The opinion of the court was delivered by: Hon. Ronald A. Guzman United States District Judge
MEMORANDUM OPINION AND ORDER
Kathrein-Werke KG ("Kathrein") has sued Radiacion y Microondas S.A. and RYMSA Micro Communications, Inc. (collectively "RYMSA") for alleged infringement of U.S. Patent No. 6,850,130 ("the '130 Patent"). Before the Court are the parties' cross motions for partial summary judgment. For the following reasons, the Court denies plaintiff's motion and strikes as moot in part, grants in part and denies in part defendants' motion.
Kathrein is in the wireless communications industry and makes and sells cellular antennas and systems, among other products. (Pl.'s LR 56.1(a)(3) Stmt. ¶ 2.) RYMSA also makes and sells antennas and antenna systems. (Defs.' LR 56.1(a)(3) Stmt. ¶ 6.)
The '130 Patent discloses an improved radio-frequency phase shift assembly including at least one further stripline section arranged concentrically with respect to a first stripline section for use in base station antennas for cellular telephone systems. (Defs.' Mem. Supp. Mot. Partial Summ. J., Ex. 5, '130 Patent col. 5, line 61-col. 6, line 19 ("'130 Patent").) It is an improvement over the prior art because, among other reasons, it is a simpler design and allows for higher integration density. '130 Patent col. 2, lines 40-51.
Maximilian Gottl, Roland Gabriel and Mathias Markof are the named inventors of the '130 Patent (collectively hereinafter "the Inventors"). (Pl.'s LR 56.1(a)(3) Stmt. ¶ 22.) The Inventors filed their initial patent application in Germany on August 17, 1999. (Id. ¶ 23.) Less than a year later, on July 27, 2000, the Inventors filed an international patent application under the Patent Cooperation Treaty ("PCT"), which was processed and examined in the European Patent Office ("EPO"). (Id. ¶¶ 24, 25.) *fn1
On February 22, 2001, the Inventors began an international examination of their PCT application at the EPO. (Id. ¶ 25.) On July 25, 2001, the Inventors filed an amendment that included, inter alia, replacement sheets for the specification in response to Examiner A. Kaleve's first written opinion. (Id. ¶¶ 26, 27.) On August 13, 2001, Examiner Kaleve, in his International Preliminary Examination Report ("IPER"), stated that the replacement sheets inappropriately introduced substantive matter that went beyond the disclosure in the international application as filed, and that those parts were not taken into consideration. (Defs.' Claim Construction Br., Ex. 3 - Part 1, IPER, at 89.)
On February 19, 2002, the Inventors began a national examination of their PCT application in the USPTO. (Pl.'s LR 56.1(a)(3) Stmt. ¶ 30.) The May 10, 2002 Notice of Acceptance of Application indicated that the USPTO had received, inter alia, a copy of the PCT application and a copy of the IPER. (Id. ¶ 32.) On May 15, 2002, the Inventors submitted to the USPTO an English language translation of the IPER. (Id. ¶ 33.)
On October 30, 2003, USPTO Primary Examiner Benny Lee issued an Office Action instructing the Inventors to submit a substitute specification because text appeared to be missing from the specification as filed. (Id. ¶ 36.) On March 30, 2004, the Inventors filed a response to Examiner Lee's Office Action, including a substitute specification. (Id. ¶ 39.) The Inventors represented to the USPTO that the substitute specification did not contain new matter. (Id. ¶ 40.) After additional correspondence with the USPTO, the application eventually issued as the '130 Patent on February 1, 2005. (Pl.'s LR 56.1(a)(3) Stmt. ¶ 43.)
Kathrein alleges that RYMSA infringes the '130 Patent. (Id. ¶ 11.) RYMSA has asserted the following defenses and counterclaims: (I) non-infringement of the '130 Patent; (ii) invalidity of the '130 Patent based on §§ 101, 102, 103 and 112; (iii) attorneys' fees pursuant to 25 U.S.C. § 285; and (iv) unenforceability of the '130 Patent due to inequitable conduct during the prosecution of the patent. (Defs.' 1st Am. Answer & 1st Am. Countercls.)
Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ.
P. 56(a). "The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, (1986). Initially, the moving party bears the burden of identifying those parts of the record that establish the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The nonmoving party must go beyond the pleadings and present specific facts to establish that there is a genuine issue of material fact for trial. See Fed. R. Civ. P. 56(e)(2); Celotex, 477 U.S. at 324.
I. RYMSA's Motion for Partial Summary Judgment
RYMSA has moved for partial summary judgment on four issues: (1) Kathrein is not entitled to recover any damages more than a reasonable royalty; (2) damages may only be calculated beginning from May 24, 2007, the date of the complaint; (3) Kathrein's antennas, as depicted in certain engineering drawings, are "prior art" to the '130 patent under 35 U.S.C. § 102(b); and (4) the August 19, 2004 amendments to Claim 1 were substantive and broadened its scope. The parties have stipulated as to the first two issues. (See Pl.'s LR 56.1(b)(3)(B) Stmt. ¶¶ 4, 13.) Therefore, the Court strikes as moot that portion of defendants' summary judgment motion that addresses damages and solely addresses the latter two arguments.
RYMSA moves for summary judgment on the issue of whether certain engineer drawings are prior art. RYMSA attempts to establish that such drawings are prior art in order to establish that the '130 Patent is invalid. (Defs.' Mem. Supp. Mot. Partial Summ. J. 12.) RYMSA claims that Kathrein's engineering drawings are prior art because they have been admitted to be prior art and, alternatively, because antennas embodying the engineering drawings were sold more than a year prior to the filing date of the '130 Patent. (Defs.' Mem. Supp. Mot. Partial Summ. J. 11-12, 18.); see 35 U.S.C. § 102(b).
RYMSA also moves for summary judgment as to whether the amendments made to Claim 1 on August 19, 2004 were improper. (Defs.' Mem. Supp. Mot. Partial Summ. J. 28.) RYMSA claims that the amendments were substantive because they broadened the scope of the claim by allowing more devices to be covered under it after the amendment than before. (Defs.' Mem. Supp. Mot. Partial Summ. J. 28.)
A. Engineering Drawings as Prior Art
RYMSA first contends that engineering drawings discovered during the course of this litigation are prior art because Kathrein tacitly admitted that they are, either during the prosecution of the '130 Patent or during the instant litigation. See 35 U.S.C. § 102. Admissions made in the specification or made during prosecution identifying the work of another is prior art is an admission which can be relied upon for both anticipation and obviousness determinations. Manual of Patent Examining Procedure ("MPEP") § 2129; Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988). Further, it is not "unfair or contrary to the policy of the patent system that . . . [the invention is] judged on obviousness against . . . [the inventor's] actual contribution to the art." In re Fout, 675 F.2d 297, 301 (Fed. Cir. 1982).
The purported admissions are: (1) the similarity between FIG. 1 of the '130 Patent, which is labeled "prior art," and the engineering drawings; (2) one of the Inventors' testimony that the engineering drawings are "prior art"; (3) Kathrein's providing the engineering drawings upon RYMSA's request; and (4) Kathrein's positive response to RYMSA's request to admit ...