") Defendant notes that McBryan testified to functions that do not satisfy these properties. See, e.g., Rounds Opp. Decl. Ex. 10 at 113-15 (when a user attempts to perform a function on the MBB that cannot be performed because of a file system error, the MBB could result in a corrupt file); Spielman Decl. ¶ 40, n. 10 (stating that ACID properties guarantee that database transactions are processed reliably). But as addressed above, the Court has not adopted Defendant's proposed construction of database as a relational database with these properties.

Plaintiffs have provided clear and convincing evidence that the MBB is a database as that term has been construed. Thus, there is no a triable issue of fact as to whether the MBB is a database.

3. "Image"

The Court has construed the term "image" as "non textual content representing graphics or images." There is no dispute that the MBB entry form allowed users to type in the internet address of any image, as well as allowed users to add images to their entries by sending them to McBryan and having him add them to their entries. McBryan Decl. ¶¶ 12-16, 22. The method of uploading images by transferring them through another channel is stated in the preferred embodiments: "Non-textual content may be obtained from the user in any of a number of different ways. For example, the user may transfer to the site a file containing the non-textual content using the File Transfer Protocol with the same user ID and password as when the entry was added." Taub Decl. Ex. 1 at Col. 9:56-61.

Defendant argues that an entry for an image on the MBB is nothing more than an HTML link to, or address for, an image that is hosted on a different system, and is not an image. Spielman Decl. ¶ 77; McBryan Decl. ¶¶ 12-13. Spielman determined that the MBB had no facility to upload, host or incorporate image data into the MBB. Spielman Decl. ¶ 77. Nor is there any place on the entry form to upload an image. McBryan Decl. Ex. F at F-5. McBryan, however, testified that he accepted images from users "to be stored on the MBB server." McBryan Decl. ¶ 16. Further, as described above, the specification describes several ways to add images to the database, one of which could be to give those images to an editor such as McBryan for uploading to the system. See Taub Decl. Ex. 1 at 9:51-54, 57-61 ("The form may have one or more checkboxes to indicate the desire to include with the entry one or more non-textual elements, such as a graphic image, etc.. . . . Non-textual content may be obtained from the user in any of a number of different ways.").

Even assuming a triable issue of fact as to whether the MBB provided for uploading of images as that term has been construed, and thus satisfied the test for anticipation, Plaintiffs argue persuasively that it would have been obvious to modify the MBB to include automated upload. McBryan Decl. ¶ 56 ("The MBB already provided the ability for a user to enter a path to an image, and to have that image displayed on an MBB page. It would have been straightforward to retrieve the image at the path specified by the user, and to store a copy of that image in the MBB database. The WWWW search engine already included a process that retrieved and downloaded content from other web pages. It would have been straightforward to use the same functionality to retrieve an image from a user-specified location."); ¶ 59 (stating that with regard to the `034 patent, it would have been obvious to add the ability to download an image to a server). Further, McBryan states that the text of an entry on the MBB could "also include references to image files that would be displayed when the entry was viewed." McBryan Decl. ¶ 10; see also McBryan Decl. Ex. I (emails providing examples of users adding images to entries in the MBB). Defendant's expert does not dispute this. Defendant's expert Spielman states generally in her declaration that the MBB does not make obvious any of the claims in the patents-in-suit. Spielman Decl. ¶¶ 18, 101. However, she does not specifically address the obviousness of storing an image in the MBB, instead confining her opinions regarding the "image" language in the claims to whether the MBB anticipated that element. Spielman Decl. ¶¶ 75-79.

Thus, even if the MBB did not anticipate the image element, the Court concludes based on the undisputed facts that it would have been obvious to modify the MBB to include automated uploading. Thus, there is no triable issue of fact as to whether the MBB satisfies the "image" language in the patents-in-suit.

4. "Transaction ID"

The Court has adopted the parties' agreed-upon construction of "transaction ID" as "generating a unique identifier for a particular database entry." An illustrative claim is claim 1 of the `538 patent:

1. A method of publishing information on a computer network comprising the steps of:

. . .

generating a transaction ID corresponding to the database entry;

. . . .

Taub Decl. Ex. 1 at 12:45-46; 52-53.

Plaintiffs have provided evidence that the MBB generated a unique identifier for a particular database entry. McBryan Decl. ¶ 26 ("Each entry in the MBB was given a unique transaction identifier allowing it to be retrieved later for viewing or modification."); Taub Decl. Ex. G at 186 ("At any given time, the same number was never used for two entries.").

Defendant, however, points to Spielman's testimony that file systems cannot use transaction IDs. Spielman Decl. ¶ 56 ("Transaction IDs are a standard feature of relational databases. File systems, however, do not support transaction IDs."). However, the agreed upon construction does not tie transaction ID to a requirement of a valid transaction. Instead, the construction ties it to a database entry. Defendant's argument appears to hinge on its proposed very narrow construction of "database," which has not been adopted.

Defendant also points to McBryan's testimony that a file in the MBB could share the same transaction number as another file, and so that transaction number, even if it is a transaction ID for purposes of the patents-in-suit, is not unique. McBryan testified that:

Q: . . . well over time, the same number could be used for two separate —

A: Yes.

Q: — users, correct?

A: Much like a Social Security number where is somebody dies, that Social Security number may be recycled to somebody sometime in the future, but not probably right away.

Q: Okay. So the —

A: Or a telephone number.

Q: So the MBB can — it recycles in some situations a transaction number?

A: In some situations, yes, Not — not in all situations. But at — any given time all entries had a unique number.

Taub Decl. Ex. G at 186. Significantly, however, the specification of the patents-in-suit contemplate that unique transaction IDs are "to be used throughout the life of the entry." Taub Decl. Ex. 1 at 9:32-33. McBryan testified that entries on the MBB maintain the same transaction ID number for the life of the entry, Taub Decl. Ex. 1 at 9:32-24, and Defendant has not pointed to any evidence that two entries on the MBB had the same transaction ID numbers at the same time. Thus, Plaintiffs have provided clear and convincing evidence that the MBB generated a unique transaction identifier for a particular entry, and there is no triable issue of fact on that issue.

5. "Password protecting"

The Court has adopted the parties' agreed-upon construction of the term "password protecting" as "restricting access to the data by means of a password." The agreed construction of "password protecting" does not require that the system require passwords in all instances, or that the system restrict access by all other users. Further, a claim limitation can be invalidated by a single public use. Coffin v. Ogden, 85 U.S. 120, 124-25 (1873); Eolas Techs, Inc. v. Microsoft Corp., 399 F.3d 1325, 1334 (Fed. Cir. 2005) (finding that a single prior use invalidates both system and method claims). Moreover, the PTO stated in a non-final office action rejecting claims 1-22 contained in the patent application 10/844,260 that later became the `591 patent at issue in this case, that password protecting is "notoriously old and well known in the art," which indicates that password protecting would have been an obvious modification. Taub Decl. Ex. H at 5.

Plaintiffs have provided evidence that the MBB protected individual entries, subcategories and categories with a user-supplied password. McBryan Decl. ¶ 9 (stating that he frequently had to manually delete entries created by users who forgot their passwords); Taub Decl. Ex. G at 175-76 (noting that some users provided passwords). McBryan stated:

Along with the user-supplied title, the user provided a password of his choice to prevent others from deleting the entry. The user also provided a password of his choice to prevent deletion of any categories and subcategories that he created. By password protecting a category and all of its subcategories and entries, a user could create an entire section of a bulletin board under his personal editorial control. In this case, only a system administrator could delete any of the categories, subcategories, or entries. Frequently users forgot the password they used and had to ask me to delete their entry at a later date.

McBryan Decl. ¶ 9; id. at ¶ 45, Ex. K (email indicating users applied passwords to entries). Defendant does not dispute that the MBB used a password to restrict access to entries. However, Defendant argues that there is evidence that even if a password were created, there were situations where the MBB would accept entries without a password and situations in which a file could be deleted by a different higher user without inputting the password used to create the file. Rounds Opp. Decl. Ex. 10 at 176 (stating that the system would accept a zero length password, but that it would be simple and obvious to alter the code to require a password); 180-81 (stating that if someone did not use a password, another user could come in and delete the entry); Spielman Decl. ¶¶ 84-85 (confirming that the MBB would accept a null password and that non-password protected entries could be deleted by others); McBryan Decl. Ex. F at F-13 (stating that it is advisable to use a password). But Plaintiffs have provided clear and convincing evidence that at least one user of the MBB used a password to restrict access to an entry, and there is no triable issue of fact on that issue.

6. Charging element

It is undisputed that the MBB did not charge a fee, so the MBB does not anticipate that claim language of the patents-in-suit.See, e.g., Taub Decl. Ex. 1 at Claim 2 ("The method of claim 1, wherein the user is charged for the creation of the database entry."); id. at Claim 3 ("The method of claim 2, wherein the charge is applied to a user's credit card."); Taub Decl. Ex. 3 at Claim 1 ("A web server for providing a dynamically-updating pay-for-service web site comprising: a web server coupled to a computer network having a database operatively disposed within and accessible on said network, said server comprising: an HTML front-end entry process configured to: . . . receive a fee from said owner for making said personal homepage accessible on said network. . . ."); Taub Decl. Ex. 4 at 12:57-13:4 ("A method for providing a pay-for-service web site comprising: [1] providing a web server coupled to a computer network having a database operatively disposed within and accessible on said network; [2] providing an HTML front-end entry process associated with the web server; [3] executing an HTML front-end entry process, said HTML front-end entry process being configured to: [4] create a personal homepage for an owner; [5] store said personal home page in said database; [6] index said personal homepage in said database in a user-defined category; and [7] receive a fee from said owner for making said personal homepage accessible on said network."). Plaintiffs, however, argue that it would have been obvious to modify the MBB to charge a fee. McBryan Decl. ¶ 49 ("In 1994, when the MBB was operational, it was well-known how to collect information that would allow charging a user for use of a website, and it would have been very straightforward to include this functionality on the MBB site. For example, the registration page for the WWW1994 conference, at which I presented my paper on the MBB, included a form for submitting credit card information in order to secure registration for the conference."). Further, the patents-in-suit show that it was well-known in the art for users to pay a fee for listings on the web. Taub Decl. Ex. 1 at Col. 2:14-18; 10:11-15. For example, McBryan states that the conference where the MBB paper was presented charged a fee online. McBryan Decl. Ex. Q. Defendant has not provided any evidence to the contrary sufficient to raise a triable issue of fact.

Thus, Plaintiffs have provided clear and convincing evidence that the charging element of the patents-in-suit was obvious at the time of the MBB and the patent applications.

7. "Update"

The Court was not asked to construe this term. Although the parties do not dispute that the MBB provided a way to modify or update an existing entry, Defendant argues that the method used in the MBB does not meet the update claim element. Specifically, Defendant argues that because the MBB is a file system, it cannot write data into the middle of a file and the only way to change an item on the MBB is to delete and then recreate the file with modified data. Spielman Decl. ¶¶ 71, 92. Defendant argues that this delete/recreate process fails to meet the "update" element, which contemplates the ordinary meaning of the term update where the existing entry's contents are being modified. Spielman Decl. ¶ 92. Defendant's expert opines that the MBB's delete/recreate process cannot anticipate the update limitations because the MBB entry is not actually modified, but instead replaced. Spielman Decl. ¶¶ 72, 92. Specifically, while an entry in the MBB could include pointers to content hosted elsewhere, the MBB's entry is not modified by changing the content to which the pointer points. Spielman Decl. ¶ 93.

Plaintiffs argues that the patents describe an updating function that is like that employed by MBB, which includes overwriting the prior data with new data using the same entry form. See Taub Decl. Ex. 3 at Fig. 2P. There is nothing in the patent claims that requires the updating of an existing entry to be carried out in any particular manner. The specification describes the update process, but the language there does not appear to require any particular updating method. Taub Decl. Ex. 2 at 6:27-34 ("When the user has edited the entry to his or her satisfaction, the user presses UPDATE. The user is then presented with a further page like that shown in FIG 2Q and 2R, giving him or her the opportunity to review one final time the comments and keywords. To change the comments or keywords, the user presses BACK. The user can also change the category of the entry by pressing the Change category button. To accept and complete the update, the user presses a Done update button."). Plaintiffs also note that Spielman testified that the MBB did perform updates to the extent that it could on an operating system on a file system. Taub Decl. Ex. A at 101.

Further, Plaintiffs argue that providing an update function would have been obvious, and was in fact included in development versions of the MBB prior to the dates of the asserted patents. Taub Decl. Ex. G at 187 ("A: In my own experimental version I had an editor, the UNIX editor that was brought up and it allowed you to change the information and then store it back in."). McBryan also testified that there is a reference to this functionality in the source code.Id. at 188 ("there is a residue in the code where it's still there if you look at the code. You'll see that there's the edit line still in there."). Defendant argues that an experimental non-working function cannot be an anticipating reference because a reference "must enable that which it is asserted to anticipate." Elan Pharma. v. Mayo Found., 346 F.3d 1051, 1054 (Fed. Cir. 2003) ("Enablement requires that `the prior art reference must teach one of ordinary skill in the art to make or carry out the claimed invention without undue experimentation.'") (quoting Minnesota Mining and Manufacturing Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002)). However, Defendant's enablement argument does not negate obviousness.

Thus, Plaintiffs have provided clear and convincing evidence that the MBB invalidates the "update" element of the `034 patent either by anticipation or obviousness.

Conclusion

For the reasons stated above, Plaintiffs' Motion for Summary Judgment is granted. Defendant's Motion to Strike is denied.

IT IS SO ORDERED.

Dated: November 23, 2010

MYSPACE, INC., Plaintiff, v. GRAPHON CORPORATION, Defendant. Craigslist, Inc., Plaintiff,

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