The opinion of the court was delivered by: Hon. Joan H. Lefkow
Before the court is Analog Devices Inc.'s ("ADI") motion for partial summary judgment seeking invalidity of United States Patent No. 8,018,049 ("the '049 patent") under 35 U.S.C. § 102. Knowles Electronics, LLC ("Knowles") alleged that ADI infringed claims 1, 2, 5, 6, 11, 12, 15, 16, and 19 of the '049 patent in this lawsuit.*fn1 The issue presented in ADI's motion is whether the '049 patent is anticipated under 35 U.S.C. § 102 by United States Patent No. 6,324,907 ("Halteren"), which would render the asserted claim invalid.*fn2 For the reasons that follow, ADI's motion is denied.
Summary judgment obviates the need for a trial where 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(a). To determine whether any genuine fact exists, the court must pierce the pleadings and assess the proof as presented in depositions, answers to interrogatories, admissions, and affidavits that are part of the record. Fed. R. Civ. P. 56(c) & advisory committee notes (1963 amend.) While the court must construe all facts in a light most favorable to the non-moving party and draw all reasonable inferences in that party's favor, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986), where a claim or defense is factually unsupported, it should be disposed of on summary judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 323--24, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). Patents are presumed to be valid and the party seeking summary judgment of invalidity "must submit such clear and convincing evidence of facts underlying invalidity that no reasonable jury could find otherwise." TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1340 (Fed. Cir. 2010) (internal quotation marks omitted)."While prior consideration of a reference during prosecution may carry some weight, the burden to prove invalidity does not change; at all times, it remains a showing 'by clear and convincing evidence.'" OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 705 (Fed. Cir. 2012) (quoting Microsoft Corp. v. i4i Ltd. P'ship, - - - U.S. - - - -, 131 S. Ct. 2238, 2242, 180 L. Ed. 2d 131 (2011)).
The '049 patent, titled "Silicon Condenser Microphone and Manufacturing Method," claims a silicon condenser microphone package and a method for manufacturing microphone packages. The packaging provides protection for microelectromechanical system (MEMS) microphones by encapsulating the device. MEMS microphones represent the latest state of the art and were an improvement over earlier large and expensive microphones. (Bottoms Decl. ¶¶ 17--18.) The advanced MEMS microphones are included in products such as hearing aids, cell phones, computers, cameras, automobiles, and other consumer and industrial applications. (Bottoms Decl. ¶ 18.)
The internal structure of MEMS microphones are sensitive to external stresses. (Egolf Decl. ¶ 24.) The MEMS microphone silicon diaphragm is one one-hundredth the thickness of a piece of paper and is also glass-like, brittle, and subject to rupture. (Id. ¶ 38.) External stresses resulting from shock, vibration, or bending of the product, or other phenomena such as the product being assembled, dropped, or even carried while jogging could damage the microphone. (Id. ¶ 24.) External stresses can also rupture the glass-like, brittle diaphragm of the MEMS microphone and adversely affect the sound performance of the microphone. (Id. ¶ 25.)
The packaging of the MEMS microphone has to provide protection from external mechanical stresses in addition to protecting the device from dust, light, and electromagnetic interference. (Egolf Decl. ¶ 24; Bottoms Decl. ¶ 19.) The geometric properties of the package also must be maintained. (Egolf Decl. ¶ 26.) For example, altering the size or shape of the small volumes on the front and back cavities of the microphone and the clearance between the diaphragm and back plate can disable the microphone. (Id.) Vibration of the microphone package can also produce high levels of background noise making speech communication difficult or impossible. (Id.) The packaging for these microphones are expensive and typically account for 50 percent to 90 percent of the cost. (Bottom Decl. ¶ 19.)
The '049 patent's disclosed method for manufacturing a silicon condenser microphone allows for mass production. (Bottoms Decl. ¶ 21.) This disclosed method reduces both the cost for the package and assembly. (Id.) The '049 patent also features a package that is able to withstand significant heat while also providing shielding against light, physical damage, and electromagnetic interference. (Id. ¶ 22) In addition, the '049 patent discloses a smaller package, which allows greater size flexibility when placing the package in products. (Id.) The components can be mounted in the package at high volume with a low cost while using the existing infrastructure. (Id.)
II. History of the Proceedings
In November 2009, Knowles filed suit against ADI asserting infringement of United States Patents Nos. 6,781,231 ("the '231 patent") and 7,242,089 ("the '089 patent") in the United States District Court for the Northern District of Illinois (case number 09 C 6238). In December 2009, Knowles requested that the United States International Trade Commission ("ITC") initiate a patent infringement investigation against ADI with regard to the '231 and '089 patents. The ITC began its investigation against ADI as Inv. No. 337-TA-695 ("the 695 Proceedings"). On November 22, 2010, the administrative law judge in the 695 Proceedings found that Halteren anticipated the '231 patent but did not anticipate the '089 patent.*fn4 On September 27, 2011, Knowles voluntarily dismissed case number 09 C 6239 and filed the present suit against ADI alleging infringement of the '049 patent.*fn5
The '049 patent issued on September 13, 2011 and stems from application Number 09/886,854 ("the '854 application") filed on June 21, 2001. The '089 patent also originated from the '854 application. During the prosecution of the '049 patent, the PTO examiner considered Halteren and allowed the asserted claim of the '049 patent. The '049 patent and the '231 patent come from different patent families. The '049 patent is, however, subject to a terminal ...