OPINION AND ORDER
ROBERT PATTERSON JR., District Judge
On August 4, 2010, Petitioner Osiris Fermin, a/k/a Jose Hernandez, appearing pro se, moved for a reduction of sentence pursuant to The Fair Sentencing Act of 2010 and Title 18 U.S.C. § 3582(c)(2). Petitioner pled guilty to conspiracy to distribute fifty grams or more of crack cocaine in violation of 21 U.S.C. § 846 on March 12, 2003. Petitioner asserts that the Fair Sentencing Act of 2010, Pub.L. No. 111-222, 124 Stat. 2372 (2010) (the "FSA"), should be applied retroactively and that he should be resentenced as a consequence. The Government opposed the motion for reduction of sentence by letter dated September 7, 2010. This Court finds that the FSA should not be construed to have retroactive effect and consequently denies Petitioner's request for a reduction in sentence.
The FSA was enacted on August 3, 2010 and amends the Controlled Substances Act, 28 U.S.C. §§ 801-904 (1970), by revising the quantity thresholds that trigger statutory mandatory penalties for crack cocaine offenses. Pub.L. No. 111-222, § 1, 124 Stat. 2372 (2010). The FSA also eliminated the mandatory minimum sentence for simple possession of crack cocaine. Id. § 2. Because Petitioner was not convicted for simple possession, the sole issue is whether the FSA should be construed to have retroactive effect thus making Petitioner eligible for resentencing under the revised quantity thresholds. This issue was addressed by the Second Circuit in a recent case. See U.S. v. Glover, 2010 WL 4250060 *2 (2d Cir. 2010) (holding that the mandatory minimum in effect at the time the prisoner committed the offense applies and that the prisoner was not entitled to the benefit of the FSA).
This Court finds that the FSA does not apply retroactively because it is silent with respect to its retroactive effects. There is a well-established presumption against retroactivity. Accord AT T Corp. v. Hulteen, 129 S.Ct. 1962, 1971 (2009) (holding the Pregnancy Discrimination Act does not apply retroactively). The Supreme Court has made clear that "retroactivity is not favored in the law" and that statutes "will not be construed to have retroactive effect unless their language requires this result." Bowen v. Georgetown University Hosp., 488 U.S. 204, 208 (1988) (invalidating a rule promulgated by the Secretary of Health and Human Service after holding the Medicare Act's general grant of authority to the Secretary to promulgate cost-limit rules contains no express authorization for retroactive rulemaking). The presumption against retroactivity "accords with widely held intuitions about how statutes ordinarily operate," and thus "[r]equiring clear intent assures that Congress itself has affirmatively considered the potential unfairness of retroactive application and determined that it is an acceptable price to pay for the countervailing benefits."Hulteen, 129 S.Ct. at 1971, quoting Landgraf v. USI Film Products, 511 U.S. 244, 272-273 (1994).
The Savings Statute, 1 U.S.C. § 109, demands the same result. It provides:
The repeal of any statute shall not have the effect to release or extinguish any penalty, forfeiture, or liability incurred under such statute, unless the repealing Act shall so expressly provide, and such statute shall be treated as still remaining in force for the purpose of sustaining any proper action or prosecution for the enforcement of such penalty, forfeiture, or liability.
The Supreme Court has held that punishment imposed pursuant to a criminal statute constitutes a "penalty, forfeiture, or liability" under the Saving Clause. See Warden v. Marrero, 417 U.S. 653, 661 (1974). The statute would therefore bar the retroactive application of the FSA, since the FSA does not "expressly provide" that it has "the effect to release or extinguish" the previous penalty.
Petitioner suggests that the United States Sentencing Commission will amend the United States Sentencing Guidelines to give the FSA retroactive effect. However, the Sentencing Guidelines have not been amended. Consequently, Petitioner's sentence cannot be reduced on the basis of 18 U.S.C. § 3582(c)(2).
For the above stated reasons, Petitioner's motion for a reduction in sentence is denied.
SO ORDERED.
y skill would be necessary to reduce the invention to practice, without extensive research or experimentation."
Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2002) (citations omitted). Put differently, every limitation must be shown to
have been known to the inventor at the time the invention is alleged to have been conceived.
Davis v. Reddy, 620 F.2d 885, 889 (C.C.P.A. 1980) (citing
Schur v. Muller, 372 F.2d 546, 551 (1967);
Anderson v. Anderson, 403 F. Supp. 834, 846 (D. D.C. 1975)). Because conception is a mental act, "it must be proven by evidence showing what the inventor has disclosed to others and what that disclosure means to one of ordinary skill in the art."
In re Jolly, 308 F.3d 1317, 1321 (Fed. Cir. 2002) (quoting
Spero v. Ringold, 377 F.2d 652, 660 (C.C.P.A. 1967)). The Federal Circuit has opined that a court should apply the "rule of reason" in determining conception. That is, the court should examine, analyze, and evaluate reasonably all pertinent evidence when weighing credibility of an inventor's story.
Holmwood v. Sugavanam, 948 F.2d 1236, 1239 (Fed. Cir. 1991). Evidence in the form of independent documents does not need to be corroborated.
Id. Rather, an alleged prior inventor "`must provide independent corroborating evidence in addition to his own statements and documents.'"
Procter Gamble Co. V. Teva Pharm. USA, Inc.,
556 F.3d 989, 999 (Fed. Cir. 2009) (citing
Hahn v. Wong, 892 F.2d 1028, 1032 (Fed. Cir. 1989)).
Reduction to practice may either occur actually or constructively. Actual reduction to practice requires a showing by the inventor that "the invention is suitable for its intended purpose." Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996). This may require actual testing for a complicated invention or may require only the complete construction of a prototype for a simple invention with obvious purpose and workability. Id. For a party alleging prior invention to establish that he actually reduced his invention to practice by testimony, he must corroborate his proffered testimony with
independent evidence, which is evaluated under a rule of reason considering all the evidence. Loral Fairchild Corp. v. Matsushita Elec. Indus. Corp. Ltd., 266 F.3d 1358, 1363 (Fed. Cir. 2001). Notably, there is no requirement that the "prior invention" be commercialized in order for it to be actually reduced to practice. Steinberg v. Seitz, 517 F.2d 1359, 1363 (C.C.P.A. 1975). The key is whether the invention can be commercialized or has reached the point where "practical men [would] take the risk of commercializing the invention." Goodrich v. Harmsen, 442 F.2d 377, 383 (C.C.P.A. 1971). Constructive reduction to practice, in contrast, occurs when a party alleging prior invention files a patent application on the claimed invention. Hybritech, 802 F.2d at 1376.
The party alleging prior invention must be able to show diligence "from a date just prior to the other party's conception to . . . [the date of] reduction to practice [by the party first to conceive]." Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2002); Mahurkar, 79 F.3d at 1577. However, it is not necessary for a party alleging prior invention to drop all other work and concentrate solely on the particular invention involved. Rines v. Morgan, 250 F.2d 365, 369 (C.C.P.A. 1957). There also need not be evidence of activity on every single day if a satisfactory explanation is evidenced. Monsanto, 261 F.3d at 1369 (citations omitted). Additionally, determining whether the required "reasonable diligence" has been satisfied involves specific inquiry. Id. (citations omitted).
b. Discussion
Plaintiff relies on the testimony and documents of John Reese ("Reese"), one of the inventors of the `939 patent, to establish a conception date of June 1, 1996. (D.I. 172 at 6) In his testimony, Reese claims that he conceived of a way to ensure the accuracy of data extracted from an uploaded resume and saved in the structured database by "flip[ing] it around, and have the jobseeker do the verification or part of the verification that [plaintiff] normally ha[d] [its] back office people do." (D.I. 172 at 6) Plaintiff claims Reese's testimony is corroborated by a single line in a "Private Placement Memorandum" which states that plaintiff's company has plans to "support interactive submissions from applicants having access through the WWW." (D.I. 173, ex. 2 at 22)
Plaintiff also relies on a "Letter of Intent" dated July 17, 1997 to support Mr. Reese's testimony. The Letter of Intent however, says nothing about interactive resume submission functionality, and merely states that "[plaintiff] would expand its existing online job posting/resume submission services . . . to incorporate the additional resumes and information generated by Ziff Davis' promotional efforts." (D.I. 172 at 18)
Neither Reece's testimony nor the Private Placement Memorandum establish by clear and convincing evidence that there was a "formation in the inventor's mind of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech, 802 F.2d at 1376. There is no indication from Reece's testimony that every claim of the invention was known to him at the time he claims to have had the idea. Moreover, the line from the Private Placement Memorandum that supposedly supports Reese's testimony is even less clear, as it simply claims that plaintiff was planning "interactive submissions." It says nothing about a user being able to submit a resume, which is then: (1) parsed for target data strings; (2) the data strings are displayed back to the user; (3) the data strings are verified and
modified by the user; and (4) the data strings are then stored in a database. "Interactive submissions" could have a myriad of meanings, and the document says nothing further to clarify the term's definition. For all intents and purposes, an "interactive submission" could simply involve the user uploading a resume to a website and clicking on a button labeled "send." This hardly meets the "clear and convincing" standard needed to establish conception prior to a patent's filing date.
Plaintiff also attempts to establish conception by the testimony and documents of another of the `939 patent's co-inventors, George Alan Porter ("Porter"). (D.I. 172 at 7) Porter produced a document entitled "Interactive Search Applicant Processing System Version 2.0" which is dated November 6, 1996. (D.I. 173, ex. 3) This document, a first draft written by Porter, includes a reference to "Applicants Electronic Resume Edit/Review." ( Id.) This single line is the only relevant portion of the document. Porter also produced a self-created document entitled "Web Input" with a handwritten date of June 13, 1997. (D.I. 155, ex 8) This document shows a flow chart of resume upload and extraction features that essentially mirror the claims of the patent. ( Id.)
Porter's testimony fails to establish conception of the `939 patent. Just a few lines under plaintiff's quoted text, where Porter states that the applicant edit/review system that is described in the "Interactive Search Applicant Processing System document "do[es] ultimately what [] the patent talks about" (D.I. 173, ex. 4 at 31:11-13), Porter is asked if he could describe how the system would work as contemplated in November 1996. ( Id. at 32:3-7) He replied that "we weren't that far along in — in November. I — just had an outline . . . of the proposed Version 2." ( Id. at 32:9-13) When asked "if he had a sense of how it would work in the time frame," he responded that they "hadn't given it serious consideration at that — at that time." ( Id. at 32:14-19) Porter's testimony regarding the "Web Input Document" is a bit more on point. While he admits that plaintiff's products did not have the described functionality at the alleged time the document was written, he does say that plaintiff had the design, i.e., the invention's conception. ( Id. at 68:7-69:4) At most, this testimony could establish a date of conception of June 13, 1997. However, as an inventor, his testimony requires independent corroborating evidence, something which neither document provides.
Plaintiff's "Interactive Search Applicant Processing System" document fails to establish conception for a variety of reasons. As discussed in the court's analysis of the Reese testimony, the one relevant sentence hardly shows that plaintiff had "a definite and permanent idea of the complete and operative invention." Even if the document did list every claim limitation, it is insufficient to establish conception since it is written by an inventor and contains no independent verification. Case law clearly establishes that, to prove both conception and reduction to practice, an alleged prior inventor "must provide independent corroborating evidence in addition to his own statements and documents." Procter Gamble, 556 F.3d at 999. This document is markedly different than an inventor's holographic notebook that is witnessed periodically by an independent third party, and it fails to establish conception. Id.
A similar reasoning applies to the "Web Input" document. It was created by Porter, and contains a dubious, handwritten date reference. (D.I. 155, ex 8) While the document appears to describe the essential features of the `939 patent, it is not "independent" and fails to rise to the level of clear and convincing evidence.
Because plaintiff has failed to establish conception earlier than the `939 patent's priority date of December 21, 1997, the court finds that both the `939 patent and its `561 child patent have a priority date of December 21, 1997.
2. Anticipation
a. Standard
The standard of proof to establish the invalidity of a patent is "clear and convincing evidence." Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1058 (Fed. Cir. 2004). In conjunction with this burden, the Federal Circuit has explained that,
[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting
Am. Hoist Derrick Co. v. Sowa Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984)).
An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. See Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed claims against the prior art. See id.
Proving a patent invalid by anticipation "requires that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation." Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (citations omitted). The Federal Circuit has stated that "[t]here must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention." Scripps Clinic Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). The elements of the prior art must be arranged or combined in the same manner as in the claim at issue, but the reference need not satisfy an ipsissimis verbis test. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. Mar. 26, 2009) (citations omitted). "In determining whether a patented invention is [explicitly] anticipated, the claims are read in the context of the patent specification in which they arise and in which the invention is described." Glaverbel Societe Anonyme v. Northlake Mktg. Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). The prosecution history and the prior art may be consulted "[i]f needed to impart clarity or avoid ambiguity" in ascertaining whether the invention is novel or was previously known in the art. Id. (internal citations omitted).
b. The `848 patent
Defendants argue that U.S. Patent No. 5,864,848 ("the `848 patent") anticipates all asserted claims of the `939 and `561 patents. The `848 patent was filed on January 31, 1997; accordingly, it is prior art to the `939 and `561 patents under 35 U.S.C. § 102(g)(2). Generally, the `848 patent discloses a "system for ascertaining a computer
Plaintiff argues that the `848 patent is not prior art because plaintiff can swear behind its filing date, and because it is not analogous art. Plaintiff cannot swear behind the filing date of the `848 patent for the reasons already explained in this opinion. In addition, plaintiff's expert has not explained why the `848 patent is not analogous. He merely states that it is a "completely different technology, addressed to an entirely different set of problems, than [] what is claimed by the patents-in-suit." (D.I. 173, ex, 24 at 8) It is well established that conclusory expert declarations without supporting facts do not raise a genuine issue of material fact. Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999).
user's goals and automatically extracting untagged data from one or more source objects and applying the data to one or more target objects." (`848 patent, abstract) The `848 patent describes a preferred embodiment in the form of an autoscheduler that extracts schedule information from emails, and applies it to a user's electronic calendar files. (`848 patent, col. 5:43-47) The autoscheduler begins by receiving the email in the form of a free-text (unstructured) source file. ( Id., fig. 7) It then extracts schedule related information from the e-mail and presents it to the user to modify or complete. ( Id.) The results are saved in a target file. ( Id.) The `848 patent also contemplates extraction of information from other forms of free-text files for storage in a database. ( Id., col. 3:41) The examiner did not consider the `848 patent during examination of the `939 and `561 patents.
Plaintiff's sole argument in its brief against anticipation by the `848 patent is that the patent "lacks the `user' required by each claim of the patents in suit as well as multiple other claimed features." (D.I. 172 at 20) Plaintiff's rebuttal consists of a single sentence directing the court to the declaration of plaintiff's expert, Dr. Michael D. Siegel ("Siegel"). ( Id.) (citing D.I. 173, ex. 24 at 8-10)
Plaintiff claims that defendants' arguments relating to the user in the `848 patent have been substantially rejected by the United States Patent and Trademark Office ("PTO") during inter-partes reexamination proceedings. (D.I. 172 at 5) However, "case law consistently provides that a court is never bound by an examiner's finding in an [inter partes] patent [] proceeding." Pfizer, Inc. v. Apotex, Inc., 480 F. 3d 1348, 1359 (Fed. Cir 2007).
The `848 patent provides that the "user" in that system is the individual that verifies the extracted information from the email. (`848 patent, col. 19:11-24) (stating that the user "complete[s] and/or correct[s] the target data fields of the application-specific template") In his declaration, Siegel states that the `848 patent cannot anticipate because the "user" of the patents in suit must be the one who both authors the data that is parsed by the system and verifies the accuracy of the extracted strings. (D.I. 173, ex. 24 at 9) ("[The `848 patent] does not include the "source data stream" of the patents in suit because the "source object" cannot "originate from" the claimed "user," as required. (D.I. 173, ex. 24 at 9) That is,
Siegel does not argue that a source object does not exist.
[the `848 patent] lacks the claimed "user" of the patents in suit from whom the "source data stream" "originat[ed]," or by whom it was "generat[ed]," as required. If the person who "generat[ed]" the email message — in [the `848 patent] — were the email sender, there would be no need to ascertain his or her own "predefined" goal or carry out the
additional steps described by the reference.
(D.I. 173, ex. 24 at 8)
Siegel's construction of "user" contradicts language in the specifications of both patents in suit providing that the user is "typically, the author of the source document/file." (`939 patent, col. 1:46-47; `561 patent, col. 1:52-53) (emphasis added) According to the specifications of the patents in suit, then, the "user" may be, but does not have to be, the author the source document. The "user" is only required to be the person who verifies the accuracy of the strings extracted from said document. (`939 patent, col. 5:48-64; `561 patent, col. 6:8-24)
The court next addresses whether the `848 patent teaches a "plurality" of users as required by the claims of the `939 patent. As described above, the "user" of the patents in suit verifies the extracted data string. (`939 patent, col. 5:48-64; `561 patent, col. 6:8-24) However, in contrast to the `561 patent, the claims of the `939 patent require a "plurality" of users. (`939 patent, col. 6:40-8:15)
In contrast to the `939 patent, the claims of the `561 patent expressly contemplate "one or more users." (`561 patent, col. 8:45-11:19) Because the `848 patent teaches one user, the claims of the `561 patent are anticipated.
Siegel briefly argues that the `848 patent lacks disclosure of a "plurality" of users (or "job applicants)." (D.I. 173, ex. 24 at 9) The Federal Circuit has held that "`plurality,' when used in a claim, refers to two or more items, absent some indication to the contrary." Dayco Prods. v. Total Containment, Inc., 285 F.3d 1317, 1328 (Fed. Cir. 2001). In support of their motion, defendants do not point to specific evidence demonstrating the presence of two or more users in the `848 patent disclosure. Defendants' own citation demonstrates that the inventors of the `848 patent used "the user" throughout the specification. (D.I. 154 at 18) (citing `848 patent, col. 17:54-60) This lexicography is present, for example, in the background of the invention, providing that the application programs run on the "computer system 8," an individual PC rather than a network of multiple computers. (`848 patent, col. 8:27-40) Defendants have not provided clear and convincing evidence of anticipation of the `939 patent in this regard.
(`848 patent, fig. 1; col. 6:25-29)
The court notes at this juncture that plaintiff (through Siegel's expert opinion) does not provide additional non-anticipation positions with respect to the majority of the asserted claims of the `561 patent. Granting summary judgment in defendants' favor, however, would invalidate a (presumably valid) patent without having elicited a factual determination regarding the weight of defendants' evidence. Defendants' anticipation analysis primarily incorporates by reference the opinion of Kaliski, and addresses perceived error in Siegel's analysis. (D.I. 154 at 17-20) Ultimately, irrespective of plaintiff's evidence, a reasonable jury could determine that defendants' evidence of invalidity does not rise to the level of clear and convincing. There are many reasons this may be so, for example, Kaliski may be perceived as less than entirely credible. Invalidation of the patents, notwithstanding plaintiff's failure to present a sufficient rebuttal case at summary judgment, essentially supplants the court for the finder of fact in these critical areas. Moreover, although Siegel's testimony is limited to subjects addressed in his report (or otherwise vetted through expert discovery), the court is unaware of what (if any) additional factual evidence plaintiff may possess that may be used, for example, to cross-examine Kaliski at trial.
Siegel does opine that the `848 patent does not disclose the "supplemental inquiry form" feature of claim 6, 14 and 20. The rejected construction of "user" forms the basis for the majority of Siegel's three-page opinion. (D.I. 173, ex. 24 at 8-10)
The court appreciates that, under the new local rules for page limitations, parties are not at liberty to devote as many pages to their claims as they wish. The court does not suggest that quantity supplants quality, but simply highlights the few pages devoted to the parties' arguments in support for its observation that the evidence introduced at trial (by both parties) may vary greatly from that presented on summary judgment.
It is the court's conclusion that the present conundrum is best resolved by the denial of summary judgment of invalidity with respect to both the `939 and the `561 patents, i.e., putting defendants to their proof. Should plaintiff fail to present evidence sufficient to rebut defendants' proffered evidence at trial, however, the court will enter judgment as a matter of law prior to sending the matter to the jury.
c. The IntelliMatch system
Defendants move for summary judgment that the IntelliMatch system anticipates all of the claims of the patents in suit under 35 USC §§ 102(a) and 102(g)(2). (D.I. 154 at 9) There are two areas of contention between the parties regarding the system: (1) its date of conception and reduction to practice; and (2) whether it meets all of the claims of the patents in suit.
(1) Date of conception and reduction to practice
In attempting to establish the dates of conception and reduction to practice, defendants rely on the testimony of Dr. Charanjit Pangali ("Pangali"), the former CEO of Intellimatch, Ranjit Padmanabhan ("Padmanabhan"), an engineer hired to build IntelliMatch's web-based resume extraction process, and Jeffrey Hunter ("Hunter"), director of IntelliMatch's product marketing. (D.I. 154 at 10)
While all three witnesses fail to remember the exact dates of conception and reduction to practice, their testimony is consistent that, at the very least, the IntelliMatch system was built no later than April 1997. Pangali testified that IntelliMatch had actually built a resume extraction system that permitted user self-correction by September 1996. (D.I. 173, ex. 6 at 21:7-8) Padmanabhan testified that they had built the IntelliMatch system by the end of 1996 or early 1997, and that he worked over Christmas to get the project done. (D.I. 173, ex. 7 at 13:3-20) Hunter testified that he was "fairly confident" that the IntelliMatch product was developed in November-December of 1996, and he was sure that it was being used by customers in April 1997. (D.I. 173, ex. 8 at 14:5-15:1)
Plaintiff argues that the court should exclude the testimony of Pangali because he is testifying about what happened after he left IntelliMatch. (D.I. 172 at 13) However, Pangali was still involved with the IntelliMatch product while working for one of its distributors during the relevant time frame, and he testified that the product was developed prior to his departure. (D.I. 173, ex. 6 at 27:17-28:20)
Defendants also rely on several documents in support of their argument. Pangali produced the source code of the IntelliMatch product that bears an automatic time stamp in the general range of January to May 1997. (D.I. 155, ex. 14) Defendants also produced an archived version of IntelliMatch's home page from May 14, 1997 which advertizes a "2-Minute Resume." Mr. Hunter confirmed that it was consistent with IntelliMatch's resume extraction system at that time. (D.I. 173, ex. 8 at 28:18-29:17)
Plaintiff argues that the witnesses' testimony, combined with defendants' documentation, is not clear and convincing evidence of conception and reduction to practice. Beyond objecting to the inconsistency in the witnesses' recollection of the date of creation of the IntelliMatch system, plaintiff also argues that Pangali is biased in favor of Taleo due to animosity he harbors against plaintiff. (D.I. 172 at 10) Specifically, Pangali is alleged to have described members of a company that was acquired by plaintiff as being "not honorable people" (D.I. 173, ex. 6 at 29:13-19), and that plaintiff "lifted a lot of [IntelliMatch's] stuff and copied it." ( Id. at 33:21-25) Additionally, plaintiff claims that Padmanabhan and Hunter's testimony is called into question because of the fact that they both worked for a predecessor of Taleo after leaving IntelliMatch. (D.I. 173, ex. 7 at 67:14-68:1, ex. 8 at 48:12-15)
A genuine issue of material fact exists as to the IntelliMatch system's date of conception, reduction to practice, and functionality. Defendants' witnesses' credibility must be judged by the trier of fact. Moreover, while the IntelliMatch source code files are admissible, a reasonable jury could find them unpersuasive due to the sequence of events that led to their possession by Pengali. Because a genuine issue of material fact exists regarding the IntelliMatch system's conception, reduction to practice, and functionality, the court need not address its anticipation of the patents in suit.
Plaintiff argues that the source files which Pangali references are inadmissible because he did not create the files about which he testifies, cannot authenticate them or verify their chain of custody. (D. I. 172 at 14)
c. Hotjobs' "ResLex" product
Defendants move for summary judgment that ResLex anticipates all of the claims of the patents in suit under 35 USC §§ 102(a) and 102(g)(2). (D.I. 154 at 15) There are two areas of contention between the parties regarding Reslex: (1) its date of conception and redaction to practice; and (2) whether it meets all of the claims of the patents in suit.
(1) Date of conception and reduction to practice
In attempting to establish the dates of conception and reduction to practice, defendants rely on timestarnped source code files, as well as the testimony of Christopher Zimm ("Zimm"), the engineer who developed Reslex. (D.I. 154 at 15) Defendants also rely on Hotjobs' trademark application for "ResLex" that shows a first public use of October 7, 1997. (D.I. 154 at 16)
Defendants' evidence is insufficient to demonstrate ResLex's conception and reduction to practice before the priority date of the `939 patent as a matter of law. As an inventor, Zimm's testimony requires independent corroboration. Procter Gamble Co. V. Teva Pharm. USA, Inc., 556 F.3d 989, 999 (Fed. Cir. 2009) His timestamped source code files fail to provide sufficient independent corroboration. While the source code undoubtably shows the functionality of the ResLex product, it is akin to an unwitnessed inventor's notebook. It is evidence, but it is not independent evidence. Brown v. Baracid, 276 F.3d 1327, 1335 (Fed. Cir 2002) (finding that "an inventor's own unwitnessed documentation does not [independently] corroborate inventor's testimony about [conception]."). The source code files themselves were written by Zimm. In addition, timestamps can be easily modified, even accidently. A user can modify the time stamp on a source code file by simply changing the system time on a development computer and making a trivial modification to the file. (D.I. 173, ex. 25 at 3) Indeed, numerous applications exist to change the timestamp on a file regardless of the time on a computer's system clock. Even if the source code qualified as independent evidence, issues with the timestamp prevent it from satisfying the clear and convincing standard necessary to prove prior invention. Compare Netscape Commc'ns Corp. v. ValueClick, Inc., 707 F. Supp. 2d 640, 652 (E.D. Va. 2010) (finding that timestamped source code and an expert report was sufficient to prevent summary judgment of no anticipation because a reasonable jury could find by clear and convincing evidence that the patent in suit was anticipated by said source code).
For example, the computer system clock gets the date and time from the Real Time Clock chip on the motherboard. This real time clock chip is powered by a battery to ensure that it maintains time even when the system is off. If the battery were to run out, the system time would no longer be accurate, and all timestamps based on the system clock would be erroneous. (D.I. 173, ex. 25 at 2-4) See also HowStuffWorks, Why does my computer need a battery?, http://computer.howstuffworks.com/question319.htm (last visited November 10, 2010).
(D.I. 173, ex. 25 at 4) The court notes that a Google search for "change a file's timestamp" returns multiple applications for changing a file's timestamp ranging from "Timestamp" to "SKTimeStamp."
Hotjobs' trademark application also fails to corroborate Zimm's testimony. The application merely states that the mark was in public use by October 7, 1997. (D.I. 155, ex. 31) It says nothing about whether or not there was a developed product associated with the mark at the time of use, or what the exact functionality of that product was. While the application does contain a screen shot that describes a product that could very well meet all of the claims of the patents in suit, the screen shot is undated, and could have been taken the day of filing: July 1, 2008. ( Id.) For all intents and purposes, a functional version of ResLex may have existed on October 7, 1997, but failed to meet any of the claims of the patents in suit. Or, an equally likely scenario is that "ResLex" was used in commerce at that time as an advertising tool to market a product that was still in development. The trademark application is evidence that the ResLex product existed as claimed on July 1, 2008, but not before.
Because defendants cannot establish that ResLex was conceived or reduced to practice before the priority date of the `939 patent, the court need not address anticipation.
2. Obviousness
a. Standard
"A patent may not be obtained . . . if 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." 35 U.S.C. § 103(a). Obviousness is a question of law, which depends on several underlying factual inquiries.
Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). "Because patents are presumed to be valid, see
35 U.S.C. § 282, an alleged infringer seeking to invalidate a
patent on obviousness grounds must establish its obviousness by facts supported by clear and convincing evidence."
Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 968 (Fed. Cir. 2006) (citation omitted).
"[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 550 U.S. at 418. Likewise, a defendant asserting obviousness in view of a combination of references has the burden to show, by clear and convincing evidence, that a person of ordinary skill in the relevant field had a reason to combine the elements in the manner claimed. Id. at 418-19. The Supreme Court has emphasized the need for courts to value "common sense" over "rigid preventative rules" in determining whether a motivation to combine existed. Id. at 419-20. "[A]ny 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.
In addition to showing that a person of ordinary skill in the art would have had reason to attempt to make the composition or device, or carry out the claimed process, a defendant must also demonstrate, by clear and convincing evidence, that "such a person would have had a reasonable expectation of success in doing so." PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007).
b. Discussion
Obviousness was not the focus of either party's briefing. Defendants dedicated the last page of their opening brief to argue that, "to the extent that the court finds any limitations not disclosed in the `848 patent, the doctrine of near-simultaneous invention shows that those limitations would have been obvious." (D.I. 154 at 20) Defendants never cited an expert report, nor provided any other indicia of obviousness.
Plaintiff's discussion is just as sparse. It consists of a single paragraph on the last page of its brief. (D.I. 172 at 20) Plaintiff also fails to cite an expert report, and only asserts that "defendants offer none of the requisite factual basis to support an obviousness argument." ( Id.)
The court cannot grant summary judgement on such a record. "Because patents are presumed to be valid . . . an alleged infringer seeking to invalidate a patent on obviousness grounds must establish obviousness by facts supported by clear and convincing evidence." Kao Corp. v. Unilever U.S., Inc., 441 F. 3d 963, 968 (Fed. Cir. 2006). Defendants have failed to meet their burden, and summary judgment is denied.
Plaintiff has filed a motion for submission of supplemental authority, arguing that emails produced by defendants after the close of discovery affect plaintiff's infringement theory and obviousness defense. (D.I. 203) After reviewing the motion and accompanying exhibits, the court denies the motion. The emails provide no additional support for plaintiffs' infringement argument. More importantly, plaintiff misstates the emails' substance in relation to its obviousness defense. The technology that the emails discuss is not the technology of the patents in suit, but is instead the technology that covers the underlying parsing engine that is run as one of the steps of the patents. This is the engine that extracts target data strings from the source data stream prior to presentation to the user. Exemplifying this distinction is defendants' statement that "[a third party] found better results when parsing these resumes using [plaintiff's] technology compared to [defendants']. This isn't just limited to phone numbers/personal information. Education and Experience did parse better (i.e. more accurate and more of them parsed)." ( Id., ex. 1 at 1) Had the emails discussed a need to have the user verify information extracted from the parser, such a statement would have been relevant to the obviousness of the patents. However, these emails talk about a different technology, the technology for identifying the target strings in a resume, and are thus irrelevant to plaintiff's obviousness defense.
ORDER
At Wilmington this 18th day of November 2010, consistent with the memorandum opinion issued this same date;
IT IS ORDERED that:
1. Taleo's motion for summary judgment of patent invalidity (D.I. 153) is denied.
2. Kenexa's motion for partial summary judgment of infringement of the patents in suit (D.I. 156) is granted in part, to wit:
a. The Vurv products infringe all asserted claims of the patents in suit.
b. The Taleo products infringe all asserted claims except claims 4 and 17 of the `949 patent, and claim 18 of the `561 patent.
MEMORANDUM ORDER
At Wilmington this 4th day of January, 2011, having considered plaintiff's motion for reconsideration and the papers submitted in connection therewith;
IT IS ORDERED that said motion (D.I. 216) is denied, for the reasons that follow:
1. Plaintiff has moved for reconsideration of the court's November 11, 2010 order construing the term "user" as defined in U.S. Patent Nos. 5,999,939 ("the `949 patent"), and 6,996,561 ("the `561 patent"). ( Id. at 1) In the order, the court also found that plaintiff had failed to produce admissible evidence of a prior date of conception in response to defendants' production of invalidating prior art. Kenexa Brassring Inc, v. Taleo Corp., Civ. No. 07-521, ___ F. Supp. 2d ___, 2010 WL 4668999 at *14-15 (D. Del. Nov. 18, 2010). Plaintiff argues that the court erred by improperly shifting the burden to plaintiff to show prior invention by a clear and convincing standard, and by construing a term that was not actually in contention. (D.I. 216 at 1)
Plaintiff does not state whether it believes the court shifted the burden of production or persuasion.
2. The purpose of a motion for reargument or reconsideration is to correct manifest errors of law or fact or to present newly discovered evidence. Max's Seafood Cafe ex rel. Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). Accordingly, a court may alter or amend its judgment only if the movant demonstrates at least one of the following: (1) a change in the controlling law; (2) availability of new evidence not available when the court issued its order; or (3) a need to correct a clear error of law or fact or to prevent manifest injustice. See Id.; see also, Schering Corp. v. Amgen, Inc., 25 F. Supp. 2d 293, 295 (D. Del. 1998).
3. A motion for reargument is not properly premised on a request that a court rethink a decision already made. Glendon Energy Co. v. Borough of Glendon, 836 F. Supp. 1109, 1122 (E.D. Pa. 1993). Motions for reargument may not be used "to argue new facts or issues that inexcusably were not presented to the court in the matter previously decided." Brambles USA, Inc., v. Blocker, 735 F. Supp. 1239, 1240 (D. Del. 1990). Reargument, however, may be appropriate where "the court has patently misunderstood a party, or has made a decision outside the adversarial issues presented to the court by the parties, or has made an error not of reasoning but of apprehension." Id. at 1241.
4. Considering this authority in light of plaintiff's arguments, the court finds that the order was properly decided. Plaintiff cites Innovative Scuba Concepts, Inc. v. Feder Indus., Inc., 26 F.3d 1112, 1115 (Fed. Cir. 1996), in support of its argument that the court improperly shifted the burden of proving prior invention to plaintiff. (D.I. 216 at 2) While plaintiff may be correct that it is improper for the court to shift the burden of persuasion to the plaintiff, the court may shift the burden of production once defendant has made a prima facie case of invalidity by producing prior art that antedates the patents' priority date. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). In its order, the court found that plaintiff failed to produce evidence that was sufficient to support an earlier priority date as a matter of law. Kenexa Brassring Inc, 2010 WL 4668999 at *14-15. Although the standard may have been poorly articulated, the outcome is correct as plaintiff failed to meet its burden of production. The evidence produced by plaintiff either failed to corroborate the inventors' testimony, or it was not independent, as required by law. Id.
5. Plaintiff next argues that the court erred in construing the term "user" because the term was not actually in dispute. (D.I. 216 at 3) In addition, plaintiff contends that its construction of "user" is mandated by the USPTO's reexamination of the `939 patent. ( Id.) Both arguments are unpersuasive. The court has the power to construe claims sua sponte if need be. DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1321-28 (Fed. Cir. 2001). Although the parties did not directly propose a construction of the term "user," the term was at issue because of the disparate meanings given to it by parties in their briefs. Plaintiff claimed that the "user" was the individual who created the source data stream. (D.I. 172 at 5) In contrast, defendants reasoned that the user was anyone who used the program, be it the person who created the source data stream, or who verified the extracted data strings if they were separate individuals. (D.I. 154 at 9, 17-18) The court reviewed the parties' briefs, as well as plaintiff's expert report, and construed the term out of necessity. The court was not bound by the patent examiner's construction of the term because, as the court stated in its order, "case law consistently provides that a court is never bound by an examiner's finding in an [inter partes] patent [] proceeding." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir. 2007).