Motion for Summary Judgment Based on Insufficient Written Description Denied Where There Were Disputed Issues of Material Fact

November 6, 2013

In this patent infringement action between competing producers of satellites and satellite networking systems, ViaSat plaintiffs asserted that Space Systems/Loral infringed the '875 patent. As explained by the district court, the ViaSat plaintiffs are corporations that develop commercial and military satellite and digital communication technologies. SS/L is a wholly owned subsidiary of Loral, and both SS/L and Loral are also involved in the satellite business. In 2006, ViaSat and SS/L began negotiating over the possibility of collaborating on a major satellite construction project.

SS/L moved for summary judgment arguing that the earliest date at which ViaSat's claims to the '875 Patent had written description support under 35 U.S.C. § 112, ¶ 1 was March 25, 2009. The '875 Patent is a "continuation-in-part" application, and ViaSat argued that it claims priority to a series of provisional applications that it filed in 2006.

As explained by the district court, under 35 U.S.C. § 112, ¶ 1, a patent application may claim priority to and receive the benefit of the filing date of an earlier-filed patent application only if the invention claimed in the later application is fully disclosed in the earlier application.

"The statute provides that a patent's 'specification shall contain a written description of the invention, and of the manner and process of making and using it, 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 connected to make and use the same.' 35 U.S.C. § 112, ¶ 1. The description 'must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.' Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Whether a description in an earlier-filed patent application meets this standard is a question of fact. Id. '[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.' Id. The description need not explicitly claim the invention, but "a description that merely renders the invention obvious does not satisfy the requirement."

In making it motions for summary judgment, SS/L argued that the '875 Patent contained several concepts: (1) a satellite feeder beam that uses a color that is also allocated to a service beam that shares the same color; (2) the feeder beam is not proximate to the service beam that shares that same color; and (3) the feeder beam also is proximate to a different service beam that uses a different color. SS/L argued that the provisional applications leading up to the '875 Patent did not contain these concepts until March 25, 2009, when ViaSat filed Application No. 12411315.

The district court explained that SS/L argued that under Federal Circuit case law, in order to be deemed inherent to the earlier-filed applications, the descriptions in those applications must necessarily include the elements of the asserted claims. "It argues that ViaSat's provisional applications to the '875 Patent do not necessarily include the proximate color concepts that are central to the '875 Patent. SS/L argues further that even if the provisional applications to the '875 Patent make the proximate color concepts obvious to a person skilled in the art, obviousness does not meet the Federal Circuit's standard for written support under Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)."

In response, ViaSat asserted that "whether a patent claim is entitled to the priority date of an earlier application is typically a question of fact. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010). ViaSat presents expert testimony stating that one of skill in the art would understand that the core technology of the '875 Patent is inherent to the provisional applications. (Docs. No. 396 at 4, 400-1.) ViaSat also argues that the provisional applications expressly disclose this technology. (Doc. No. 396 at 10.) In his Declaration, ViaSat's expert Chris G. Bartone states that the provisional applications clearly explain how to configure a satellite so as to achieve the proximate color concepts that the '875 Patent embodies. (Doc. No. 400-1 at 7.) He explains his opinion that it would be "very clear" to one skilled in the art that the inventors of the '875 Patent invented the invention of Claim 1 as of September 26, 2006."

In its analysis, the district court noted that "[t]he date at which a chain of provisional patent applications first contains a written description of a patented technology sufficient to give the inventor priority is a question of fact. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). As SS/L points out, '[c]ompliance with the written description requirement is a question of fact but is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party.' Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1312 (Fed. Cir. 2010) (quoting PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008)). SS/L argues that, in these circumstances, no reasonable fact finder could look at the chain of provisional applications leading up to the '875 Patent and conclude that they expressly or inherently convey the inventions that the '875 Patent claims. (Doc. No. 415 at 6.) But ViaSat's expert, Mr. Bartone, declares that he understands the provisional applications to describe these inventions."

The district court then declined to address issues of credibility and, as a result, denied the motion for summary judgment. "This Court does not make credibility determinations at the summary judgment stage. See, e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Thus, because the parties present conflicting expert testimony on issues of fact material to this motion, the Court denies the motion. See, e.g., Trading Technologies Int'l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1359 (Fed. Cir. 2010) (affirming denial of summary judgment that argued provisional applications did not provide written support for the patent claims at issue because the parties' witnesses disagreed as to whether the descriptions in the earlier applications adequately described the invention)."


ViaSat, Inc. v. Space Systems/Loral, Inc., Case No. 3:12-CV-00260 H (WVG) (S.D. Cal. Oct. 29, 2013)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.