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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

SOUTHWESTERN BELL TELEPHONE, §

L.P., et al., §

Plaintiffs, §

§

v. § CIVIL ACTION NO. 3: 04-CV-0669-B

§ ECF

ARTHUR COLLINS, INC., §

§

Defendant. §

MEMORANDUM ORDER

Before the Court is Defendants Southwestern Bell Telephone, L.P.’s (“Southwestern Bell”)

and Fujitsu Network Communications, Inc.’s (“Fujitsu”) Joint Motion for Partial Summary Judgment

of Invalidity of Arthur A. Collins, Inc.’s U.S. Patents Nos. 4,701,907 and 4,797, 589 (doc. 435), filed

May 11, 2006. Because Collins improperly added claims 4-14 to the ‘589 patent, the Court

GRANTS summary judgment in favor of Plaintiffs as to those claims. Because the Court has already

dismissed all claims related to the ‘907 patent and because there exist genuine issues of material fact

as to all other grounds for summary judgment, the Court DENIES the remainder of the motion.

I. BACKGROUND

This declaratory judgement action concerns two patents Collins holds for a dynamically

reconfigurable time space time switch (“DRTST”): 4,701,907 (“the ‘907 patent”) and 4,797,589

(“the ‘589 patent”). According to Southwestern Bell, Collins has asserted that switching systems in

Southwestern Bell’s central offices infringe the patents-in-suit and has threatened suit for

infringement unless the company purchases a license from Collins. (Am. Compl. ¶¶ 10-11)

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Southwestern Bell originally filed suit on March 31, 2004, seeking a declaratory judgment of noninfringement and invalidity of the patents-in-suit. (doc. 1) In its answer, Collins included a

counterclaim of infringement against Southwestern Bell and requested compensatory damages, treble

damages, and an injunction. (Ans. & Countercl. ¶¶ 7-11) In November 2004, Fujitsu moved to

intervene in this suit based upon allegations of infringement made by Collins outside the context of

the instant suit as well as potential indemnity obligations to Southwestern Bell. (Mot. to Intervene

at 3) The Court granted Fujitsu leave to intervene in January 2005. (doc. 50)

After holding a Markman hearing, the Court issued its Memorandum Opinion and Order on

Claim Construction in which it construed six terms integral to the determination of this case and the

instant motion. (doc. 270) The claims were construed as follows:

(1) “connected and connectable” – These terms mean “directly joined to one

another within the same unitary piece of equipment without any intervening

equipment.”

(2) “unified structure” – Although not a claim term, the Court defines the term

“unified structure” to mean “a consolidated structure with all components

directly connected to one another.”

(3) “bypass” – “Bypass” means “a structure and path by which data channels

completely go around and in no respect go through the TST switch.”

(4) “control store” – “A ‘control store’ is included within a single unified DRTST

switching unit that includes a memory, processor, and operating software that

determines (1) which data circulating on the network loop is to be selected

and diverted to the TST switch of a given switching node; (2) how that data

passes through the TST switch; (3) which data is output from the TST switch

back onto the network loop; and (4) which data is to bypass the TST switch

of that node.”

(5) “means for measuring” – The Court finds that this term is not capable of 

construction.

(6) “direction of the timing adjustment interval” – This term means “[t]he timing

 

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adjustment control command signal is fed in a reverse direction from the data

signal; that is, from a downstream digital switching unit to an upstream digital

switching unit, in a direction opposite the data flow.”

(Mem. Op. and Order on Claim Constr. at 30-31)

On May 11, 2006, Plaintiffs moved for summary judgment of invalidity of Collins’s ‘907 and

‘589 patents. (doc. 435) Southwestern Bell and Fujitsu argue that the patents are invalid on three

grounds. First, they assert that the ‘907 patent is invalid for indefiniteness because during the claim

construction phase of this litigation, the Court determined that its “means for measuring . . .” claim

was incapable of being construed. (Mem. in Supp. of Joint Mot. for Partial Summ. J. of Invalidity

(“Pls.’ Mem.”) at 1) Second, Plaintiffs contend that the patents are invalid for lack of novelty and

for obviousness in light of prior art that they claim was not considered by the United States Patent

and Trademark Office (“PTO”) during examination or reexamination of the patent applications.

(Id.) Finally, Plaintiffs maintain that all claims added by Collins during reexamination are invalid

because the patents were amended for a statutorily improper purpose. (Id.) The parties have briefed

the issues, and the Court now turns to the merits of its decision.

II. LEGAL STANDARD

A. Summary Judgment

A court may grant summary judgment when there is no genuine issue as to any material fact

and the moving party is entitled to judgment as a matter of law. FED.R.CIV. P. 56(c); Petrolite Corp.

v. Baker Hughes Inc., 96 F.3d 1423, 1425 (Fed. Cir. 1996). The burden lies with the movant to show

that no genuine issue of material fact exists. Conroy v. Reebok Int’l, Ltd., 14 F.3d 1570, 1575 (Fed.

Cir. 1994). If the evidence submitted would allow a reasonable jury to return a verdict for the nonmovant, a genuine issue remains and the court cannot grant summary judgment. Anderson v. Liberty

 

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Lobby, Inc., 477 U.S. 242, 248 (1986). Alternatively, a movant may meet its burden by showing that

its opponent failed to present sufficient evidence to establish an essential element of the case where

the opponent bears the burden of proof for that element. Celotex Corp. v. Catrett, 477 U.S. 317, 322-

23 (1986). 

B. Invalidity

Under 35 U.S.C. § 282, courts must begin to evaluate a patent’s validity by presuming that

the patent is valid. In order, to overcome this presumption, the party challenging the patent’s

validity must prove invalidity by clear and convincing evidence. Am. Hoist & Derrick Co. v. Sowa

& Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984). A district court must give deference to the

Patent and Trademark Office’s decision to issue a patent where evidence already presented to the

patent office is concerned. Id. However, no deference is due the PTO as to evidence it did not

consider. Id. The Court now turns to the parties’ arguments.

III. ANALYSIS

A. The ‘907 Patent

Southwestern Bell and Fujitsu insist that the ‘907 patent is invalid because its claims fail to

meet the definiteness requirement of 35 U.S.C. § 112, ¶2. (Pls.’ Mem. at 3-4) They explain that

the Court’s determination that the phrase “means for measuring”, which appears in both

independent claims of the ‘907 patent, is “not capable of construction” renders the patent invalid.

(Id.) Collins does not contest this claim of invalidity. (Collins’s Br. in Supp. of Resp. (“Collins’s

Resp.”) at 3 n.3) Because the Court has now dismissed Collins’s claims of infringement of the ‘907

patent (doc. 468), the Court DENIES the Plaintiffs’ motion as to those claims.

 

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In a time-divided transmission link, time is divided into intervals called channels, and c channels 1

form a frame. Appx. to Pls.’ Mem. at A66)

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B. Anticipation of the ‘589 Patent

Southwestern Bell and Fujitsu also argue that the ‘589 patent is invalid because it was

anticipated by Telecommunications: A Time for Innovation (“Innovation”), a book co-authored by

Arthur Collins and Dr. Robert Pedersen in 1973. (Pls.’ Mem. at 7, 15) A court must find a claim

invalid for anticipation when a single prior art reference exhibits every limitation of the claimed

invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

“There must be no difference between the claimed invention and the reference disclosure, as viewed

by a person of ordinary skill in the field of the invention.” Scripps Clinic & Research Found. v.

Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). A claim limitation is inherently present in

a prior art reference when that prior art “necessarily functions in accordance with, or includes, the

claimed limitation[]” even if it does not expressly disclose that limitation. Atlas Powder Co. v.

IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). In the instant case, genuine issues of material

fact as to at least two claim limitations prevent the court from rendering summary judgment as to

invalidity for anticipation.

1. Selectively Passing/Reduced Frame Size Claim Limitation

The first claim limitation at issue occurs in claims 1 and 4 of the ‘589 patent and reads:

said inlet line terminating units selectively passing ones of said channels to said TST 1

switch and the remaining ones of said channels of said frame to said outlet line

terminating units thereby selectively reducing the frame size of said transmission

media transmitted to said TST switch, said outlet line terminating units restoring said

reduced frame size to its original size.

(Appx. to Pls.’ Mem. at A53) Plaintiffs insist that Innovation discloses this claim limitation, citing

 

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two particularly descriptive paragraphs:

The pair of inlet and outlet line terminating units associated with a loopconnected switch port are provided with a normally closed bypass gate that permits

signals to flow directly from the inlet side to the outlet side of the line terminating

unit without traversing the switch itself. Thus signals are free to circulate around the

loop past all idle switch ports. A connection is made between two ports when their

bypass gates are opened. This gate action separates the loop into two paths to form

a bidirectional, full-duplex connection between two nodes.

. . . .

The inlet and outlet line terminating units provide multiplex, timing, and control

interfaces between the connected links and the inlet and outlet data stores. These

units also allow bypassing the switch through the loop bypass. The loop bypass allows

data circulating on a loop to completely bypass a switching node for which the data

is not intended. Data that is intended for the node is routed through the switch.

The data taken off the loop by the inlet line terminating unit is replaced with the

corresponding output data from the outlet data store in the same time slot.

(Id. at A73, A80) Plaintiffs and their expert, Dr. Birch, maintain that the described process by which

data is selected to follow either the bypass or a path through the core of the TST switch causes some

channels to be sent through the bypass, resulting in a frame with a reduced number of channels

traveling through the internalTST switch and thus, a reduced frame size. (Pls.’ Mem. at 18) Collins

and its expert, Dr. Grover, counter that Innovation does not teach a reduced frame size, but rather

teaches “always transmitting the same number of channels in each 125 microsecond frame time to

the TST switch, with certain channels simply not carrying any traffic.” (Collins’s Resp. at 7)

Nowhere in the excerpts of Innovation provided by the parties do Mr. Collins and Dr. Petersen

describe the effect on the channels and the frame size of routing some data through the loop bypass.

AlltheCourtis left with is conflicting expert reports: one stating that routing some channels through

the loop bypass leaves fewer channels per frame to pass through the internal TST switch and the

other stating that some data is removed from certain channels to travel the bypass and that all

channels, some not carrying any data, travel through the TST switch so that the frame size remains

 

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constant.

Plaintiffs also direct the Court’s attention to Figure 3.1 of Innovation, excerpted below, as

proof that Innovation discloses the reduced frame size claimed in the ‘589 patent. (Pls.’ Reply at 6;

App. to Pls.’ Mem. at A78) Plaintiffs reason that Figure 3.1 shows a reduced frame size because “c”

channels enter the inlet line terminating unit (“LTU”), but after some channels are diverted through

the bypass, only “l” channels are passed through the internal TST switch. (Pls.’ Reply at 6) Collins

disputes Plaintiffs’ interpretation of “l” in Figure 3.1 and argues that the values for “l” in Table 3.1

of Innovation do not comport with“l” representing a reduced frame size. (Collins’s Sur-Reply at 2-3;

Appx. to Collins’s Resp. at A164-A165) In the table, “l” is always larger than “c”, which appears

inconsistent with “l” representing a reduced frame size for frames traveling across the internal TST.

(Appx. to Collins’s Resp. at A164-A165) The Court cannot decide the issue of invalidity with

respect to this claim limitation because genuine issues of material fact exist as to Innovation’s teaching

of the meaning of “l” and the relative number of channels passing through the internal TST.

 

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The language above is taken from claim 1. The language of claim 4 is identical except for the 2

replacement of the term “connected” with “operatively connected” and the replacement of the phrase “ones

of said inlet ports and outlet ports receiving frames of variable sizes determined by said control store” with

“ones of said inlet ports and outlet ports receiving frames of variable sizes based on the number of said

selected channels as determined by said control store.” This slight difference in language does not affect the

Court’s finding on the issue of anticipation.

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2. Random Reading by Input Memory and Random Writing by Output Memory

Claim Limitation

A genuine issue of material fact also exists as to whether Innovation teaches inlet and outlet

ports that randomly receive channels from and transmit channels to the line terminating units. The

relevant claim limitation appears in claims 1 and 4 of the ‘589 patent and reads:

said inlet ports of said TST switch being connected to randomly receive channels

from said inlet line terminating units, said outlet ports of said TST switch being

connected to randomly transmit channels from said outlet ports to said outlet line

terminating units for transferring data from said TST switch to said transmission

media, ones of said inlet ports and outlet ports receiving frames of variable sizes

determined by said control store.2

(Appx. to Pls.’ Mem. at A53) Plaintiffs contend that all limitations of this claim are contained in

Innovation, particularly in Figure 3.1. (Pls.’ Mem. at 19-20) Further, Plaintiffs, supported by their

expert, Dr. Birch, argue thatthe function of randomly receiving and randomly transmitting channels

is inherently present in the disclosures of Innovation because a person of ordinary skill in the art

would have understood that type of memory accessing and control scheme to be necessarily present

in the TST switches described in Innovation. (Id. at 20) Collins, supported by its expert Dr. Grover,

counters that Innovation “teaches a completely different concept in which data is read sequentially

into the input memories and removed sequentially from the output memories.” (Collins’s Resp. at

10)

Nowhere in the excerpts of Innovation provided by the parties does there appear a description

 

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Although Mr. Collins and Dr. Petersen discuss the generalized TST switch as having data 3

sequentially read into the input memories and sequentially removed from the output memories (Appx. to

Resp. at A144), they do not make any similar statements with regard to their design studies described in

chapter 3, which are the prior art TST switches at issue for this motion.

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of the read/write process from which the Court can determine whether Mr. Collins and Dr. Petersen

intended for the ports to receive and transmit data randomly, sequentially, or a combination thereof.3

Plaintiffs direct the Court’s attention to a paragraph in chapter 3 to show that the technology was

available at the time Innovation was published that allowed for the inlet and outlet ports in the

described TST switch to randomly receive and transmit channels:

Only device technology available todaywas considered for use in the designs studied.

Semiconductor random access memories of the required size and speed are being

produced for the computer industry[]. High-speed switching arrays and the complex

control circuits required are likewise available in large-scale integrated circuit form[].

Equally important is the availability of the essential software to formulate and

synthesize the design and production of these devices.

(Appx. to Pls.’ Mem. at A77) TheCourt finds this paragraph ambiguous and is unsure which of two

interpretations was intended by the authors. Either the paragraph is meant to read that random

access memories were available for use in TST switches at the time of Innovation’s publication and

the authors intended the described switch to include these devices or the paragraph is meant to read

that random access memories were not considered when writing Innovation because although they

had been used in another industry, adaptations needed to be made before they could be used in the

telecommunications industry and the described TST switch. Because there remain genuine issues

of material fact as to whether Innovation teaches inlet line terminating units reducing the frame size

of transmission media and whether the functions of random reading and writing of data were

inherently present in the prior art reference, Innovation, the Court DENIES Plaintiffs’ motion as to

 

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anticipation.

C. Obviousness of the ‘589 Patent

If an alleged infringer must combine two or more prior art references to challenge the validity

of the claims of the patent-in-suit, the correct inquiry is obviousness rather than anticipation. An

invention is obvious if the differences between it and the prior art “are such that the subject matter

as a whole would have been obvious at the time the invention was made to a person having ordinary

skill in the art to which said subject matter pertains.” 35 U.S.C. § 103. To determine whether prior

art rendered a patented invention obvious, a court must first examine “the scope and content of the

prior art, the differences between the prior art and the claimed invention, and the level of skill in the

art.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). The court must also take into account

various secondary considerations that serve as evidence of nonobviousness, such as long felt but

unresolved need, failure of others, and copying. Id. Plaintiffs argue that even if Innovation did not

inherently teach the random read/random write limitation of the ‘589 patent, that such a limitation

would have been obvious to one skilled in the art due to the 1982 publication of Digital Telephony,

a textbook authored by John Bellamy. (Pls.’ Mem. at 23) At this juncture, the Court cannot

determine whether the ‘589 patent is invalid for obviousness because genuine issues of material fact

exist as to whether Innovation discloses all claim limitations other than the aforementioned random

read/random write limitation. Therefore, the Court DENIES Plaintiffs’ motion as to obviousness.

D. Improper Reexamination Amendment

Finally, Plaintiffs’ contend that claims 4-14 of the ‘589 patent are invalid because Collins

amended the ‘589 patent for an improper purpose. (Pls.’ Mem. at 27-28) Under 35 U.S.C. § 305,

a patent owner may propose an amendment to its patent to distinguish the claimed invention from

 

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In Arthur A. Collins, Inc. v. Northern Telecom Ltd., the United States District Court for the Eastern 4

District of Virginia granted summary judgment of non-infringement for Nortel, and the judgment was

affirmed by the Federal Circuit. 216 F.3d 1042 (Fed. Cir. 2000). According to Collins, the courts did not

address the validity of the ‘589 patent. (Resp. at 17-18)

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the prior art or to respond to an adverse decision as to the patentability of one of the patent’s claims.

The Federal Circuit elucidates the requirement of a proper purpose for amendment:

[T]he ability of a patentee to amend claims during reexamination must be seen in

light of the fundamental purpose of reexamination—the determination of validity in

light of a substantial new question of patentability. Thus, amendment of claims

during reexamination is limited to amendment in light of prior art raising a

substantial new question of patentability.

In re Freeman, 30 F.3d 1459, 1468 (Fed. Cir. 1994). Plaintiffs assert that claims 4-14 are invalid

because they were not added to the ‘589 patent for one of the purposes permitted by 35 U.S.C. §

305, but rather to circumvent the district court’s claim construction in a prior infringement case

brought by Collins against Northern Telecom Ltd. (“Nortel”). (Pls.’ Mem. at 27-28) Collins does 4

not respond to this argument directly. Instead, Collins maintains that claims 4-14 are valid because

it pursued reexamination for a proper purpose and because claims 4-14 do not broaden the scope of

the patent. (Collins’s Resp. at 17-19)

Collins’s “Request for Reexamination” shows that it initiated reexamination of the ‘589

patent for the proper purpose of allowing the PTO to “fully consider the substantial new questions

of patentability which Nortel alleges to have been raised by the prior art.” (Appx. to Collins’s Resp.

at A27) However, Collins’s own “Patent Owner’s Statement Under 37 C.F.R. § 1.530(b)” reveals

that Collins added claims 4-14 “to preclude any interpretation of the claims in accordance with the

district court’s opinions . . . in the litigation with Nortel.” (Appx. to Pls.’ Mem. at A145) Collins

has presented no evidence to contradict its stated purpose for amending the ‘589 patent. Because

 

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preclusion of the application of a prior claim construction is not a proper purpose for amendment

under 35 U.S.C. § 305, claims 4-14 of the ‘589 patent are invalid and summary judgment is granted

in favor of Plaintiffs on this issue.

IV. CONCLUSION

For the foregoing reasons, Plaintiffs’ Joint Motion for Partial Summary Judgment of Invalidity

is GRANTED as to invalidity for improper reexamination amendment and DENIED on all other

grounds. The issues that remain for trial are whether claims 1-3 of the ‘589 patent are invalid for

anticipation or for obviousness.

SO ORDERED.

SIGNED November 2 , 2006 nd

_________________________________

JANE J. BOYLE

UNITED STATES DISTRICT JUDGE

 

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