United States District Court, N.D. Illinois, Eastern Division
David C. Van Dyke, Joseph W. Barber, Thomas Jefferson Ramsdell, III, Howard and Howard, Chicago, IL, Alyssa Margaret Caridis, Chris Allen Hivick, James Brooks, Michael David Owens, Orrick, Herrington & Sutcliffe LLP, Los Angeles, CA, David E. Wang, Misasha Suzuki, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA, Gino Cheng, Glen Liu, Mark Jonathan Shean, Mark Philip Wine, Thomas S. McConville, Orrick, Herrington & Sutcliffe LLP, Irvine, CA, Robert M. Isackson, Orrick, Herrington & Sutcliffe, New York, NY, for Plaintiff.
James Patrick Bradley, Benjamin B. Kelly, Sidley Austin LLP, Kelley A. Conaty, Kristoffer B. Leftwich,
Mark Alan Dodd, Steven Charles Malin, Vijay D. Desai, Sidley Austin LLP, Dallas, TX, David T. Pritikin, Richard A. Cederoth, Jamie L. Secord, Richard Francis O'Malley, Robert Douglas Leighton, Sidley Austin LLP, Chicago, IL, for Defendants.
MEMORANDUM OPINION AND ORDER
JAMES F. HOLDERMAN, Chief Judge.
Pending before the court is " Tellabs' Motion and Memorandum of Law in Support of Summary Judgment of Invalidity of All Asserted Claims of U.S. Patent No. 5,386,418." (Dkt. No. 384.) For the reasons set forth below, Tellabs' motion is granted.
On January 29, 2008, plaintiff Fujitsu Limited (" Fujitsu" )  filed a Complaint for patent infringement against Tellabs, Inc. and Tellabs Operations, Inc. alleging infringement of U.S. Patent No. 5,386,418 (the " '418 Patent" ). (Dkt. No. 1.) On March 21, 2008, Tellabs filed counterclaims for declaratory judgment of non-infringement of the '418 Patent and for declaratory judgment of invalidity of the '418 Patent. (Dkt. No. 21; see also Dkt. No. 441.) On October 14, 2011, Tellabs filed the pending motion for summary judgment, arguing that the asserted claims, Claims 1 and 6-9 of the '418 Patent, are invalid because they are anticipated by certain alleged prior art and, in the alternative, because they are made obvious by the alleged prior art. (Dkt. No. 384 (" Tellabs' SJ Mot." ).)
Specifically, Tellabs relies on two items of alleged prior art that it identifies as " technical articles authored by former Alcatel engineer Dale Krisher." ( Id. at 2.) These two articles (together " the Krisher Contributions" ) are individually identified as:
• Synchronization Management for Digital Networks, T1 Contribution Doc. No. T1X1.3/91-012 & T1X1.5/91-017 (Jan. 1991) (Tellabs' SJ Mot., Ex. B (" 9/27/11 Krisher Decl." ) Ex. 1 ( " Synchronization Management" ).)
• Synchronization Messages for Digital Networks, T1 Contribution Doc. No. T1X1.3/91-013 & T1X1.5/91-018 (Jan.1991) (9/27/11 Krisher Decl., Ex. 2 ( " Synchronization Messages" ).)
(Dkt. No. 385-9.) It is Tellabs' position that the Krisher Contributions invalidate the '418 Patent, either as anticipated or, in the alternative, as obvious.
Fujitsu argues there is a disputed question of fact whether the Krisher Contributions were published before the August 19, 1991 priority date of the ' 418 Patent, and therefore whether they qualify as prior art under 35 U.S.C. § 102(a). Fujitsu further argues that Tellabs is precluded from relying on the Krisher Contributions together to establish anticipation, because this argument was not set forth in Tellabs' September 29, 2008 invalidity contentions. Finally, Fujitsu argues that the Krisher Contributions cannot be considered prior art because they do not " enable one of ordinary skill in the art to practice the invention without undue experimentation." (Dkt. No. 454 (" Fujitsu's Resp." ) at 26.) 
The court addresses each of these arguments in turn.
Under Federal Rule of Civil Procedure 56(a), 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 court's role in reviewing a motion for summary judgment is simply " to determine based on the record whether there is a genuine issue of material fact requiring trial." Costello v. Grundon, 651 F.3d 614, 636 (7th Cir.2011). In performing this analysis, the court views the evidence in the light most favorable to the nonmovant. Berry v. Chicago Transit Authority, 618 F.3d 688, 691 (7th Cir.2010). The court does not, however, " weigh the evidence or decide which inferences should be drawn from the facts." Costello, 651 F.3d at 636. If there is no genuine issue of material fact requiring trial, summary judgment is appropriate in favor of the movant. Berry, 618 F.3d at 690-91.
While patents are presumed to be valid, claims of patent infringement are subject to the defense of invalidity. 35 U.S.C. § 282. A patent is invalid if its claimed subject matter is anticipated or obvious, as defined by statute. See generally 35 U.S.C. §§ 102, 103. " The presumption of validity ... requires those challenging validity to introduce clear and convincing evidence on all issues relating to the status of a particular ...