CONCLUSION

For the foregoing reasons, this Court denies joint defendants’ motion for summary judgment

with prejudice (#210-1).

Ys

SO ORDERED ENTERED:

HON. RONALD A. GUZ!
United States Judge

13


of information between the cells and the PLC registers, fixed and floating point
information formats and dumping the contents of the mailbox memory locations to
assigned cells in the spreadsheet; @ functions to move messages between the
spreadsheet cells and the PLC registers. [sic] and to perform logical operations; and
interrupt driven information transfers from the interface card registers to
corresponding memory locations in the mailbox area of the RAM memory 76. The
add-in program 28 also includes memory locations 82 for local variables used in
effecting the message transfers through the spreadsheet program 26.
(‘318 patent, col. 8, lines 12-29.)

Solaia has presented opinion testimony stating that the ‘318 patent specification and drawings
include guidance and instructions on how a programmer could write the add-in program, and that
the specific add-in program was not necessary to practice the invention. (P1.’s LR 56.1(b)(3)(B) 74
7,8.) Solaia presented opinion testimony stating that a programmer could write a program in a
variety of programming languages by reviewing the unique guidance and instruction provided in the
‘318 specification. (Pl.’s LR 56.1(b)(3)(B) 13.) The ‘318 patent discloses the desirability of
software which can communicate data from PLC to spreadsheet, prepare the spreadsheet for the
receipt of data, and handle data transmission within the spreadsheet itself. (Pl.’s LR 56.1(b)(3)(B)
4,17.) Solaia has presented opinion testimony that based on the disclosures of the ‘318 patent, a
skilled programmer could, within a reasonable amount of time, easily write software to implement
the software portions of the preferred embodiment of the claims, and could locate, build, or install
hardware to implement the hardware portions of the preferred embodiment of the claims. (P1.’s LR
56.1(b)(3)(B) §{] 23, 27, 28, 29.) “Solaia made it clear in the specification that creating at least a
portion of [t]he [sic] add-in program could easily be accomplished using commercial spreadsheet
tools.” (PI.’s LR 56.1(b)(3)(B) 4 7.)

DISCUSSION

Summary judgment is appropriate 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); Johnston v. IVAC


evidence that writing a program that could carry out the claimed invention would require 1.5 “man”
years of work. The court held that amount of experimentation to be undue. Jd.

Conversely, in Northern Telecom, the patent specification failed to set forth a computer
program for carrying out the claimed invention. The court looked to the nature of the invention, the
role of the program in carrying it out, and the complexity of the contemplated programming, all from
the viewpoint of a skilled programmer. It stated that “(t]he claimed invention of the . . . patent [in
suit] is not in the details of the program writing, but in the apparatus and method whose patentability
is based on the claimed combination of components or steps.” Northern Telecom, Inc., 908 F.2d at
941. Ultimately, the court held that the evidence showed that “a programmer of reasonable skill
could write a satisfactory program with ordinary effort,” thus holding the patent not invalid. These
cases demonstrate that there is no bright-line rule, but instead a court must look to the facts of a
specific case to determine whether a program is enabled. But see Fonar Corp. v. General Electric
Co., 107 F.3d 1543 (Fed. Cir. 1997) (stating, in determining the objective second prong of a best
mode analysis, “normally, writing code for . . . software is within the skill of the art, not requiring
undue experimentation, once its functions have been disclosed”).

The joint defendants have asserted that the “add-in instruction means” of Claim 11, and the
“add-in program means” of Claim 12 are non-enabled. Because these limitations are in means plus
function format, the structure corresponding to these limitations must first be found in the
specification of the ‘318 patent. For purposes of this motion, the parties have agreed that the above-

i

mentioned limitations refer to the structure of an “add-in program.” Therefore, the question to be

2 The Joint Defendants have argued that the claimed “add-in instruction means” and “add-in program means”
incorporate the structure of the add-in program, including the source code. In support of this argument, they cite the
language used in the specification and comments made by the patentee in the prosecution history. However, the
Joint Defendants have, for the purpose of this motion, stipulated that the structure is simply “add-in program 28.”
This language does not include the specific source code.


factual underpinnings. Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684,
690 (Fed. Cir. 2001). A decision on the issue of enablement “requires determination of whether a
person skilled in the pertinent art, using the knowledge available to such a person and the disclosure
in the patent document, could make and use the claimed invention without undue experimentation.”
Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir. 1990).

“Factors to be considered in determining whether a disclosure would require undue
experimentation . . . include: (1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of
the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d
731 (Fed. Cir. 1988); Enzo Biochem v, Calgene, 188 F.3d 1362, 1371 (Fed. Cir. 1999) (holding that
the Wands factors are applicable in infringement actions). Because these factors are illustrative
rather than mandatory, courts should look to the facts of their specific case to determine what is
relevant. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991).

“That some experimentation is necessary does not preclude enablement; the amount of
experimentation, however, must not be unduly extensive.” Atlas Powder Co., 750 F.2d at 1576.
“The test [for undue experimentation] is not merely quantitative, since a considerable amount of
experimentation is permissible, if it is merely routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in which the experimentation should
proceed.” Johns Hopkins University v. CellPro, Inc., 152 F.3d 1342, 1360 (Fed. Cir. 1998).

To determine whether the ‘318 patent is enabled, this court must first determine whether the
source code is part of the patent’s disclosure. Whether a document is considered part of a patent’s

disclosure is a question of law. Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446 (Fed. Cir.


Corp., 885 F.2d 1574, 1576-77 (Fed. Cir. 1989). Summary judgment may be granted when no
“reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). In determining whether there is a genuine issue of material fact, the
evidence must be viewed in the light most favorable to the party opposing the motion, with doubts
resolved in favor of the nonmovant. Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274
(Fed. Cir. 1995). Moreover, the court must “view .. . the evidence presented through the prism of
the substantive evidentiary burden” that would inhere at trial. Anderson, 477 U.S. at 254. This
burden rests upon an accused infringer, who must prove by clear and convincing evidence facts
establishing a lack of enablement. Morton Int’l Co. v. Cardinal Chem. Co., 5 F.3d 1464, 1469 (Fed.
Cir. 1993).

A patent grant is issued in exchange for an enabling disclosure of an invention. White
Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 791 (Fed. Cir. 1983) (stating, “[t]he
sine qua non of a valid patent is a full, clear, enabling description of the invention’”’) (emphasis in
original); see also Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974). The enablement
requirement of 35 U.S.C. § 112, 4 1 provides, in relevant part, that:

The specification shall contain . . . the manner and process of making and using [the

invention], in such full, clear, concise, and exact terms as to enable any person skilled

in the art to which it pertains, or with which it is most nearly connect, to make and

use the [invention].

Enablement is determined at the time the patent application was filed. In re Glass, 492 F.2d 1228,
1232 (C.C.P.A. 1974); Ajinomoto Co., Inc. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1345
(Fed. Cir. 2000), cert. denied, 121 S. Ct. 1957 (2001).

Determining whether a disclosure of a patent satisfies the enablement requirement is a

question of law. Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed.

Cir. 1984). However, as is true in many legal questions, the legal conclusion of enablement rests on


which was described in the specification as a “known translator capable of converting . . . a part
program in programming language form into a part program in machine language form, as for
example SPLIT. /d. at 789. The SPLIT program was a trade secret of a company related to the
patentee. Jd. The Federal Circuit held the patent invalid for lack of enablement, even though the
program could be purchased. /d.; see also Quaker City Gear Works, Inc., 747 F.2d 1446 (holding
that incorporation by reference of material that is necessary for adequate disclosure but is unavailable
to the public is not permissible). However, relevant to this decision, the court stated that the patentee
was obliged to disclose... SPLIT, .. . unless a suitable substitute could be obtained without undue
experimentation. White Consolidate Indus., Inc. 713 F.2d at 791 (emphasis added).

In Southwest Software Inc., the Federal Circuit remanded after finding the source code not
part of the patent so that a determination regarding undue experimentation could be made.
Southwest Software Inc., 226 F.3d 1280. That remand inherently held that the lack of the actual
source code does not render a patent per se unenabled. See id.; Northern Telecom, Inc., 908 F.2d
at 941 (holding patent not invalid even where specific source code was not disclosed). Therefore,
the joint defendants’ assertion that the patentee’s failure to disclose the source code mandates a
finding of non-enablement is unfounded. Rather, this court must determine whether, given the lack
of a source code, practicing the ‘318 patent would require undue experimentation.

“When the challenged subject matter is a computer program that implements a claimed
device or method, enablement is determined from the viewpoint of a skilled programmer using the
knowledge and skill with which such a person is charged.” Northern Telecom, Inc., 908 F.2d at 941.
Courts have come to different conclusions when determining whether a claim including a computer
program is enabled where the specification fails to disclose source code. In White Consol. Indus.,

Inc. v. Vega Servo-Control, Inc., 713 F.2d 788 (Fed. Cir. 1983), the alleged infringer provided



ad
‘Minute Ordee Form (06/97)

United States District Court, Northern District of Illinois

Name of Assigned Judge Sitting Judge if Other
or Magistrate Judge Ronald A. Guzman than Assigned Judge
CASE NUMBER 02 C 4704 DATE 9/17/2003
CASE SOLAIA TECHNOLOGY LLC vs. ARVINMERITOR, INC., et al
TITLE 4
[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented, ]
DOCKET ENTRY:
(1) oO Filed motion of [ use listing in “Motion” box above.}
(2) oO Brief in support of motion due
(3) oO Answer brief to motion due. . Reply to answer brief due
(4) QO Ruling/Hearing on set for at
(5) a Status hearing[held/continued to] {set for/re-set for] on set for at
(6) Oo Pretrial conference[held/continued to] [set for/re-set for] on set for at :
(7) a Trial[set for/re-set for] on at
(8) 0 [Bench/Jury trial] [Hearing] held/continued to at
(9) Oo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
COFRCP4(m) CLocal Rule 41.1 OFRCP41(a)(1) CFRCP41(a)(2).
(0) =o [Other docket entry) | ENTER MEMORANDUM OPINION AND ORDER: For the foregoing
reasons, this Court denies joint defendants’ motion for summary judgment with prejudice [#210-1].
al) (For further detail see order attached to the original minute order.]
No notices required, advised in open court.
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The joint defendants have demonstrated, by showing that the source code was not included
in the certified copy, that the ‘318 patent does not disclose a working example of the add-in program.
Therefore, this factor favors the joint defendants.

The state of the prior art

Plaintiff has provided evidence that the source code is accessible to the public because the
prosecution history, which includes the source code, can be obtained from the PTO. See supra.
However, the public’s current access is irrelevant. Enablement is determined as of the filing date
of the application. Ajinomoto Co., 228 F.3d at 1345. The public does not have access to a patent
application when it is filed; it is held confidential by the PTO until it is published or the patent
issues. See Manual of Patent Examining Procedure, ch. 100 et. seg. Therefore, the source code is
not part of the prior art.

The joint defendants have stated that, “Solaia made it clear in the specification that creating
at least a portion of [t]he [sic] add-in program could easily be accomplished using commercial
spreadsheet tools.” (P1.’s LR 56.1(b)(3)(B) 7.) This statement suggests that one skilled in the art
could look to then available commercial spreadsheet tools, which are part of the prior art, to write
at least part of the add-in program. Construing this statement in a light most favorable to the
plaintiff, this factor favors plaintiff.

Relative skill of those in the art

The Federal Circuit has held that when dealing with a computer program that implements a
claimed device or method, “enablement is determined from the viewpoint of a skilled programmer
using knowledge and skill with which such a person is charged.” Northern Telecom, Inc., 908 F.2d

931. While this language is helpful, the parties have failed to adequately establish the “knowledge

11



determined is whether the creation of an add-in program suitable to practice the invention would take
undue experimentation.

This court looks to the substantially relevant Wands factors as a starting point for this
analysis.
The quantity of experimentation necessary

Neither party has provided evidence of the specific amount of time it would take to
implement the add-in program. Instead, each party has proffered conclusory statements that
predictably range from “undue” to “not undue.” Plaintiff does, however, provide some opinion
testimony as to how difficult it would be to write the add-in program, given the ‘318 patent’s
disclosure. See supra. While in their reply the joint defendants have argued that such evidence is
inaccurate, it is up to the trier of fact, not this court, to determine the credibility of the plaintiff's
witnesses and their statements. For purposes of this determination, then, this factor favors plaintiff.
The amount of direction or guidance presented

The more guidance that a patent provides, the less experimentation, both qualitative and
quantitative, is required of one trying to practice the invention. Plaintiff has provided opinion
testimony that the ‘318 patent provides guidance to one of skill in the art. See supra. Plaintiff has
also cited portions of the ‘318 patent that describe some of the components and functions of the add-
in program. See ‘318 patent, col. 8, lines 12-29. This evidence is especially relevant given the
Federal Circuit’s holding in Fonar Corp. Fonar, 107 F.3d 1543 (stating, “normally, writing code
for... software is within the skill of the art, not requiring undue experimentation, once its functions
have been disclosed”). This factor therefore favors plaintiff.

The presence or absence of working examples



1984) (holding determination of whether a document is incorporated by reference is a question of
law). In Southwest Software, Inc., v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir, 2000), the Federal
Circuit addressed a similar question. There, the patentee filed its patent application, including the
source code for a claimed computer program. The patent itself stated, “Incorporated herein is a
computer program listing printout appendix of source code....” Jd. at 1291. However, the certified
copy of the patent did not include this appendix. Id. The patentee filed suit against the defendant,
discovered the error, and subsequently filed for a Certificate of Correction to have the source code
properly added. The United States Patent and Trademark Office (“PTO”) admitted wrongdoing, and
inserted the appendix into the specification. Jd. However, the Federal Circuit held that for the
purpose of the lawsuit, which was filed prior to the correction of the patent, the source code could
not be considered part of the specification. Id. at 1299.

Similarly, here, the patentee filed the source code with its application that matured into the
‘318 patent. Also similar, the ‘318 states that the source code is “set forth herein.” ‘318 patent, co).
17, lines 3-5. However, the certified copy does not have the source code appended to it. (Def.’s LR
56.1(a)(3)(B) 1 6.) 37 C-F.R. 1.77(c)(z) required that the “microfiche appendix” be referenced at
the beginning of the specification, after the title of the invention and before the summary of the
invention. Neither the application nor the certified ‘318 patent includes this reference to a
microfiche appendix. See 37 C.F.R. 1.77(¢)(z) (1983). Therefore, for the purposes of this motion,
the source code will not be considered part of the patent document.

The joint defendants have argued that because the source code cannot be considered, the ‘318
patent is non-enabled as a matter of law. In White Consolidated Indus., Inc. v. Vega Servo-Control,
Inc., the patent was directed to a numerical control system whereby a machine tool is controlled by

acomputer program. 713 F.2d 788 (Fed. Cir. 1983), The invention required a language translator,


programmable logic controller to which a message is to be sent and indicating the
content of said message; and

d. add-in program means contained in said processor means for executing an action

in said spreadsheet means to cause said spreadsheet means to transmit said
message from said cell through said registers in said process means to the said
addressed particular register in said particular programmable logic controller.
The Joint Defendants have focused on the “add-in instruction means...” of Claim 11, and the “add-
in program means” of Claim 12 in challenging the validity of the ‘318 patent.

In an earlier case, Solaia Technology v. Jefferson Smurfit et al, 01 C 6641, (N.D. IIL), the
Honorable James F. Holderman, in an order dated March 28, 2002, construed the disputed
limitations of Claims 11 and 12. In this order, Claim 11’s limitation “‘add-in instruction means’ was
construed to correspond to the structure “add-in program.” (‘318 patent, Fig. 2, Item 28.) Claim
12’s limitation of “add-in program means” was construed to correspond to the same structure, “add-
in program.” (‘318 patent, Fig. 2, Item 28.) For purposes of this Motion, both parties have agreed
to accept that construction. (Def.’s LR 56.1(a)(3)(B) 8; Def.’s Reply Brief, at 5.)

The certified copy of the ‘318 patent states, “[t]he source code listing for the add-in program
28 of the invention comprises program pages 1-118 and is set forth herein.” (‘318 patent, col. 17,
lines 3-5.) The source code was originally filed with the application that resulted in the ‘318 patent.
(Pl.’s LR 56.1(b)(3)(B) 4.) However, the certified copy of the ‘318 patent does not include any
printouts of the source code. (Def.’s LR 56.1(a)(3)(B) § 6.) After the ‘318 patent issued, the public
could gain access to the source code either by reviewing the file of the patent or by ordering a
complete copy of the file history through a number of companies that provide that service. (PI.’s LR
56.1(b)(3)(B) { 5.)

The ‘318 patent describes the add-in program:

Add-in program 28 present [sic] three features: menu commands to initialize the
features for moving messages between the cells and the PLC registers, block moves


The application that eventually matured into the ‘318 patent was filed on December 17, 1987.
(Def.’s LR 56.1(a)(3)(B) 4 5.) The United States Patent and Trademark Office issued the ‘318
patent on August 6, 1991. Jd. The ‘318 patent claims a particular type of PLC control system that
moves messages directly between a commercial spreadsheet on a PC and two or more PLC’s without

using either the operating system or any device drivers. Claim 11 of the ‘318 patent reads in

FACTS

pertinent part:

ll
A.
B.
c.
D.

E.

. A system for operating equipment by an operator, the system comprising:
a plurality of programmable logic controllers coupled to the equipment . . .
a computer having operably interconnected visual display, keyboard, memory,
and central processor ...
Interface means electrically connected between said computer and said network
for receiving messages from each of said programmable logic controllers . . .
spreadsheet instruction means contained in said memory for effecting a general
purpose spreadsheet program in said computer .. .
add-in instruction means contained in said memory for presenting add-in menu
commands and interrupt selected instructions operating through said spreadsheet
instruction means for said interrupt selected instructions to move sequentially
received messages from said message registers to respective assigned address
locations in said memory upon occurrence of each interrupt signal, and for said
add-in menu commands to move said messages from said assigned address
locations in said memory to respective assigned cells in said spreadsheet
instruction means so that messages from said programmable logic controllers
indicating the condition of said equipment can be saved and moved directly to
said cells.

Claim 12 of the ‘318 patent reads in pertinent part:

12. A device for transmitting and receiving electrical signals forming messages to

A.

and from respective addressable registers located in respective addressable
programmable logic controllers that are connected together over a
communications network, said device comprising:

process means connected to said communications network for moving said
electrical signals forming messages to and from respective registers located in
said processor means...

spreadsheet means contained in said processor means . . .

add-in program means contained in said processor means for inserting in at least
one cell information including the address of a particular register in a particular



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
DOCKETED
SOLAIA TECHNOLOGY LLC, SEP 1
§ 2003
Plaintiff,
02 C 4704
Vv.
Judge Ronald Guzman
ARVINMERITOR, INC.,
THE BOEING COMPANY,
CALLAWAY GOLF COMPANY,
CONOCO, INC.,

ENBRIDGE, INC.,

ENBRIDGE ENERGY COMPANY, INC.,
ENBRIDGE ENERGY PARTNERS, L.P.,
THE GILLETTE COMPANY,

SUN CHEMICAL CORPORATION, and
TYCO INTERNATIONAL (U.S.) INC.

we eee rw SSS SS Swe ere

Defendants.

MEMORANDUM OPINION AND ORDER

On July 2, 2002, Solaia Technology L.L.C. (“Solaia” or “plaintiff’) filed suit against
Arvinmeritor, Inc., The Boeing Company, Callaway Golf Company, Conoco, Inc., Eastman Kodak
Company,' Enbridge, Inc., Enbridge Energy Company, Inc., Enbridge Energy Partners, L.P., The
Gillette Company, Sun Chemical Corporation, and Tyco International Inc. (“defendants”). (Compl.
4 2, 22.) The complaint alleged infringement of Claims 11 and 12 of U.S. Patent No. 5,038,318
(“the ‘318 patent”). Jd. The defendants Arvinmeritor, Inc., The Boeing Company, Callaway Golf
Company, Concoco, Inc., Enbridge Energy Company, Inc., The Gillette Company, and Tyco
International Inc. (“joint defendants”) filed a Motion for Summary Judgment of Patent Invalidity Due

to Lack of Enablement.

‘ Eastman Kodak and Boeing have now settled out of this lawsuit. U ZL a
1



and skill” that a computer programmer would have as of the filing date of the ‘318 patent’s
application. The Court is therefore unable to apply this factor.

While application of the Wands factors is not mandatory, we find them illuminating in this
determination. Enablement is a question of law based on underlying factual inquiries. It is the
burden of joint defendants to demonstrate that the ‘318 patent is invalid with clear and convincing
evidence. However, joint defendants have not established the level of skill in the art, nor have they
provided substantive evidence regarding how long it would take or how difficult it would be for one
of skill in the art to write a suitable program. While an alleged infringer is not required to put forth
evidence to establish each of the Wands factors in its favor, the failure to put forth evidence
regarding a number of the Wands factors is clearly relevant in determining whether an infringer has
met its evidentiary burden of establishing invalidity by clear and convincing evidence. See Johns
Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1360 (Fed. Cir. 1998). Also, Plaintiff has
demonstrated that there are questions of material fact regarding the Wands factors for which the joint
defendants did proffer some evidence. See supra.

For a majority of the Wands factors, there was either a failure to introduce sufficient evidence
or questions of material fact where evidence was introduced. As a result, the factual underpinnings
required to make an enablement determination have not been resolved. Therefore, this court cannot
hold the ‘318 patent non-enabled as a matter of law. The joint defendants’ Motion for Summary

Judgment of Patent Invalidity Due to Lack of Enablement is denied.

12