# In the United States Court of Federal Claims

No. 10 -540 C

(E -Filed: December 13 , 2013)

)

Patents; Summary Judgment; Anticipation Pursuant to 35 U.S.C. § 102(e) (2006); Obviousness
Pursuant to 35 U.S.C. § 103; Expert Testimony CANVS CORPORATION, ) ) Plaintiff, )

v. ) )

THE UNITED STATES, )

)

Defendant. )

)

Joseph J. Zito , Washington, DC, for plaintiff.

John A. Hudalla, Attorney, with whom were Stuart F. Delery, Assistant Attorney
General , and John Fargo, Director, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, DC, for defendant. Lindsay K. Eastman, Attorney, United States Department of Justice, of counsel.

OPINION

CAMPBELL-SMITH, Chief Judge

Plaintiff CANVS Corporation (CANVS) holds U.S. Patent No. 6,911,652 (filed June 28, 2005) (the ’652 patent), which is directed to ward a low -light imaging device for use in military applications. See Compl. for Patent Infringement (Complaint or Compl.), Docket Number (Dkt. No.) 1, ¶ 3 1 ; see also Def.’s Mot. for Summ. J. of Invalidity of All
Claims of the Patent- in

- Suit (defendant’s Motion or Def.’s Mot.), Dkt. No. 59, Ex. A (’652 patent). Plaintiff brought this action pursuant to 28 U.S.C. § 1498(a) (2006) to recover compensation for the government’s alleged unlawful use or manufacture of the invention covered by the ’652 patent . Compl

. 1; cf. 28 U.S.C. § 1498(a) (providing a cause of action for patent infringement by the government).

1 The Complaint for Patent Infringement (Complaint or Compl.), Docket Number (Dkt. No.) 1, filed by plaintiff CANVS Corporation (plaintiff or CANVS) is organized into numbered paragraphs with the exception of an introductory section. See Compl. passim. The court provides paragraph numbers when citing the numbered paragraphs and page numbers when citing the introductory section of the Complaint.2

Defendant has moved for summary judgment on its affirmative defense of invalidity, contending that each claim of the ’652 patent is anticipated by U.S. Pa tent No. 5,035,472 (filed July 30, 1991) ( the Hansen patent or the Hansen device ), pursuant to 35 U.S.C. § 102(e) (2006)

. 2 Def.’s Mot. 1 ; see also id. Ex. B (Hansen patent). In the alternative, defendant contends that claims two and three of the ’652 patent are rendered
invalid as obvious by the combination of the Hansen patent and a second prior art
reference. Id. at 23

– 24. Defendant asserts that “the testimony of plaintiff’s expert [ witness ] , Mr. [James Brian] Gillespie, should be ignored by the court because it has been proven unreliable.” Def.’s Reply in Supp. of its Mot. for Summ. J. of Invalidity of all
Claims of the Patent

- in

- Suit (defendant’s Reply or Def.’s Reply), Dkt. No. 6 9, at 23 (emphasis and some capitalization omitted).

The central issue to be resolved on summary judgment is whether the earlier

issued Hansen patent anticipates the independent brightness adjustment feature of the ’652 patent. See infra Part III.A .2 (discussing the parties’ argumen ts with respect to this
issue ) . Both the Hansen patent and the ’652 patent contain two types of imaging
assemblies: (1) an image intensifier , which amplifies dim light and near

- infrared energy;
and (2) a thermal imager , which detects the far

- infrared the rmal signature of warm objects, such as human beings. See infra Part I.A

– B (describing these assemblies). T he ’652 patent also describes a mechanism for independently adjust ing the output brightness

, or intensity

, of the two imag ing assemblies

, which allows a user to determine how much
of the final viewed image is made up of output from the respective imaging assembl ies

. See infra Part I.A.

Relying on the testimony of its expert witness

, Mr. Gillespie

, as to how the Hansen patent would be inte rpreted by a person of ordinary skill in the art as well as the testimony of its fact witness

, Mr. Roland G. Dumais, Jr., as to the capabilities of the night vision systems in the Army’s possession at the relevant time

, 3 p laintiff contends that t he

2 On September 16, 2011, section 102 and section 103 of title 35 of the United States Code were amended by the Leahy

- Smith America Invents Act, Pub. L. No. 112

- 29, sec. 3(b)

– (c) , §§ 102

– 03, 125 Stat. 284, 285

– 87 (2011) (to be codified, in relevant part, at 35 U.S.C. §§ 102

– 03). The relevant amendments are applicable only to patents and patent applications with effective filing dates on or after March 16, 2013, see id. se c. 3(n) (1)

, 125 Stat. at 293, and are therefore inapplicable to this dispute, see Def.’s Mot. for Summ. J. of Invalidity of All Claims of the Patent

- in

- Suit (Def.’s Mot.), Dkt. No. 59

, Ex. A (U.S. Patent No. 6,911,652 (filed June 28, 2005) (the ’652 patent )) ; id. Ex. B (U.S. Patent No. 5,035,472 (filed July 30, 1991) (the Hansen patent or the Hansen device)).

3 Plaintiff also relies on the testimony of Mr. Roland G. Dumais, Jr. to address topics that are not appropriately addressed by lay witnesses. See, e.g. , Pl. CANVS Corp.’s Opp’n to the Def.’s Mot. for Summ. J. of Invalidity (Pl.’s Resp.), Dkt. No. 66, at 10, 13 ( quoting Mr. Dumais ’ interpret ation of the Hansen patent); id. at 2 ( quoting Mr.

Dumais ’ stat ement that CANVS “is entitled to compensation” (i nternal quotation marks omitted)); cf. id. at 13 (stating that Mr. Dumais is “clearly an expert in the area of fused3

Hansen patent does not anticipate th e independent brightness adjustment feature. See Pl. CANVS Corp.’s Opp’n to the Def.’s Mot. for Summ. J. of Invalidity (plaintiff’s Response or Pl.’s Resp.), Dkt. No. 66, at 8

– 9

. Defendant contends that the Hansen patent
does anticipate this feature, r elying on the testimony of its expert witness, Dr. Allen M. Waxman, as to the correct inte rpretation of the Hansen patent

. Def.’s Mot. 14

– 16 (applying Dr. Waxman’s interpretation of the Hansen patent ) ; Def.’s Reply 14 (same); c f. Def.’s Mot. Ex. E (Waxman Aff. ¶¶ 9

– 10) (contending that the Hansen patent discloses independent brightness adjustment).

Before the court are : defendant’s Motion, filed March 12, 2013; p laintiff’s Response , filed May 17, 2013; d efendant’s Reply, filed July 12, 2 013; and Plaintiff’s

Sur

- Reply (Pl.’s Sur

- Reply), Dkt. No. 78

, filed by leave of the court on September 5,
2013. O ral argument was conducted on September 18, 2013. 4 This matter was transferred to the undersigned on October 18, 2013. Order of Oct. 18, 2013, Dkt. No. 79. For the following reasons, defend ant’s motion is GRANTED

- IN

- PART and DENIED

IN

- PART

.

I. Background

A. The ’652 Patent

The ’652 patent is directed to ward a “low light imaging device” with two imaging
assemblies : an image intensifier and a thermal imager

. 5 Def.’s Mot. Ex. A ( ’652 patent )

night vision technology”). Because Mr. Dumais was not disclosed as an expert witness in this matter, the court disregards such testimony b y Mr. Dumais.

4 The oral argument was recorded by the court’s Electronic Digital Recording system (EDR). The times noted in the oral argument citations refer to the EDR.

5 T he t hermal imagers and image intensifiers of interest in this motion have various

names. See, e.g.

, Def.’s Mot

. Ex. A ( ’65 2 patent ) [57] (referring to a “thermal imaging assembly ” and an “image intensification assembly”); id. Ex. B ( Hansen patent ) col.3

l.57

– 60 (referring to a “far infrared spectrum processing means” and a “near infrared processing means”). Because the parties use many of these terms interchangeably and identify no material difference between them, the court understands the terms to be synonymous for purposes of the present motion. See, e.g. , Def.’s Mot. 12

– 13 ( contending that, like the ’652 p atent, “ [the] Hansen [patent] discloses a ‘thermal imaging assembly’ ” and “‘an image intensification assembly’” (emphasis omitted)); Pl.’s Resp . 10 (using the terminology of the ’652 patent to identify element 28 of the Hans en patent as “the image intensifier tube” and elements 18, 24 and 26 as “the thermal imager”); Oral Argument of Mr. Joseph J. Zito at 10:14:45

– 58 (colloquy between the court and Mr. Zito) (agreeing

—using the terminology employed in the Hansen patent

— that t he ’652 patent allows independent adjustment of the near

- infrared and far

- infrared imaging assemblies); cf. id. at 10:10:52

– 11:56 (agreeing that an image intensification assembly4

[57] . T he output brightness of each imaging assembly can be adjusted independently so that each ass embly provides more or less of the output image viewed by the user. 6 See
i d. According to the ’652 p atent’s specification, the image intensifier “amplif[ies]

. . . photons in order to generate an enhanced photon based image.” Id. col.4 l. 44

– 45 . T he
thermal imager “is preferably of a class of imaging assemblies which are able to detect or identify thermal energy emitted or radiated by a particular object” and “preferably includes an infrared imaging device,” commonly known as a “fo rward looking inf rared device[]

. ” Id. col. 4 l. 12

– 21.

The independent adjustment s are intended to allow the user to take advantage of the benefits of both types of imaging assemblies while minimizing the deficiencies of
each. See id. col. 2 l.32

– 36. For instance, image intensifiers are not useful in total darkness because they require “at least some photons to be perceived by the night vision
device.” Id. col.1 l.41

– 43 . Contrastingly, t hermal imagers can function in total darkness,
id. col.2 l.15

– 18, because they operate by detecting the thermal signature s of warm items,
id. col.2 l.5

– 8

. “[ H ]owever, in some circumstances[,] [thermal imagers ] do not provide a sufficiently clear image and/or may be blocked by other objects which can mask or
interfere with

. . . the perception of emitted infrared radiation.” Id. col.2 l.18

– 22.

The ’652 patent contains seven claims, the first of which provides:

1. A low light imaging device comprising: a) an optical input structured to define a line of sight; b) a thermal imaging assembly responsive to radiation signatures disposed within said line of sight; c) an image intensification assembly responsive to photons at least within said line of sight; d) said thermal imaging assembl y structured to generate a real time
thermal image representative of said radiation signatures; e) said image intensification assembly structured to gener ate a real time enhanced photon based image; f) an image adjustment assembly including a thermal image adjustment assembly and a photon image adjustment assembly; g) said thermal image adjustment assembly structured to adjust an intensity of said thermal image;

amplifies near

- infrared light and that the other rel evant type of imaging ass embly

— a thermal imager

— senses “actual infrared light

. . . heat energy” or “far

- infrared” energy, such as the heat emitted by a human body).

6 The ’652 patent refers to adjusting image intensity, which the court understands to be a reference to image brightness. See , e.g. , Def.’s Mot. Ex. A (’652 patent) col.6

l.48

– 53; cf. infra Part III.A.2.b (finding unpersuasive plaintiff’s attempt to disting uish intensity from brightness )

.5

h) said photon image adjustment assembly structured to adjust said image intensification assembly so as to adjust an intensity of sa id enhanced photon based image generated thereby; i) said thermal image adjustment assembly and said photon image adjustment assembly being structured to be operable independent from one another; and j) an output image generation assembly structured to combine said
thermal image and said enhanced photon based image to generate a
real

- time, direct view output image.

Id. col.6 l.33

– 60.

Claims four, five and seven describe the independent brightness adjustment
feature

. Claim four , which depends from claim one

, provides : “A low light imaging device as recited in claim 1 wherein said thermal image adjustment assembly and said photon image adjustment assembly are structured to be independently and sepa rately adjusted relative to one another.” 7 Id. col.7 l.19

– 23. Claim five describes image adjustment assemblies “operable to adjust

. . . [the] imaging assemblies so as to adjust an intensity of said thermal image and said enhanced photon based image

. ” I d. col.7 l.33

– 38. Claim seven, although it appears to be missing several words, also seems to describe independent adjustment. See id. col.8 l. 29

– 33.

B

. The Hansen Patent

The Hansen patent lists Charles L. Hansen

— an employee of the United States Army stationed at Fort Belvoir, Virginia

— as its inventor and “[ t ]he United States

. . . [whose interest is] represent ed by the Secretary of the Army

, ” as the assignee. S ee id.

Ex. B (Hansen patent) [73], [75]. The Hansen patent is direc ted to ward a “multispectral sight.” See i d. [57] . According to its specification, the Hansen device has “processing

means for each of

. . . three distinct spectrum channels,” which “are preferably a visible
spect rum for daytime viewing, a near infrared spectrum for twilight viewing, and a far
in frared spectrum for thermal viewing at nighttime.” Id. col.1 l. 6 1

– 66

. The Hansen
device uses fully reflective mirrors and partially reflective m irrors (called beam splitters)

— arranged as shown in the following schematic drawing , labeled figure 4

— to separate, direct, and ultimately recombine the three types of radiant energy ( visible light,

near

- infrared energy and far

- infrared energy ) into a final output image:

7 The elements and claims of a patent are often numbered in bold. See, e.g. , Def.’s

Mot. Ex. B (Hansen patent) col.3 l.15

– 39. The court omits such emphasis in this Opinion.6

Id. fig. 4; see also id. col.3 l.10

– 13 (describing figure 4 ).

The following descript ion accompanies figure 4 :

The multispectral radiant energy 6

. . . enters the sight through sighting
window 15

. . . . A first partially reflective beam splitter 16A

. . . passes the [far

- infrared] wavelengths of radiant energy

. . . along a far infrared spectrum channel 19A for processing. Beam splitter 16A reflects the shorter wavelength visible and near infrared spectrums to a second partially reflective beam splitter 16B[,] which passes the near infrared spectrum

. . . radiant energy

. . . [,] which i s reflected off a first fully reflective mirror 16C along a near infrared spectrum channel 19C for processing. Beam splitter 16B reflects the visible spectrum of

. . . radiant energy

. . . along a visible spectrum channel 19B for processing.

. . . All th ree channels have separate processing means and means for activating to process their respective radiant energy spectrums and whose processed signals exit
therefrom

. . . for an observer to view through eyepiece lens 12A.

Id. col.3 l.1 4

– 39

.

Both of the imaging assemblies relevant to defendant’s Motion are portrayed in Figure 4. T he Hansen device’s thermal imager “is comprised of the readily available U.S. Army forward looking infrared sight electro

- optic elements ”

— including “an uncooled focal plane arra y 18 [,] controlled by focal plane array electronics 24 [,] in which
the far infrared spectrum is converted to equivalent electrical signals [,] which are in turn fed directly to a cathode ray tube display 26 for reconverting the electrical signals to the
vis ible spectrum.” Id. col. 3 l.43

– 53. The output of the cathode ray tube , which is red, “is7

reflected off a fourth partially reflective beam splitter 56, which is red reflective,

. . . to an observer .” See i d. col. 3 l.53

– 57. The image intensifier “is pref erably a U.S. Army third generation image intensifier tube 28[,] which amplifies and magnifies the near infrared image. ” Id. col.4 l.13

– 15. The output of the image intensifier , which is green, is
reflected “onto beam splitter 54, which is green reflectiv e

. . . for viewing by an
observer.” See i d. col.4 l.15

– 20. “The visible spectrum channel 19B operates as a daytime sight” and directs visible light to an observer. See id. col. 3 l.62

– 65.

Of particular relevance to whether the Hansen device provides for in dependent brightness adjustment are the control knobs and switches on the device. These control
knobs and switches activate the near

- infrared, far

- infrared and visible light channel s
, and adjust the image viewed by the user. The controls are visibl e in the following diagram :

Id. fig. 2A.

By turning rotary switch 30 on the Hansen device , the observer can activate the

near

- infrared channel, the far

- infrared channel, the visible light channel or both the near

infrared and far

- infrared channels. See i d. col.2 l.38

– 44

. When the visible light channel is not activated, visible light is blocked by light valve 50 (visible in figure 4 ). See i d.
col. 3 l.6 5

– col. 4 l.7.

The sight ’s output can be adjusted in several ways. Directly relevant to the parties’ arguments are the adjustment capabilities described in the Hansen patent: “Switches 34 and 36 control the power to [image intensifier tube] 28, [uncooled focal plane array] 18, [focal plane array electronics] 24, and [cat hode ray tube] 26 to respectively control the scene contrast and brightness. ” Id. col.4

– l.26

– 28; s ee also id.8

col.2 l.44

– 48 ( “A plurality of thumb nail rotary switches 36, 34, and 32

. . . respectively adjust scene brightness, contrast, and the brightness of the reticle. ” 8 ).

C

. Procedural History

Plaintiff filed this action on August 11, 2010

, “seeking recovery of CANVS’ reasonable and entire compensation

, as well as all other appropriate remedies[] arising from Defendant’s [alleged] infringement of [the ’652 patent] and Defendant’s [al leged] use and/or manufacture, without license or lawful right, of inventions described in and covered by CANVS’ ’652 patent.” Compl. 1. Specifically, plaintiff alleged that the

Enha nced Night Vision Goggle ( device one ) m anufactured by ITT Industries infringed all
seven claims of the ’652 patent and “has been and is being used by and has been and is being manufactured for the United States without license.” Id. ¶ ¶ 17

– 18. In subsequent briefing, plaintiff identified nine additional accused devices, pro duced by several manufacturers, including the Dual Band Universal Night Sight (device two)

. S ee CANVS Corp. v. United States , 110 Fed. Cl. 19, 25 n.3 (2013) (listing the ten accused devices)

. After a series of delays and subsequent failures to comply with the court’s rules and orders, p laintiff’s claims with respect to accused devices three through ten have been dismissed for failure to prosecute

. S ee generally CANVS Co rp. v. United States

, 107
Fed. Cl. 100 (2012) (dismissing plaintiff’s claims with respect to devices three through ten); CANVS Corp.

, 110 Fed. Cl. 19 (denying reconsideration)

. As a result, plaintiff is currently proceeding only with its claims respecting device s one and two

. See CANVS Corp. , 110 Fed. Cl. at 25.

On November 16, 2012, p laintiff filed a motion to amend its claim char t to add six
additional devices. S ee Pl. CANVS Corp.’s 2d Mot. to Show Good Cause Supporting the Amendment of its Infringemen t Claim Charts, Dkt. No. 51, at 1

. The court stayed this
motion to amend pending the court’s resolution of defendant’s instant Motion. S ee Order of Mar. 26, 2013, Dkt. No. 63, at 2.

D efendant filed its Motion on March 12, 2013

. See generally Def.’s Mot. Ordinarily, courts conduct claim construction proceedings before addressing whether the
patent

- in

- suit is invalid. See, e.g.

, Akami Techs., Inc. v. Cable & Wireless Internet Servs., Inc. , 344 F.3d 1186, 1192 (Fed. Cir. 2003) (“ The first step in any invalidity analysis is claim construction

. . . .”). In this case, however, the parties agree that claim
construction is not required before the court decides defendant’ s Motion

. See Def.’s Mot. 2 ( adopting plaintiff’s position on claim construct ion

— that, with the exception of one claim term, no claim construction is necessary

— for purposes of defendant’s Motion).

II. Legal Standards

8 A reticle is “ [a] grid or pattern placed in the eyepiece of an optical instrument, used to establish scale or position.” The American Heritage Dictionary of the English Language 1488 (4th ed. 2006).9

A

. Motions for Summary Judgment

Pursuant to Rule 56 of the Rules of the United States Court of Federal Claims (R CFC), a motion for summary judgment may be granted only when “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” RCFC 56(a ). 9 A fact is material if it might affect the outcome of the suit

. Anderson v. Liberty Lobby, Inc.

, 477 U.S. 242, 2 48 (1986) . A dispute about a material fact is genuine if, “view[ing] the record evidence through the prism of the evidentiary standard of proof that would pertain at a trial on the merits,” Eli Lilly & Co. v . Barr Labs., Inc. , 251 F.3d 955, 962 (Fed. Cir. 2001), “ the evidence is such that a reasonable [factfinder] could

return a verdict for the nonmoving party, ” Anderson , 477 U.S. at 248

.
The moving party has the initial burden of establishing “the absence of any genuine issue of material fact and entitlement to judgment as a matter of law.” Crater Corp. v. Lucent Techs., Inc.

, 255 F.3d 1361, 1366 (Fed. Cir. 2001). Thereafter

, “ [t] he party opposing the motion must point to an evidentiary conflict created o n the record; mere denials or conclusory statements are insufficient.” SRI Int’l v. Matsushita Elec tric Corp. of Am.

, 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc ). “ The evidence of the

non

- movant is to be believed, and all justifiable inferences are to be drawn in his favor .”

Anderson

, 477 U.S. at 255. Accordingly, the court may not weigh evidence or make credibility determinations when ruling on a motion for summary judgment

. Id.

B. Anticipation

Patents are presumed to be valid, 35 U.S.C. § 282(a) , a presumption that can be overcome only by clear and convincing evidence, Invitrogen Corp. v. Biocrest Mfg., L.P.

, 424 F.3d 1374, 1378 (Fed. Cir. 2005). Pursuant to 35 U.S.C. § 102, a patent is invalid if it is anticipated by the prior art, that is, if “the invention was described in

. . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” 35 U.S.C. § 102(e). Specifically, “a claim is anticipated if each and every limit ation is found either expressly or inherently in a single prior art reference.” Celeritas Techs., Ltd. v. Rockwell Int’l Corp.

, 150 F.3d 1354, 1361 (Fed. Cir. 1998). The anticipating reference must be enabling, meaning that it “ must teach one of ordinary skill in the art to make or carry out the claimed invention without undue experimentation .” Minn. Mining & Mfg. Co v. Chemque, Inc. , 303 F.3d 1294, 1306 (Fed. Cir. 2002).

9 The Rules of the United States Court of Federal Claims (RCFC) generally mirror the Federal Rules of Civil Procedure (FRCP). See RCFC 56 rules committee note (2008 amendment) (“The language of RCFC 56 has been amended to conform to the general restyling of the FRCP.”); C. Sanchez & Son, Inc. v. United States

, 6 F.3d 1539, 1541 n.2 (Fed. Cir. 1993) (“The [RCFC] generally follow the [FRCP]. [RCFC] 56(c) is, in pertinent part, identical to [FRCP] 56(c).”). Accordingly, the court relies on cases interpreting FRCP 56 as well as those interpreting RCFC 56.10

“[A] prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it. ” Leggett & Platt, Inc. v. VUTEk, Inc. , 537 F.3d 1349, 1354 (Fed. Cir. 2008) (internal quotation marks omitted).

“ Under the principles of inherency, if the prior art necessarily functi ons in accordance with, or includes, the claimed limitations, it anticipates. ” Atlas Powder Co. v. Ireco Inc.

, 190 F.3d 1342, 1347 (Fed. Cir. 1999). Courts properly may rely on extrinsic evidence 10 to determine whether a particular feature is inherently p resent in the prior art reference. Telemac Cellular Corp. v. Topp Telecom, Inc. , 247 F.3d 1316, 1328 (Fed. Cir. 2001). “The evidence must make clear that the missing feature is necessarily present, and that it would be so recognized by persons of ordinar y skill in the relevant art.” Id. “While anticipation is a question of fact, it may be decided on summary judgment if the record reveals no genuine dispute of material fact.” Leggett & Platt, Inc. , 537 F.3d at 1352 (internal quotation marks omitted)

.
Because a patent must be proven invalid by clear and convincing evidence, Invitrogen Corp.

, 424 F.3d at 1378 , “ a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that

no reasona ble [factfinder] could find otherwise,” Eli Lilly & Co. , 251 F.3d at 962.

III. Discussion

A. Anticipation

Defendant contends that the ’652 patent is invalid because each of its claims is anticipated by the Hansen device . Def.’s Mot. 1. D efendant provides a meticulously thorough analysis of where it believes each limitation of the claim s enumerated in the ’652 patent can be found in the Hansen patent

. See generally id. Having reviewed defendant’s analysis and the record evidence in detail, the court finds that defendant has

satisfied its burden of initially establishing “the absence of any genuine issue of material

fact and entitlement to judgment as a matter of law. ” Cf. Crater Corp.

, 255 F.3d at 1366 (stating that a party moving for summary judgment must establish “the absence of any genuine issue of material fact and entitlement to judgment as a matter of law ” ).

To avoid summary judgment, plaintiff in turn “must point to an evidentiary

conflict cr eated on the record

. . . . ” Cf. SRI Int’l

, 775 F.2d at 1116 . Plaintiff has

identifie d two potential evidentiary conflicts. Plaintiff contends that defendant has improperly grouped claims five, six and seven together with claim one for analysis. Pl.’s Resp. 28

– 29

. And plaintiff argues that the Hansen device does not anticipate the ’652

10 In the context of patent law, “[e]xtrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman v. Westview Instruments, Inc. , 52 F.3d 967, 98 0 (Fed. Cir . 1995) (en banc), aff’d , 517 U.S. 370 (1996).11

patent because it “does not teach the independent adjustment of the [thermal imager] and [the image intensifier].” Id. at 9.

Plaintiff identifies no other potential evidentiary conflict and posits no other reason that defendant is not entitled to summary judgment of anticipation. For this

reason, t he court finds, as an apparent concession by plaintiff, that any claims of the ’652 patent that do not describe independe nt brightness adjustment and that have not been improperly grouped with other claims are anticipated by the Hansen patent. The court

therefore focuses the following discussion on the grouping of claims and independent brightness adjustment.

1. Defendant’s Grouping of Claims Is Appropriate

Plaintiff contends that defendant has improperly grouped claims five, six and

seven together with claim one in its discussion of anticipation instead of addressing each claim with separate evidence and argumen t. Id. at 28

– 29 ; cf. , e.g. , Def.’s Mot. 13 (stating

that

, “[d]ue to the similarity of the claim language, the same reasoning [ that applie s to the thermal imager in claim one] applies to the ‘first imaging assembly’ in part (b) of claim 5
and the ‘thermal imaging assembly’ in part (b) of claims 6 and 7 ” ). Plaintiff contends

that defendant h as “a statutory obligation

. . . to address the invalidity of each claim separately. ” Pl.’s Resp. 29 ( citation omitted ). P laintiff cites to Dayco Products, Inc. v.

Tot al Containment, Inc. ( Dayco ) , 329 F.3d 1358, 1370 (Fed. Cir. 2003), for the proposition that defendant’s failure to discuss the claims of the ’652 patent individually

“ is contrary to law, which requires that ‘ [e]ach claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; [and] dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. ’ ” Id. at 1370 (alt erations in original) (quoting 35 U.S.C. § 282 (2000) )

.

However, a s defendant correctly notes, see Def.’s Reply 22 , the Dayco decision upon which plaintiff relie s states that “it is permissible to group claims together for disposition where resolution involves the same issues of validity; however, the justification for such grouping is possible only where those issues are substantially materially identical,” Dayco , 329 F. 3d at 1370. In this case, d efendant has explained why

it believes that its anticipation analysis of claim one also appli es to claims five, six and

seven. See, e.g. , Def.’s Mot. 13 ( stating that

, “[d]ue to the similarity of the claim language, the same reasoning [that applies to the thermal imager in claim one] applies to the ‘first imaging assembly’ in part (b) of claim 5 and the ‘thermal imaging assembly’ in part (b) of claims 6 and 7 ” ). And claim one does appear to be “substantially materially identical” to claims five, six and seven for purposes of invalidity analysis. Cf. Dayco

, 329 F.3d at 1370 . As one example out of many, claim one describes a n “ image intensification assembly structured to gener ate a real time enhanced photon based image .” Def.’ s Mot. Ex. A (’652 patent) col. 6 l. 42

– 43 . Claims five, six and seven

describe a nearly identical assembly

. See id. col.7 l.30

– 32 (claim five, describing an12

“imaging assembly structured to generate an en hanced photon based image”); id. col.8

l.9

– 11 (claim six, describing “an image intensification assembly structured to generate an enhanced photon based image”); id. col.8 l.26

– 28 (claim seven, describing “an image intensification assembly structured to gen erate an enhanced photon based image”).

Plaintiff fails to rebut this showing with its own explan ation of why claims five,

six and seven are materially different for purposes of anticipation

. On the contrary

, plaintiff concede s that, for purposes of defendant’s Motion, claim one is representative of claims five, six and seven. See Pl.’s Resp. 6 n.2 (stating that the differences between the claims, “except for claim 4, are not material to the issues of validity raised by

D efendant” ). The court theref ore concludes that defendant’s discussion of claim one simultaneously with claims five, six and seven is appropriate. Cf. Dayco , 329 F.3d at

1370 (stating that grouping is permissible where the issues raised by each claim “are substantially materially ide ntical”).

2. A Reasonable Factfinder Could Conclude that Independent Brightness Adjustment Is Not Found

— Either Expressly or Inherently

— in the Hansen

Patent

a

. A Reasonable Factfinder Could Conclude that Independent Brightness Adjustment Is Not Expressly Described in the Hansen Patent

P laintiff contends that the Hansen patent does not anticipate the ’652 patent because it “does not teach the independent adjustment of the [thermal imager] and [the image intensifier].” Pl.’s Resp. 9; see also Oral Argument of Mr. Zito at 10:05:45

– 06: 03 ( contending that whether the Hansen patent anticipates this feature of the ’652 patent is “[t]he essence of what we’re talking about today”). This independent brightness adjustment feature is described in claim s four , five and seven of the ’652 patent

. 11 Def.’s

11 Plaintiff maintains that this individual adjustment is described in parts ( i) and ( j) of claim one of the ’652 patent. See Oral Argument of Mr. Zito at 10:17:10

– 24 , 44

– 53 ; cf. Pl.’s Resp. 8

– 9 (asserting that parts (f) through (j) together make it possible “to independently adjust the intensity of both of the image sensors to deliver the proper mix of image intensity”). The court understands plaintiff to be referring specifically to part ( i)

of claim one , which describes the image intensifier and the thermal imager as “being structured to be operable independent from one another.” Def.’s Mot. Ex. A (’652 patent) col.6 l.54

- 56. However, this is a description, not of independent adjustability

, but of independent operability, a feature the Hansen patent plainly teaches. The Hansen patent states that rotary switch 30 may be turned to connect to one of four electrical contacts: “electrical contact 31A for activating the visible spectrum of the m ultispectral sight, contact 31B for activating the near infrared spectrum, contact 31C for activating

the far infrared spectrum, or contact 31D for activating both the near infrared spectrum and the far infrared spectrum simultaneously.” Def.’s Mot. Ex. B (Hansen patent) col.2

l.38

– 44.13

Mot. Ex. A ( ’652 patent ) col.7 l.19

– 23 (claim four) , col.7 l. 33

– 38 (claim five) , col.8 l. 29

– 33 (claim seven)

.

The court first considers whether the Hansen patent expressly teaches independent brightness adjustment . B oth parties focus on the following sentence of the Hansen patent specification: “Switches 34 and 36 control the power to [image intensifier tube] 28, [uncooled focal plane array] 18, [focal plane array electronics] 24, and [cathode ray tube] 26 to respectively control the s cene contrast and brightness.” Def.’s Mot. Ex. B (Hansen patent) col.4 l.26

– 28 ; cf. Def.’s Mot. 15

– 16 (interpreting this sentence); Pl.’s Resp. 9

– 15 (same); Def.’s Reply 14

– 15 (same). No wiring diagram was included to show the

connections described in this sentence

.

Plaintiff contends that the “[p]lain reading of the sentence demonstrates that [switches 34 and 36 control] the brightness and contr ast of the entire scene,” but not of

t he thermal imager and image intensifier individually . Pl.’s Resp. 11 (emphasis omitted).

Plaintiff contends that the sentence “could be re

- written as: Switch 34 controls the power to 28, 18, 24, and 26 to control the scene contrast [and] switch 36 contr ols the power to 28, 18, 24, and 26 to control scene brightness.” Id. (italicization omitted) ; see also id. at 10 (“[B]oth switche s are connected to both sensors

. . . . ”); Oral Argument of Mr. Zito at

10:23:5 4

– 24:01 (“Switch 34 respectively controls cont rast. Switch 36 respec tively controls brightness.”)

.
Defendant responds that “the most logical reading” of the sentence is that “rotary switch 34 controls power to the image intensifier 28, while rotary switch 36 controls power to the thermal imager, which comprises elements 18, 24, and 26.” Def.’s Reply

14 . Stressing the Hansen patent’s use of the word “‘ respectively ’” and the fact that the Hansen patent describes “ ‘ separate processing means ’ ” for the image intensifier and the thermal imager, defendant contends that it would be logical to group element 28 ( the

i mage intensifier) apa rt from elements 18, 24 and 26 ( the thermal imager) and to assign a separate power control to each

. See id. (quoting id. Ex. B (Hansen patent) col.3 l.34

– 35) ; Oral Argument of Mr. Hudalla at 11:08:44

– 47 (“[O]f course, you would group the elements of the thermal imager together.”) . Therefore, defendant contends, “thumb nail rotary switches 34 and 36 in Hansen control the power to the image intensifier and the thermal imager, respectively.” Def.’s Mot. 15

.

It is the court’s view , however, that t he plain me a ning of the contested sentence

favors plaintiff’s position. The word “respectively” means “ [s] ingly in the order designated or mentioned.” The American Heritage Dictionary of the English Language 1485 (4th ed. 2006). Therefore, if “ [s] witches 34 and 36

. . . respectively control the

s cene contrast and brightness

, ” Def.’s Mot. Ex. B (Hansen patent) col.4 l.26

– 28

, it would

follow that switch 34 controls scene contrast and switch 36 controls brightness.

Additional supp ort for this interpretation of the patent language at issue is found in the following sentence that appears on the previous page of the Hansen patent : “A14

plurality of thumb nail rotary switches 36, 34, and 32,

. . . respectively adjust scene brightness, c ontrast, and the brightness of the reticle.” Id. col.2 l.44

– 48. This earlier appearing sentence uses a construction similar to that in the later contested sentence, without mention of the two imaging assemblies to which

— defendant asserts

— the word “respec tively” refers. The earlier appearing sentence with similar construction would

seem to unambiguously state that swit ch 36 controls scene brightness, switch 34 controls

scene contrast and switch 32 controls the brightness of the reticle

. For this reason, the

court is persuaded that a reasonable factfinder could conclude that defendant has failed to prove by clear and convincing evidence that the Hansen patent expressly discloses independent brightness adjustment

. C f. Eli Lilly & Co. , 251 F.3d at 962 (stating that “ a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable [factfinder] could find otherwise”). Having determined that a reasonable factfinder could conclude that independent brightness adjustment is not explicitly present in the Hansen patent, the court considers whether such adjustment feature could be found to be inherently present.

b

. A Reasonable Factfinder Could Conclude that Independent Brightness Adjustment Is Not Inherently Present in the Hansen Patent

When extrinsic evidence has been presented to establ ish that a feature is inherently
present , “[t]he evidence must make clear that the missing feature is necessarily present, and that it would be so recognized by persons of ordinary skill in the relevant art.” Telemac Cellular Corp. , 247 F.3d at 1328

.

As the preceding discussion indicates, the Hansen patent states that switch 34 controls the power to the image intensifier and thermal imager to control scene contrast, and switch 36 controls the power to the image intensifier and thermal imager to control

sc ene brightness. S ee Def.’s Mot. Ex. B (Hansen patent) col.2 l.44

– 48, col.4 l.26

– 28

. Defendant contends that the term “scene contrast” would not be understood to refer , as plaintiff asserts

, to “the relative difference between the lightest and darkest portions” of the images created by the image intensifier and the thermal imager, s ee Pl.’s Resp. 15 (citing id. Ex. C. ( Gillespie Aff

. ) ¶ 50 12 ) , but rather to the color contrast between the

green image created by the image intensifier and the red image created by the thermal imag er, Def.’s Reply 17; see also Oral Argument of Mr. Hudalla at 11:12:07

– 10 (“The scene contrast here is color contrast.”). The user would adjust this type of color contras t by adjusting the relative brightness of the red and green images to create more or less of the final image. See Oral Argument of Mr. Hudalla 11:13:32

– 38 (“The contrast comes from color contrast. You can turn the red up; you can turn the green up.”). A s defendant

12 The affidavit of Mr. Gillespie , plaintiff’s expert witness, is organized into numbered paragraphs but also contains section titles that are not numbered. See Pl.’s Resp. Ex. C (Gillespie Aff.) passim . The court provides paragraph numbers when citing the numbered paragraphs and page numbers when citing the section titles.15

correctly notes, see Def.’s Reply 1 7 , plaintiff agrees that “scene contrast” could refer to color contrast, see Pl.’s Resp. 16 (stating that “‘scene contrast’ could include ‘color contrast’ under certain circumstances”); cf. Pl.’s Resp. Ex. C ( Gillespie Aff .) ¶ 52 (same).

Defendant insists that the term “scene contrast” would be understood to refer to this type of color contrast resulting from relative brightness because plaintiff’s interpretation of the Hansen patent would require switch 34 “to do the impossible

— namely, to control the contrast of an image intensifier.” Def.’s Reply 15. Defendant accurately observes, and pl aintiff’s expert witness agrees , that the contrast of an image

intensifier cannot be adjusted

. Id. (citing, inter alia, id. Ex. J ( Gillespie Dep. ) 30:19

– 31:18 (“[Was there a way to] adjust the contrast of the output of an image intensifier

. . . ? No, not that I know of.”) ). On the other hand, the record evidence establishes that a person of ordinary skill in the art wou ld have known that it is possible to adjust the brightness of both an image intensifier and a thermal imager by controlling the power to

them

. S ee id. Ex. K ( 2d Waxman Aff. ) ¶¶ 4

– 8 (presenting evidence that power control to adjust the brightness of image intensifiers and thermal imagers was known in the art) ; cf. Pl.’s Resp. 19 (“[C]ertain advanced [image intensification] tubes had and have the ability to manually adjust the gain or power delivered to the tube to vary the intensity of the image that is out

put to the user.” ) 13 ; Pl.’s Resp. Ex. C ( Gillespie Aff. ) ¶ 57 (same ).

Defendant adds that plaintiff’s view of the Hansen patent requires both switch 34 and switch 36 to control the power to both imaging assemblies, a redundancy that defendant

argues “would be equivalent to having two volume controls on your radio in your car.” Oral Argument of Mr. Hudalla at 11:17:35

– 54

.

In response, plaintiff quotes testimony from its fact witness, Mr. Dumais

— whom plaintiff describes as “the Navy WARCOM and SOCOM Joint Night Vision Working Group leader in charge of night vision at the critical time period”

— stating that the Army did not “actually invent[] the subject matter” of the ’652 patent. Pl.’s Resp. 4. Mr. Dumais further testified that the CANVS device “gave us c apability to do thi ngs that I

13 At oral argument and in its Sur

- Reply, plaintiff contradict ed its earlier expounded position by arguing that it is not possible to control the brightness of an image intensifier by controlling its power supply. See Oral Argument of Mr. Zito at 10:31:02

– 17 (“You cannot control the brightness of . . . an image intensifier by controlling the external power t o the image intensifier.”); Pl.’s Sur

- Reply, Dkt. No. 78, at 2

– 3 (disputing whether the references cited by defendant establish that it is possible to control b rightness by controlling power ) ; cf. Pl.’s Sur

- Reply Ex. G ( 2d Gillespie Aff. ) ¶¶ 17

– 19 (same)

. This argument is untimely

— being raised for the first time in a sur

- reply. It also contradicts the previous position advanced by both plaintiff and its expert witness. The

court therefore deems it to be waived. Cf. Becton Dickinson & Co. v. C.R. Bard, In c.
, 922 F.2d 792, 800 (Fed. Cir. 1990) (discussing “the sound practice that an issue not raised by an appellant in its opening brief

. . . is waived” unless waiver “would result in basically unfair procedure”).16

knew we were not capable [ of ] before.’” Id. at 1; id. Ex. D ( Dumais Dep. ) 140:9

– 11. The implication of this testimony is that if the Hansen device

— which was invented by an Army employee, see Def.’s Mot. Ex. B (Hansen patent) [75] (stating that Mr. Hansen was stationed at Fort Belvoir, Virginia)

— had featured independent brightness adjustment , Mr.
Dumais would have been aware of it

. However, as defendant rightly points out , “Mr. Dumais was on active duty with the Navy at the t ime of [the] Hansen [device’s patenting] , so it is unsurprising that Mr. Dumais was not aware of all

— or even any

— of the night vision development activities occurring within the Army. ” Def.’s Reply 4 (citing Pl.’s Resp. Ex. D (Dumais Dep.) 21:22

– 22:2 ).

P laintiff then makes a number of arguments

— based on the testimony of its exper t witness, Mr. Gillespie

— about how the Hansen patent would be interpreted by a person of ordinary skill in the art. Certain of the arguments plaintiff puts forward are not supported by the record evidence. Others contrad ict plaintiff’s prior positions

— without explanation

— or focus on issues that are irrelevant to an anticipation analysis on summary judgment

. The court has closely studied these arguments but concludes t hat they would
fail to persuade a reasonable factfinder that an independent adjustment fea ture is inherently present in the Hansen patent

. The court sets forth a few illustrative examples of plaintiff’s arguments below

.

P laintiff first contend s that the Han sen patent could not have referred to red

- green color contrast because, “at the time the Hansen invention was made, night vision goggles did not have color displays” and instead “provided a mono chrome image to the user. ” Pl.’s Resp. 16 (citing, inter alia

, id. Ex. C (Gillespie Aff.) ¶ 52). But, t he court understands this argument to reflect a misstatement by Mr. Gillespie in his affidavit, which was subsequently addressed in his deposition

. See Def.’s Reply Ex. J (Gillespie Dep.) 177:3

– 179:15 (acknowledg ing that he had “used the wrong terminology” in the referenced paragraph of his affidavit, that night vision devices had “colored display but not color display” and that the Hansen device would have combined a red a nd a green image).

Plaintiff also assert ed in its briefing that defendant’s expert witness, Dr. Waxman

, incorrectly interpreted the transmissive properties of the beam splitters described in the Hansen patent . Pl.’s Resp. 17

– 18; see also Pl.’s Sur

- Rep ly 1

– 2, 4

– 7. At oral argument, plaintiff ex plained that it had offered this argument, “not because [it] somehow makes [ the Hansen patent ] a nonanticipatory reference,” but to rehabilitate the credibility of its witnesses, Mr. Gillespie and Mr. Dumais. See Oral Argument of Mr. Zito at 11:50:03

– 51: 39. The court declines plaintiff’s invitation to consider this argument b ecause credibility determinations cannot be made in the context of a summary judgment motion

. Anderson

, 477 U.S. at 255

.

P laintiff further argue d in briefing that the Hansen patent did not anticipate the ’652 patent because “the Hansen patent [w]as just another example of overlay technology or ‘poor man’s fusion.’” Pl.’s Resp. 4 (quoting id. Ex. D ( Dumais Dep. ) 58:19); see also
id. at 5

– 6 (stating that “the CANVS device was the fir st time that true optical fusion had been accomplished”). As clarified during oral argumen t, plaintiff’s argument appears to17

turn on its view of a qualitative distinction between the fusion achieved in the Hansen device and that accomplished by the ’652 p atent

. See , e.g.
, Oral Argument of Mr. Zito at
10:46:57

– 47:12 (“ O verlay is fusion; fusion is overlay. If you just do overlay, it’s poor man’s fusion. If you improve the overlay

. . . , then it becomes goo d fusion or true
fusion

. . . . ”). However, plaintiff identifie s no record evidence that described precisely
what this distinct ion is or why it is significant in this anticipation analysis.

Although p laintiff agree d in its briefing that the terms “brightness

, ” as used in the Hansen patent

, and “intensity

, ” as used in the ’652 p atent , are synonymous, s ee, e.g. , Pl.’s Resp. 15 (stating that “a person of ordinary skill in the art would understand . . . [the term] ‘light intensity’ ” used in the Hansen patent to mean “‘scene brightness’”)

, plaintiff
contradicted its earlier offered v iew at oral argument. There, plaintiff appear ed to contend that the Hansen patent’s adjustment of brightness does not anticipate the ’652 patent’s adjustmen t of intensity. Instead, plaintiff posited that “brightness

. . . refers to one way of changing th e intensity,” whereas intensity refers to the “quant[um] of information” transmitted to the viewer. Oral Argument of Mr. Zito at 10:43:10

– 29.
When a sked whether supportive evidence for this proposition could be found in the record, plaintiff responded, “ No, other than how the term is used in [the ’652] patent

. ”
Id. at 10:47:18

– 48:10. In accordance with the Federal Circuit ’ s guidance , however

, the Hansen patent need not use precisely the same phrasing as the ’652 patent to anticipate its

claims. Cf

. In re Bond , 910 F.2d 831, 832 (Fed. Cir. 1990) (stating that anticipation “is not an ‘ipsissimis verbis’ test”).

Among the many alternative arguments it put forward, p laintiff contend s, “[T]here is no evidence of the Hansen invention. No prototypes, no records, no proposals, nothing.” Pl.’s Resp. 4. But as defendant correctly observes , “‘[a]nticipation does not require the actual creation or reduction to practice of the prior art subje ct matter; anticipation requires only an enabling disclosure. ’ ” Def.’s Reply 21 (alteration in original) (quoting Schering Corp. v. Geneva Pharms., Inc. , 339 F.3d 1373, 1380 (Fed. Cir. 2003)).

P laintiff suggests that the Hansen patent was insufficientl y detailed to be such an enabling disclosure, see Pl.’s Resp. 14 (stating that the Hansen patent provides “no idea, explanation or suggestion to how to achieve” adjustment of scene brightness or scene contrast), but the Hansen patent is no les s detailed th an the ’652 patent. Missing from the ’652 patent is a description of how ima ge brightness is to be adjusted, and as defendant accurately state s in its briefing, the same presumption o f enab lement that applies to the ’652 patent applies to prior art refere nces. Def.’s Reply 21 ( citing Amgen Inc. v. Hoechst Marion Roussel, Inc. , 314 F.3d 1313, 1315 (Fed. Cir. 2009)).

A feature asserted to be inherent in a prior art reference must be shown to be

“ necessarily present, not merely probably or possibly present .” Trintec Indus., Inc. v. Top

- U.S.A. Corp. , 295 F.3d 1292, 1295 (Fed. Cir. 2002) (internal quotation marks omitted). Here, defendant’s burden is to demonstrate that independent brightness adjustment is necessarily present in Hansen with “such clear and convincing evidence of18

invalidity

. . . that no reasonable [f actfinder] could find otherwise

. ” C f. Eli Lilly & Co.

, 251 F.3d at 962. T he court is not persuaded on this record that defendant has met this

burden

.

Defendant effectively allege s that a person of ordinary skill in the art would know

that this control configuration does not operate as described because control ling contrast through an image intensifier is not possible and because using two switches to control the

power for both imag ing devices is un n ecessarily redundant. Defendant posits that one

switch sh ould be understood to control the brightness of each imaging assembly, which

allows the color contrast of the scene to be adjusted

. But t he record evidence before the

court does n ot c ompel a reasonable factfinder to reach this conclusion. In addition,

a lthough defendant’s interpretation of the language of the Hansen patent might offer a more functional device, it does not comport with the patent’s seemingly plain language

that one switch c ontrols contrast and the other controls brightness . Accordingly, a reasonable factfinder could conclude that defendant has failed to prove by clear and convincing evidence that independent brightness adjustment is ne cessarily present in the Hansen patent

. 14 C f. Eli Lilly & Co. , 251 F.3d at 962.

Absent such clear and convincing proof from defendant, a genuine issue of

material fact remains regarding whether the claims that describe independent brightness adjustment ( these are, claims four, five and seven ) are anticipated by the Hansen patent

. Cf. id. Defendant, however, has succeeded in showing

— and p laintiff has failed to create a genuine issue of material fact rebut ting such showing

— that the other claims ( specifically , claims one through three and clai m six) are anticipated by the Hansen
patent

. Plaintiff’s arguments with respect to grouping and independent brightness adjustment do not persuade, see supra Part III.A.1 (discussing grouping), III.A.2 (discussing independent brightness adjustment), and pl aintiff provides no basis upon

which a reasonable factfinder could conclude d ifferently

, c f. Eli Lilly & Co. , 251 F.3d at

962.

14 Additionally, it is not clear to the court t hat it properly could find that independent brightness adjustment is inherently present in the Hansen device on the basis

of extrinsic evidence that contradicts the express language of the Hansen patent

. Cf.

Markman , 52 F.3d at 98 0 (stating, in the context of claim construction, that “[e]xtrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose of varying or contradicting the terms of the claims”); Rhine v. Casio, Inc. , 183 F.3d 1342, 1345 (Fed . Cir. 1999) (stating, in the context of claim construction, that “the familiar axiom that [c]laims should be so construed, if possible, as to sustain their validity ” has no application “if the only claim construction that is consistent with the claim’s la nguage and the written description renders the claim invalid” (alteration in original) (internal quotation marks omitted) ).19

Accordingly, d efendant is entitled to summary judgment on the issue of anticipation with respect to claims one through three and c laim six, but not with respect to claims four, five and seven

.

B. Obviousness

D efendant argue s in the alternative that claims two and three of the ’652 patent are rendered obvious by the combination of the Hansen patent and a second prior art
reference . Def.’s Mot . 23

– 24. However, because the court has determined that claims
two and three are invalid due to anticip ation by the Hansen patent , the court does not

— and need not

— reach defendant’s obviousness argument. Cf. 3 Moy’s Walker on Patents § 9:49 (4th ed. 201 3 ) (stating that, where claims are found to be anticipated, “the issue of obviousness need not be reached”).

C. The Offered Expert Testimony

Defendant’s final argument is that the testimony of plaintiff’s expert, Mr. Gillespie, “ is so defective as to call into question his qualification as an expert witness in this case.” Def.’s Reply 23. Defendant argues that “the C ourt should exercise its gatekeeping role and cast aside Mr. Gillespie’s opinions” pursuant to the Supreme Court’s guidance in Daubert v. Me rrell Dow Pharmaceuticals , Inc. , 509 U.S. 579 (1993 ).
Id.

Among the challenges defendant directs toward Mr. Gillespie’s testimony are: (1)
his erroneous assertion that it is not possible to adjust the bright ness of an image
intensifier ; and (2) “Mr. Gillespie’s faulty analysis of rotary power control switches 34
and 36 in [the] Hansen [device, which] not only ignore[d] the interaction of these
switch es with selector switch 30, but

. . . also [was] premised on the implementation of a

contrast con trol for an image intensifier that he admitted was impracticable.” Id. In addition, d efendant points to Mr. Gillespie’s concession in his deposition that he is “ ‘ not a beam splitter expert.’” Id. (quoting id. Ex. J ( Gillespie Dep. ) 169:4). Defendant ar gues that “because Mr. Gillespie’s faulty opinions undergird all of plaintiff’s arguments, the Court should find that plaintiff has failed to raise a genuine issue of material fact .” 15 Id.
at 23

– 24.

15 Plaintiff contends that “[a] ‘suggestion . . . that the Court should exercise its gatekeeping role’ is not a proper Daubert motion and

. . . objects to the inference that Mr. Gillespie’s opinions could be ‘cast aside’ based upon a suggestion.” Pl.’s Sur

- Reply 1 n.1 (emphasis added). Notwithstanding plaintiff’s assertion, it is not clear to the court
that defendant’s effort to exclu de Mr. Gillespie’s testimony “is not a proper Daubert
motion.” Cf. i d. (emphasis added). Although adduced in a reply brief, defendant ’s
request is timely because it responds and objects to the positions taken by Mr. Gillespie
in an affidavit submitted wi th plaintiff’s Response. See Def.’s Reply in Supp. of its Mot. for Summ. J. of Invalidity of all Claims of the Patent

- in

- Suit, Dkt. No. 69, at 23

– 24.
Plaintiff asked for

— and was granted

— oral argument and leave to file a sur

- reply on the20

Pursuant to the Federal Rules of Evidence, “the trial judge must ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.”

Daubert , 509 U.S. at 589. After reviewing carefully the asserted flaws in Mr. Gillespie’s offered expert testimony, the court dec lines to grant defendant’s request to exclude Mr. Gillespie’s testimony

. Mr. Gillespie did title a section of his affidavit “ N o gain or intensity control of an [ image intensifier] tube in 1990

, ” and he made averments consistent with that proposition. Pl. ’s Resp. Ex. C ( Gillespie Aff. ) 19 (emphasis and some capitalization omitted)

. Moreover , when Mr. Gillespie was asked in his deposition

to confirm that , “ t here is no way to change the brightness of the green screen that a user

sees on an [image intensifie r] tube, ” he responded

, “Correct.” Def.’s Reply Ex. J (Gillespie Dep. 64:18

- 21). But Mr. Gillespie did also acknowledge in his affidavit that
“certain advanced [image intensifier] tubes had and have the ability to manually adjust the gain or power delive red to the tube to vary the intensity of the image that is output to

the user

, ” Pl.’s Resp. Ex. C ( Gillespie Aff. ) ¶ 57. The court is persuaded that a reasonable factfinder could agree with Mr. Gillespie’s proposed inter pretation of switches 34 and 36, s ee supra Part III.A .2

, and to the extent defendant is convinced that Mr. Gillespie’s testimony is erroneous on the subject of independent brightness adjustment capacity , the court urges defendant to address such concerns by further motion or at trial

.

Con trary to defendant’s urging, the court does not exclude Mr. Gillespie’s testimony on the topic of beam splitters based on his concession that he is “ not a beam splitter expert

. ” Cf. Def.’s Reply Ex. J (Gillespie Dep.) 169:4. Mr. Gilles pie admitted

that h e “relied on

. . . the optics guys to do that when we did it at the lab” and forthrightly

stat ed that he was “surmising” about the operation of the beam spli tters. Id. at 169:4

– 8. Expertise in beam splitting appears to be a subspecialty of the optics specialists working with night vision technology. Having reviewed Mr. Gillespie’s testimony with respect to beam splitters, the court does not find Mr. Gillespie’s testimony on beam sp litters to be

so uninformed or otherwise unreliable that it must be excluded. Moreover, because t he court is mindful of the cost to the parties associated with the hiring of multiple specialists

in the various fields associated with night vision

, s ee RCFC 1 (directing the court to pursue the “just, speedy, and inexpensive determination o f every action and proceeding”),

and b ecause both parties appear to consider the beam splitter discussion irrelevant to

whether the Hansen patent is an anticipatory refere nce
, see Oral Argument of Mr. Zito at

11:50:03

– 51: 39 (stating that plaintiff presented evidence with respect to beam splitters

, “not because that somehow makes [ the Hansen patent ] a nonanticipatory reference,” but to rehabilitate the credibility of plainti ff’s witnesses Mr. Gillespie and Mr. Dumais ); Oral Argument of Mr. Hudalla at 11:28:09

– 29:43 (stating that plaintiff’s arguments about beam splitters are irrelevant to an anticipation analysis), the court denies defendant’s

issue of expert qualification. See Order of Aug. 27, 2013, Dkt. No. 75, at 2

– 3 . As a procedural matter, plaintiff therefore was afforded ample opportunity to respond to defendant’s challenge.21

request. Should the functioning of beam splitters e merge , however, as an important issue in this case, defendant may renew its motion

.

P laintiff also asserted a challenge to the admission of defendant’s expert’s testimony. Plaintiff a rgued that “if any testimony should be ‘cast aside’ based upon a suggestion, it shoul d be the testimony of Dr. Waxman,” who “blatantly misquoted the
Hansen reference.” Pl.’s Sur

- Reply 1 n.1 (citing Pl.’s Resp. 1 2

– 13). It is plaintiff’s view

that Dr. Waxman engaged in an exercise of “intentional misleading” by “refer[ing] to

sentences he

. . . made up as direct quotes

. . . from [the] Hansen [patent] .” Pl.’s Resp.

12

– 13. P laintiff contends that Dr. Waxman “selectively removed words” to alter the sentence describing switches 34 and 36 of the Hansen patent so it would appear to teach independent brightness adjustment of the image intensifier and the thermal imager. Id. at 12; see also supra Part III.A .2.a (discussing the parties’ arguments with respect to this sentence). B ut, i t is apparent to the court from Dr. Waxman’s affidavit that he rephrased

th e sentence of interest

— as did plaintiff’s expert 16

— merely to clarify what he believed it to mean, not to mislead the court. See Def.’s Mot. Ex. E ( Waxman Aff. ) ¶ 9 (explaining

the referenced sentence ). T hus, p laintiff’s argument does not persuade

. T he court denies plaintiff’s request to strike Dr. Waxman’s testimony.

IV. Conclusion

As explained in much greater detail in this Opinion , defendant’s Motion is GRANTED with respect to the anticipation of claims one through three and claim six of the ’652 patent . The court finds that each limitation of these claims is found in the Hansen patent . Defendant’s Motion is DENIED , however, with respect to the anticipation of the claims of the ’6 52 patent that describe independent adjustment of the brightness of the image intensifier and thermal imager

— that is, claims four, five and

seven

— because a reasonable factfinder could conclude that the Hansen patent does not
teach this feature

. Because it is unnecessary to reach the issue of obviousness,
d efendant’s Motion is DENIED with respect to the obv iousness of claims two and three
as MOOT . Defendant’s motion is also DENIED insofar as defendant requests the striking of Mr. Gillespie ’s testimony beca use the court does not find Mr. Gillespie’s testimony so unr eliable as to compel such action

. In addition, t he court finds unpersuasive plaintiff’s request to strike the testim ony of Dr. Waxman as misleading and
DENIES same.

A separate order will issue s hortly

, after the issuance of this Opinion

, to address plaintiff’ s stayed motion to amend its claim chart to include additional devices.

16 P laintiff similarly proposed that the same sentence could be rephrased to clarify its meaning. See Pl. ’s Resp. 11 ( suggesting that th e sentence “could be re

- written as: Switch 34 controls the power to 28, 18, 24, and 26 to control the scene contrast [and] switch 36 controls the power to 28, 18, 24, and 26 to control scene brightness” (italicization omitte d) ).22

IT IS SO ORDERED.

s/ Patricia E. Campbell

- Smith
PATRICIA E. CAMPBELL

- SMITH Chief Judge