MEMORANDUM OPINIONSue L. Robinson, District Judge
Brian E. Farnan, Esquire, Michael J. Farnan, Esquire, and Rosemary Jean Piergiovanni, Esquire of Farnan, LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of Counsel: John M. Desmarais, Esquire, Alan S. Kellman, Esquire, Justin P.D. Wilcox, Esquire, John C. Spaccarotella, Esquire, Jason Berrebi, Esquire, Paul A. Bondor, Esquire, Jonas R. McDavit, Esquire, Tamir Packin, Esquire, Jeffery Seddon, Esquire, and Edward B. Terchunian, Esquire of Desmarais LLP.
Jack B. Blumenfeld, Esquire and Julia Heaney, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendants. Of Counsel: Nicholas M. Cannella, Esquire, Michael P. Sandonato, Esquire, Michael P. McGraw, Esquire, Dillon J. Murphy, Esquire, and Peter D. Shapiro, Esquire of Fitzpatrick, Cella, Harper & Scinto.
MEMORANDUM OPINION
Sue L. Robinson, District Judge
I. INTRODUCTION
On September 9, 2011, plaintiffs Intellectual Ventures I, LLC (“IV I”) and Intellectual Ventures II, LLC (“IV II”) (collectively “IV”) filed suit in this district against defendants Canon Inc., Canon U.S.A., Inc. (collectively “Canon”), Olympus Corporation, Olympus Corporation of the Americas, Olympus America Inc., and Olympus Imaging America Inc. (collectively “Olympus”), alleging infringement of nine patents: U.S. Patent Nos. 5,754,348 (“the '348 patent”), 6,121,960 (“the '960 patent”), 6,221,686 (“the '686 patent”), 6,023,081 (“the '081 patent”), 6,979,587 (“the '587 patent”), 5,844,264 (“the '264 patent”), 6,181,836 (“the '836 patent”), 6,412,953 (“the '953 patent”), and 7,733,368 (“the '368 patent”). (D.l.1) All claims and counterclaims asserted between IV and Olympus were dismissed with prejudice on December 11, 2012. (D.l.78) IV voluntarily withdrew its claims as to the '836 and '368 patents (D.l.81), and filed a second amended complaint against Canon on January 7, 2013 adding U.S. Patent No. 7,365,298 (“the '298 patent”) (D.l.89). Six patents (“the patents-in-suit”) remain asserted in the present case.
On October 30, 2013, IV filed a motion for summary judgment of infringement and nonobviousness (D.l.163), and Canon filed a motion for summary judgment of non-infringement (D.l.168) and invalidity (D.l.167). In a memorandum opinion and order dated April 10, 2014, the court resolved several summary judgment motions, granting, inter alia, IV's motion for summary judgment of infringement of claims 14 and 16 of the '686 patent and denying in part Canon's motion for summary judgment of non-infringement of claim 3 of the '081 patent. (D.l. 252; D.l. 253) A five-day jury trial was held on April 28–May 2, 2014 on infringement and validity of claim 3 of the '081 patent, and validity of claims 14 and 16 of the '686 patent (“trial 1”). On May 2, 2014, the jury returned a verdict that claim 3 of the '081 patent was valid and infringed and that claims 14 and 16 of the '686 patent were valid. A second six-day jury trial was held on May 5–12, 2014 on the infringement and validity of claims 1–3 of the '348 patent and claims 19 and 20 of the '960 patent (“trial 2”). On May 12, 2014, the jury returned a verdict that claims 1–3 of the '348 patent and claims 19 and 20 of the '960 patent were valid but not infringed. Presently before the court are the following motions: (1) Canon's motion for judgment as a matter of law (“JMOL”) regarding the '081 and '686 patents or, in the alternative, for a new trial (D.l.312); (2) Canon's motion for JMOL regarding the '348 and '960 patents or, in the alternative, for a new trial (D.l.315); and (3) IV's motion for JMOL regarding the '960 and '348 patents or, in the alternative, for a new trial (D.l. 319). The court has jurisdiction pursuant to 28 U.S.C. § 1338.
II. BACKGROUND
A. The Parties
IV I and II are limited liability companies organized and existing under the laws of the State of Delaware, with their principal place of business in Bellevue, Washington. (D.l. 1 at ¶¶ 1–2) IV I owns the '348 patent. (Id. at ¶¶ 15) IV II owns the '081, '960, '686, '587, and '298 patents. (Id. at ¶¶ 19, 21, 25, 29; D.l. 89 at ¶ 21)
Canon Inc. is a corporation organized and existing under the laws of Japan, with its principal place of business in Tokyo, Japan. (Id. at ¶ 3) Canon U.S.A., Inc. is a corporation organized and existing under the laws of New York, with its principal place of business in Lake Success, New York. (Id. at ¶ 4) It makes, manufactures, and/or sells the accused products. (Id. at ¶ 19)
B. The Technology
The '081, '686, '348 and '960 patents relate to a variety of technologies regarding the manufacture and use of digital cameras. The '081 and '686 patents relate to methods for making and configurations of semiconductor image sensors. The '348 patent relates to digital image magnification, and the '960 patent relates to displaying data on touch screens. The court discusses each patent in more detail infra.
III. STANDARDS
A. Renewed Motion for Judgment as a Matter of Law
123To prevail on a renewed motion for judgment as a matter of law following a
jury trial, the moving party “ ‘must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings.’ ” Pannu v. lolab Corp., 155 F.3d 1344, 1348 (Fed.Cir.1998) (quoting Perkin–Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)). “ ‘Substantial’ evidence is such relevant evidence from the record taken as a whole as might be acceptable by a reasonable mind as adequate to support the finding under review.” Perkin–Elmer Corp., 732 F.2d at 893. In assessing the sufficiency of the evidence, the court must give the non-moving party, “as [the] verdict winner, the benefit of all logical inferences that could be drawn from the evidence presented, resolve all conflicts in the evidence in his favor, and in general, view the record in the light most favorable to him.” Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir.1991); Perkin–Elmer Corp., 732 F.2d at 893. The court may not determine the credibility of the witnesses nor “substitute its choice for that of the jury between conflicting elements of the evidence.” Perkin–Elmer Corp., 732 F.2d at 893. In sum, the court must determine whether the evidence reasonably supports the jury's verdict. See Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 (Fed.Cir.1998).
B. Motion for a New Trial
456Federal Rule of Civil Procedure 59(a) provides, in pertinent part:
A new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.
Fed.R.Civ.P. 59(a). The decision to grant or deny a new trial is within the sound discretion of the trial court and, unlike the standard for determining judgment as a matter of law, the court need not view the evidence in the light most favorable to the verdict winner. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980); Olefins Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282 (3d Cir.1993); LifeScan Inc. v. Home Diagnostics, Inc., 103 F.Supp.2d 345, 350 (D.Del.2000) (citations omitted); see also 9A Wright & Miller, Federal Practice and Procedure § 2531 (2d ed. 1994) (“On a motion for new trial the court may consider the credibility of witnesses and the weight of the evidence.”). Among the most common reasons for granting a new trial are: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly-discovered evidence exists that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. See Zarow–Smith v. N.J. Transit Rail Operations, 953 F.Supp. 581, 584–85 (D.N.J.1997) (citations omitted). The court must proceed cautiously, mindful that it should not simply substitute its own judgment of the facts and the credibility of the witnesses for those of the jury. Rather, the court should grant a new trial on the basis that the verdict was against the weight of the evidence only where a miscarriage of justice would result if the verdict were to stand. See Williamson, 926 F.2d at 1352; EEOC v. Del. Dep't of Health & Soc. Servs., 865 F.2d 1408, 1413 (3d Cir.1989).
IV. DISCUSSION
A. Standards
1. Infringement
78910A patent is infringed when a person “without authority makes, uses or
sells any patented invention, within the United States ... during the term of the patent.” 35 U.S.C. § 271(a). To prove direct infringement, the patentee must establish, by a preponderance of the evidence, that one or more claims of the patent read on the accused device literally or under the doctrine of equivalents. See Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed.Cir.2001). A two-step analysis is employed in making an infringement determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995). First, the court must construe the asserted claims to ascertain their meaning and scope. See id. Construction of the claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed.Cir.1998). The trier of fact must then compare the properly construed claims with the accused infringing product. See Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998).
11121314“Direct infringement requires a party to perform each and every step or element of a claimed method or product.” Exergen Corp. v. Wal–Mart Stores, Inc., 575 F.3d 1312, 1320 (Fed.Cir.2009) (internal quotation marks omitted). “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.Cir.2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989). However, “[o]ne may infringe an independent claim and not infringe a claim dependent on that claim.” Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed.Cir.2007) (quoting Wahpeton Canvas, 870 F.2d at 1552) (internal quotations omitted). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. See SmithKIine Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted).
151617To establish indirect infringement, a patent owner has available two theories: active inducement of infringement and contributory infringement. See 35 U.S.C. § 271(b) & (c). To establish active inducement of infringement, a patent owner must show that an accused infringer “knew or should have known [their] actions would induce actual infringements.” DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed.Cir.2006). To establish contributory infringement, a patent owner must show that an accused infringer sells “a component of a patented machine ... knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use.” Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1061 (Fed.Cir.2004) (quoting 35 U.S.C. § 271(c)). Liability under either theory, however, depends on the patent owner having first shown direct infringement. Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed.Cir.1993).
2. Invalidity
a. Anticipation
Under 35 U.S.C. § 102(e),
a person shall be entitled to a patent unless an application for patent, published under section 122(b), by another filed in the United States
before the invention by the applicant for patent ... or a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.
181920A claim is anticipated only if each and every limitation as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed.Cir.1987). A single prior art reference may expressly anticipate a claim where the reference explicitly discloses each and every claim limitation. However, the prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be expressly anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed.Cir.1984). A single prior art reference also may anticipate a claim where one of ordinary skill in the art would have understood each and every claim limitation to have been disclosed inherently in the reference. Cont'l Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). The Federal Circuit has explained that an inherent limitation is one that is necessarily present and not one that may be established by probabilities or possibilities. Id. That is, “the mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. The Federal Circuit also has observed that “inherency operates to anticipate entire inventions as well as single limitations within an invention.” Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1380 (Fed.Cir.2003). Moreover, recognition of an inherent limitation by a person of ordinary skill in the art before the critical date is not required to establish inherent anticipation. Id. at 1377.
2122Even if the prior art discloses each and every limitation set forth in a claim, such disclosure will not suffice under 25 U.S.C. § 102 if it is not enabling. In re Borst, 345 F.2d 851, 855 (C.C.P.A.1965). “Long ago our predecessor court recognized that a non-enabled disclosure cannot be anticipatory (because it is not truly prior art) if that disclosure fails to ‘enable one of skill in the art to reduce the disclosed invention to practice.’ ” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed.Cir.2003) (citations omitted). The patentee bears the burden to show that the prior art reference is not enabled and, therefore, disqualified as relevant prior art for an anticipation inquiry. Id. at 1355.
2324An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. Key Pharm. v. Hercon Lab. Corp., 161 F.3d 709, 714 (Fed.Cir.1998). Second, the finder of fact must compare the construed claims against the prior art to determine whether the prior art discloses the claimed invention. Id. The burden of proof rests on the party asserting invalidity and can be met only by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011) (“We consider whether
[35 U.S.C.] § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.”).
b. Obviousness
25“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 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, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)).
262728“[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, 127 S.Ct. 1727. Likewise, a defendant asserting obviousness in view of a combination of references has the burden to show 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, 127 S.Ct. 1727. 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, 127 S.Ct. 1727. “[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, 127 S.Ct. 1727. 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 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).
A combination of prior art elements may have been “obvious to try” where there existed “a design need or market pressure to solve a problem and there [were] a finite number of identified, predictable solutions” to it, and the pursuit of the “known options within [a person of ordinary skill in the art's] technical grasp” leads to the anticipated success. Id. at 421, 127 S.Ct. 1727. In this circumstance, “the fact that a combination was obvious to try might show that it was obvious under § 103.” Id.
29A fact finder is required to consider secondary considerations, or objective indicia of nonobviousness, before reaching an obviousness determination, as a “check against hindsight bias.” See In re Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed.Cir.2012). “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.” Graham, 383 U.S. at 17–18, 86 S.Ct. 684.
30“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). 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)).
B. Canon's Renewed JMOL Motion (Trial 1)
1. Infringement of the '081 Patent
31The '081 patent, titled “Semiconductor Image Sensor,” was filed on November 14, 1997 and issued on February 8, 2000. The '081 patent is the parent of the '686 patent and is directed to a specific configuration of an image sensor that includes a “silicide layer.” Specifically, the invention seeks to avoid formation of the silicide layer on the light-sensing photodiode. ('081 patent, cols. 1:50–51, 4:34–35) The '081 patent explains that silicide is used as a low-resistance contact material for the transistor transfer gates. (Id. at col. 4:36–38) Independent claim 3, the only asserted claim, is reproduced below.
3. An image sensor comprising:
a substrate;
a pinned photodiode on the substrate;
a dielectric layer overlying the pinned photodiode; and
a silicide layer on a portion of the image sensor wherein an area overlying the pinned photodiode is devoid of the silicide layer.
(Id. at col. 6:6–15)
a. Canon's evidence
At trial, IV asserted that the following products infringe claim 3 of the '081 patent: Canon's EOS IDs Mark III cameras; EOS 5D Mark II cameras; and several models of Canon's Vixia camcorders (“the accused products”). The jury was asked to evaluate products containing image sensors manufactured with three different processes: (1) Canon EOS 1DS Mark III camera LC1060 image sensors manufactured with the L34 process; (2) Canon
EOS 5D Mark II camera LC1100 image sensors manufactured with the L60 process; and (3) Canon Vixia Camcorder LD1050 image sensors manufactured with the 010 process. (D.l. 290 at 1; PTX 1053–1055) Canon argues that IV failed to demonstrate that any of the accused products contain a “silicide layer” as required by claim 3. IV's expert, Dr. Martin Afromowitz (“Dr. Afromowitz”), admitted that he “never [directly] tested any of Canon's products.” (D.l. 353 at 351:10–13) Rather, he based his infringement opinion on the fact that titanium is deposited in the Canon processes and “[w]herever the titanium touches the bare silicon after an annealing step, you will get titanium silicide.” (D.l. 353 at 333:10–13) Using his knowledge of this “known chemical reaction,” Dr. Afromowitz opined that “the silicide is formed over a portion of the image sensor ... but it's not formed over the photodiode.” (D.l. 355 at 731:8–11)
Accompanying Dr. Afromowitz's testimony were various demonstratives depicting images from Canon process manuals with the silicide layers drawn as red rectangles, which Dr. Afromowitz admitted had a certain thickness and width. (D.l. 353 at 353:10–23; D.l. 314, ex. C at PTX 1074; see also PTX 1075, 1088, 1102) On cross-examination, Dr. Afromowitz testified that he did not calculate the thickness or the width of the silicide layer because “it wasn't germane to the questions that I was trying to answer.” (D.l. 353 at 352:18–353:4) Rather, Dr. Afromowitz speculated that, at least for the O10 process, one could consult a report from third-party Techlnsights (“the Techlnsights report”) (PTX 0157) and “measure with a ruler what length is shown for 200 nanometers and you can estimate the thickness of the layer that way.” (Id. at 352:11–20)
Katsuhito Sakurai (“Sakurai”), a witness for Canon, testified that “there's no mention whatsoever of a step for forming silicide” in the L34 process design manual. (Id. at 404:5–9) Sakurai explained that Canon does “not attempt to form [silicide] because ... it doesn't contribute whatsoever to the functioning of our CMOS image sensors.” (Id. at 404:12–16) For that reason, Canon does not “test its image sensors for silicide.” (Id. at 404:19–23) Sakurai further testified that Canon does not attempt to form silicide in the L60 process (id. at 408:14–17) or the O10 process (id. at 409:3–410:2). Rather, titanium nitride “is formed as a barrier to prevent corrosion of silicon from tungsten gas when tungsten is later deposited” and titanium “is deposited to enhance the adhesiveness between the titanium nitride that was just deposited and the silicon.” (Id. at 408:1–9)
Finally, Canon alleges that Dr. Afromowitz was unable to adequately support his conclusion that the O10 process includes an annealing step. During trial, Dr. Afromowitz testified that “the O10 process guide [does not] specify the annealing step.” (Id. at 344:16–19) To cure this deficiency, Dr. Afromowitz consulted the Techlnsights report, which “showed [ ] more detail about this device and its fabrication and its ... geometry.” (Id. at 344:20–25) The Techlnsights report “identified that those dark regions are, in fact, silicide, titanium silicide, exactly where I would expect them to appear from Canon's description of their process, except they left out ... that annealing step, but this confirms that silicide is actually there.” (Id. at 347:2–11)
Regarding the reliability of the Techlnsights report, Dr. Afromowitz agreed that
he did not oversee the test in the Techlnsights report, nor did he know who conducted the test. (Id. at 355:15–23) He admitted that he has “no direct knowledge” as to whether the images in the report come from Vixia camcorders. (Id. at 356:12–14) Canon's expert, Professor Eric Fossum (“Dr. Fossum”), added that there is no evidence of how the people who wrote the Techlnsights report “figured out that that was [titanium silicide].” (D.l. 354 at 547:24–548:24) He testified that he “looked at other SEM pictures that included silicide and the color is different than those pictures.” (Id. at 548:7–11) Dr. Fossum opined that there is no “evidence that meets the normal scientific technical kind of test for that particular material that was ever shown in the evidence.” (Id. at 548:19–22)
b. IV's evidence
Both Dr. Afromowitz and Dr. Fossum agree that a “common method to make silicide” is where “one deposits a metal such as titanium on silicon and then anneals it.” (D.l. 354 at 604:11–3; D.l. 353 at 306:21–307:3; PTX 1051) For the L34 process, Dr. Afromowitz consulted Canon's L34 process manual (PTX 95), and testified that Canon deposits “300 angstroms of titanium” on a silicon wafer, which is then annealed at “600 degrees Centigrade” for 30 minutes. (D.l. 353 at 332:10–19; PTX 1074–1075) When the titanium reacts with silicon, titanium disilicide is formed. (D.l. 353 at 332:19–20) Dr. Afromowitz further testified that, based on the location of the titanium layers at “the bottom of the hole” (D.l. 355 at 728:20–729:5), “silicide is formed over a portion of the image sensor ... it is the width of the hole, but it's not formed over the photodiode.” (D.l. 355 at 731:8–11; see also D.l. 353 at 354:9–16; id. at 343:18–344:12) Dr. Afromowitz stated that the reaction occurs in the same manner in the L60 process. (D.l. 353 at 339:19–340:2; PTX 1088)
Dr. Fossum agreed that, according to the L34 process manual and “the other Canon manuals for the other products that are accused of infringement,” titanium nitrate is deposited “across everything” and then annealed, which is “the recognized way in the industry to form a silicide.” (D.l. 354 at 608:15–610:13) Dr. Albert Theuwissen (“Dr. Theuwissen”), another Canon expert, explained that Canon generally uses a production method wherein tungsten, titanium nitrite and titanium are deposited and then “you edge the whole thing back (indicating) uniformly ... so that only in the plugs over here (indicating), your percentage of [deposited products] is left.” (D.l. 353 at 265:20–266:8) Ultimately, silicide may be formed “as a kind of byproduct,” though he would not expect the titanium silicide to be present “in every plug.” (Id. at 266:9–267:11)
As for the O10 process, Dr. Afromowitz testified that titanium silicide is formed because there are “holes in the layer ... [s]o when titanium is deposited on the wafer, it ... goes down to the bottom” and “comes in contact with the silicon underneath.” (Id. at 344:5–8; PTX 1102) As discussed, supra, Dr. Afromowitz admitted that the O10 process manual did not disclose an annealing step, so he relied on information in the Techlnsights report purportedly demonstrating the presence of silicide. (See D.l. 353 at 344:16–19, 347:2–11; PTX 157 at IVCANON00242202) Regarding the reliability of the Techlnsights report, Dr. Afromowitz opined that Techlnsights is a “very reputable company” that has “been around for 25 years, they do this all the time.” (D.l. 353 at 356:2–3) Both Dr. Afromowitz and Dr. Theuwissen agreed that the images in the Techlnsights report came from the accused Vixia camcorders. (Id. at 356:9–11, 264:21– 23)
c. Analysis
32Canon's non-infringement position hinges on the argument that the court's “claim construction requires some dimensionality to be a ‘coating’ of silicide.” (D.l. 313 at 5) Canon recognizes that IV's testimony focused on establishing the presence of silicide, but argues that such evidence was inadequate without additional evidence regarding the dimensions of the silicide product. (Id. at 4) In its memorandum order, the court construed “a silicide layer on a portion of the image sensor wherein an area overlying the pinned photodiode is devoid of the silicide layer” as “[a] coating of silicide over a portion of the image sensor but not covering at least part of the photodiode.” (D.l. 252 at 11–12) The court reasoned that “a person of ordinary skill in the art would understand that when titanium metal is deposited on a silicon layer, the resulting silicide layer can be of varying thicknesses depending on the amount of material deposited and reaction conditions.” (Id. at 12) The court further construed “layer” as “[a] coating of material deposited or formed across a surface,” and added the qualification that “layer” need not be a “single thickness.” (Id. at 9) Other than stating that the silicide must not cover “at least part of the photodiode,” the court did not specify any additional restrictions regarding the thickness or width of the silicide layer. Accordingly, IV was not obligated to present evidence regarding the dimensions of the silicide layer other than to demonstrate that the silicide does not cover at least part of the photodiode.
As detailed, supra, IV presented evidence that in the L34 and L60 processes, titanium is deposited on the silicon substrate and then annealed, resulting in the formation of titanium disilicide. (See D.l. 353 at 332:10–20) IV satisfied its obligation to demonstrate that “an area overlying the pinned photodiode is devoid of the silicide layer” by presenting evidence that the silicide will form over a portion of the image sensor, but not over the photodiode. (D.l. 355 at 731:8–11) Canon countered with evidence that Canon does not “attempt to form [silicide],” nor does it “test its image sensors for silicide.” (D.l. 353 at 408:14–17, 404:19–23) Through Dr. Theuwissen, Canon presented evidence that the titanium disilicide might not be present in every plug. (Id. at 266:9–267:11) However, Canon was unable to dispute the possibility that silicide could form under the practiced conditions. (D.l. 354 at 608:15–610:13; D.l. 353 at 265:20–266:8)
Unlike the L34 and L60 processes, IV did not point to evidence of an annealing step in Canon's O10 process reports. (D.l.
353 at 344:16–19) However, IV did produce evidence in the form of the Techlnsights report that the Vixia image sensors contain silicide. (Id. at 344:16–19, 347:2–11) Canon had ample opportunity to question the credibility of the Techlnsights report through cross examination (id. at 355:15–23) and through its own expert testimony (D.l. 354 at 547:24–548:24). The court cannot act as an independent factfinder in selecting the most credible testimony.
33Insofar as Canon presented a question of fact regarding the formation of a silicide layer on the image sensor but not on the pinned photodiode, the court is charged with determining whether there is evidence upon which the jury could properly find for the non-moving party. Viewing the record in the light most favorable to IV, the court concludes that a jury could properly credit the testimony of IV's experts above that of Canon's experts and determine that a silicide layer is formed on the image sensor, but not on an area overlying the pinned photodiode using all three accused image sensors. The court denies Canon's motion for judgment as a matter of law with respect to infringement of claim 3 of the '081 patent. (D.l.312)
C. Canon's Renewed JMOL Motion (Trial 2)
1. Anticipation of the '348 Patent
3435The '348 patent, titled “Method for Context–Preserving Magnification of Digital Image Regions,” was filed on May 14, 1996 and issued on May 19, 1998. The '348 patent is directed to a method for digital image magnification in a graphical user interface that allows simultaneous viewing of the magnified image and its unmagnified context. ('348 patent, Abstract) The '348 patent addresses the problem faced by a user who “experiences difficulty discerning small details and would like to view a portion of the image in a magnified format.” (Id. at col. 1:12–14) Asserted claims 1–3 of the '348 patent are directed to magnifying a selected region of
a digital image in a graphical user interface, and superimposing the magnified image window—a “floating plane region”—over the selected region of the original image to preserve the context of the selected region. Independent claim 1 and dependent claims 2 and 3 are reproduced below.
1. A method of digital image magnification in a graphical user interface, the method comprising: selecting for magnification a selected region of an original image in the graphical user interface; and superimposing on the original image a floating plane region in the graphical user interface containing a magnified image of the selected region, wherein the floating plane region has an area larger than an area of the selected region and smaller than an area of the original image, such that the selected region of the original image is magnified and viewed while preserving the context of the selected region.
2. The method of claim 1 further comprising restoring a portion of the original image, wherein the portion restored was previously covered by a prior position of the floating plane region.
3. The method of claim 1 wherein the floating plane region is superimposed on the original image such that the floating plane region covers the selected region of the original image.
(Id. at col. 5:16–35)
At trial, Canon argued that claims 1–3 of the '348 patent are anticipated by: (1) Japanese Publication No. 4–142661, titled “Information Processing Apparatus” (“Sano”) (D.l. 317, ex. C (original)); D.l. 317, ex. D (English translation)); (2) a video by Bier et al. entitled “Toolglass and Magic Lenses: The See–Through Interface” (the “Toolglass video”) and accompanying article; (3) Kline & Glinert, “Improving GUI Accessibility for People with Low Vision,” CHI '95 (1995) (“Kline”) (D.l.317, ex. G); and (4) U.S. Patent No. 5,818,455, titled “Method and Apparatus for Operating on the Model Data Structure of an Image to Produce Human Perceptible Output Using a Viewing Operation Region Having Explicit Multiple Regions” (“Stone”) (D.l.317, ex. H).
a. Sano
i. Evidence
The sole dispute between the parties is whether Sano discloses the limitation of “digital image magnification.” (See D.l. 360 at 934:1–4) Canon's expert, Dr. Steven Feiner (“Dr. Feiner”), presented a methodical opinion to the jury, detailing how Sano allegedly anticipates each limitation of claims 1–3 of the '348 patent. (Id. at 712:10–726:2) With respect to the disclosure of “digital image magnification,” Dr. Feiner opined that Sano “shows digital image magnification, because in this case it happens to be magnifying pixels.” (Id. at 713:21–25) More specifically, Dr. Feiner opined that the magnified section in Sano is “taken from a bit image obtained in the usual mode to the bit image magnified under the magnification M.... So it magnified a representation that happens to be in the form of bits, pixels.” (Id. at 716:25–717:8, 716:3–5) For example, Dr. Feiner pointed to figure 2 as depicting “a piece of a digital image represented in terms of pixels, and it's going to be magnified in the larger area around the outside
of what Sano refers to as a pseudo loupe.” (Id. at 712:14–19)
IV's expert, Dr. Dan Schonfeld (“Dr. Schonfeld”), responded “that Sano does not disclose digital image magnification” because Sano “relates exclusively to documents and represents everything in terms of magnification resulting in characters, character strings, input and editing of characters, [and] cursors.” (Id. at 941:17–24) Dr. Schonfeld also noted that “the end result of magnification is a character SA ... [and] the cursor is displayed on the screen.” (Id. at 943:1–5) In other words, Sano is “referring to not [sic] pixels, it's referring to actual characters, either fonts or in a word processing program.” (Id. at 911:11–13) He explained that “[i]f you are doing digital image magnification, you don't have a cursor, you don't know what the underlying character is, you don't know if there's a character at all, you just have pixels and you have no idea what they represent when you are doing digital image magnification or digital image processing of any kind.” (Id. at 912:10–15) Functionally, “Sano is “representing characters in the form of ... pixels on the screen. Then you take the characters back to the computer program, replace them by other characters, regenerate the ... final bitmap and then you display it on the screen, so the magnification itself takes place, part of the computer program representing the character strings.” (Id. at 937:14–17)
Although Dr. Schonfeld opined that the “Sano patent is exclusively designed for text documents” (id. at 910:25–:911:1), he admitted that Sano “does not describe a character replacement system” in that it “does not talk about the magnification in any detail other than to say that the bitmap is enlarged and you have a new bitmap corresponding to characters.” (Id. at 943:7–11) He agreed that the video RAM in Sano contains a bitmap image “with the understanding that whenever you do magnification, whether it's of a data structure with a circle or a program, you have to begin with the bit image and the end result will always be a bit image, because that's the only thing that can be displayed on the screen.” (Id. at 947:13–23) Dr. Schonfeld characterized the central question as “whether you do it directly or whether you have to go back to the program and do manipulation of the program.” (Id. at 947:18–25)
ii. Analysis
and
activation is required. The jury was free to credit Dr. Schonfeld's interpretation over that of Dr. Feiner and conclude that Frank does not anticipate claims 19 and 20 of the '960 patent. Accordingly, the court denies Canon's renewed motion for judgment as a matter of law with respect to anticipation of claims 19 and 20 of the '960 patent by Frank. (D.l.315)
D. IV's Motion for a New Trial on Infringement (Trial 2)