The opinion of the court was delivered by: James F. Holderman, Chief Judge:
MEMORANDUM OPINION OF REASONS FOR DENYING TELLABS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF THE '737 PATENT
On September 27, 2012, this court denied "Tellabs, Inc.'s, Tellabs Operations, Inc.'s, and Tellabs North America, Inc.'s Motion for Summary Judgment of Invalidity of U.S. Patent No. 5,521,737" (Dkt. No. 479), stating, "Based on the materials before the court, the court finds that material disputes of fact exist precluding Tellabs' requested summary judgment that the asserted claims of the '737 Patent were anticipated by the disclosures of the Hicks References (EP654 and the '849 Patent) or rendered obvious by the disclosures of the Hicks References in combination with the disclosures of the [Kinsel] Patent and the knowledge of a person of ordinary skill in the art in August 1989." (Dkt. No. 953 ("9/27/2012 Order").) The following memorandum opinion sets forth the court's analysis with greater amplification.
On January 29, 2008, plaintiff Fujitsu Limited ("Fujitsu")*fn1
filed its Complaint in the Eastern District of Texas against
Tellabs, Inc. and Tellabs Operations, Inc.*fn2
alleging infringement of U.S. Patent No. 5,521,737 (the "'737
Patent"). (Dkt. No. 1.) On March 21, 2008, Tellabs filed counterclaims
for declaratory judgment of non-infringement of the '737 Patent and
for declaratory judgment of invalidity of the '737 Patent. (Dkt. No.
21; see also Dkt. No. 441.) The case was transferred to this court on
July 29, 2009 and was assigned the Norther District of Illinois case
number 09 C 4530. On December 30, 2011, Tellabs filed its "Motion for
Summary Judgment of Invalidity of U.S. Patent No. 5,521,737" (Dkt. No.
479 ("Tellabs' SJ Mot.")), arguing that the asserted claims of the
'737 Patent, Claims 4, 5, 11 and 12, are invalid because those claims
were anticipated by certain alleged prior art or, in the alternative,
because those claims were made obvious by the alleged prior art.
Claims 4 and 11 are independent claims of the '737 Patent, and Claims 5 and 12 depend from Claims 4 and 11, respectively. This court construed the disputed claim terms of the '737 Patent in a memorandum opinion and order previously issued on September 29, 2011. (See Dkt. No. 379 ("9/29/2011 Order") at 52-68 (construing the terms "second optical signal of a second wavelength," "optical coupler," and "branching the second optical signal from the first optical signal").) Set forth below is the relevant claim language of the '737 Patent, with the disputed claim terms emphasized in italics and the court's claim construction inserted in brackets:
4. An optical amplifier for amplifying a first optical signal of a first wavelength and receiving a second optical signal of a second wavelength [a second optical signal of second wavelength that is different from the wavelength of the first wavelength], said optical amplifier comprising: an optical fiber, doped with a rare earth element, having an input and an output; a semiconductor laser emitting a pumping light beam to one of the input and the output of said optical fiber; an optical coupler [a device that combines or splits signals], optically coupled to the input of said optical fiber, for receiving a first optical signal of the first wavelength and a second optical signal of a second wavelength [a second optical signal of second wavelength that is different from the wavelength of the first wavelength] having a different wavelength from the first wavelength, for introducing the first optical signal to the input of said optical fiber, and for branching the second optical signal; and a signal receiver receiving the second optical signal.
5. An optical amplifier according to claim 4, further comprising: a controller, coupled to said signal receiver, to detect information with which the second optical signal is modulated.
* * * 11. A method for amplifying an optical signal comprising the steps of: emitting a pumping light beam; receiving a first optical signal of a first wavelength and a second optical signal of a second wavelength [a second optical signal of second wavelength that is different from the wavelength of the first wavelength]; branching the second optical signal from the first optical signal [splitting the second optical signal from the first optical signal] for receipt by a receiver; and inputting the pumping light beam and the first optical signal to a rare earth element doped optical fiber.
12. A method for amplifying an optical signal according to claim 11, further comprising the step of: processing the second optical signal to detect information carried by the second optical signal. ('737 Patent at col.7 l.65-col.8 l.17; col.9 l.17-col.10 l.8.)
In its motion for summary judgment of invalidity, Tellabs relies on two nearly identical items of alleged prior art identified as "Published European Patent Application No. 0 260 654" ("EP654") and U.S. Patent No. 4,768,849 (the "'849 Patent"). (Dkt. No. 481 ("Tellabs' SJ Mem.") at 3-4.) It is undisputed that EP654 was published on March 23, 1988, and that the '849 Patent was issued on September 6, 1988-both prior to the August 31, 1989 date of invention for the '737 Patent. (Dkt. No. 518 ("Fujitsu's SMF Resp.") ¶¶ 11-14.) It is also undisputed that EP654 and the '849 Patent "contain identical disclosures." (Id. ¶ 19.) For ease of reference, the court therefore adopts Fujitsu's terminology in referring to both prior art references together as the "Hicks References," while recognizing Tellabs' position that each of these references, by itself, functions to anticipate the '737 Patent.*fn3
Tellabs argues that the Hicks References anticipate the asserted claims of the '737 Patent under 35 U.S.C. §§ 102(a), (b) or (e), by explicitly disclosing "each element or step of independent claims 4 and 11 of the '737 Patent" and by inherently disclosing "each additional element or step recited in dependent claims 5 and 12 of the '737 Patent." (Tellabs' SJ Mem. at 1-2.) Tellabs further argues that "each element or step" of the asserted claims of the '737 Patent was rendered obvious under 35 U.S.C. § 103(a) by the disclosures set forth in U.S. Patent No. 3,714,437 (the "Kinsel Patent"),*fn4 which issued on January 30, 1973, in combination with the knowledge of a person of ordinary skill in the art at the time of the claimed invention, e.g. August 31, 1989. (Tellabs' SJ Mem. at 2.)
Fujitsu contends that the Hicks References do not disclose a "second optical signal," a "signal receiver," a separate "optical coupler," or a "controller" within the meaning of Claims 4, 5, 11 and 12 of the '737 Patent, in large part based on Fujitsu's contention that "[t]he Hicks References have nothing to do with signals used internally at an optical amplifier to assist in the amplification operation." (Dkt. No. 515 ("Fujitsu's Resp.") at 18; see also 14-26.) Fujitsu also asserts that "[t]he [Kinsel] Patent supplies nothing to the Hicks References that would lead to obviousness of Claims 4, 5, 11 and 12 of the '737 Patent." (Id. at 28.)
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 non-movant. 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 reference as prior art." Sandt Technology, Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001). "[S]ummary judgment is inappropriate if a trier of fact applying the clear and convincing standard could find for either party." Oney v. Ratliff, 182 F.3d 893, 895 (Fed. Cir. 1999).
The court begins with a brief description of the invention disclosed in the Hicks References. The Hicks References disclose a "filter tap" for use on a "main trunk line carrying optical signals on a plurality of bands" in an optical communications system. ('849 Patent,*fn5 Abstract.) The filter tap is aimed at "removing or injecting signals in a selected band of channels . . . with minimal perturbation of signals in nonselected bands." ('849 Patent at col.1 ll.8-10.)
For example, as disclosed in Figure 1B of the Hicks References (below), an optical "hub or node" 26 consisting of a "plurality of filter taps" 14 acts to remove "several or all of the bands from the [main] trunk line" 12 by directing "[a] different band of channels . . . to each of the branch lines" 16. ('849 Patent at col.4 ll.32-37; see also '849 Patent col.4 ll.17-19 ("Each filter tap 14 removes a selected band of channels from the main trunk line 12 and directs the selected band to a branch line 16.").) "For each filter tap 14, there is an input portion 22 and an output portion 24 of the main trunk line 12." ('849 Patent at col.4 ll.39-41.) "The branch ...