MEMORANDUM OPINION
Before the Court is plaintiffs’ Motion for Summary Judgment of Invalidity [Dkt. No. 109] (“Motion for Summary Judgment”). For the reasons that follow, the motion will be granted.
I. BACKGROUND
Plaintiffs DeLorme Publishing Company, Inc. and DeLorme Inreach, LLC (collectively “DeLorme”) brought this action against defendant BriarTek IP, Inc. (“BriarTek”)
DeLorme and BriarTek, Inc.
In 2011, BriarTek was awarded the '380 Patent for an invention titled “Global Bidirectional Locator Beacon and Emergency Communications System.” The invention is described as “a simple text messaging device that uses commercial satellite infrastructure to send and receive short text messages in the event of an emergency.” '380 Patent col. 3 lines 58-62. Figure 1 of the'380 Patent illustrates a preferred embodiment оf the invention:
Figure 1 shows a user unit [2] in communication with a monitoring system [3] through a satellite network [10]. '380 patent col. 4 lines 25-43.
On August 17, 2012 BriarTek filed ITC investigation No. 337-TA-854, alleging that DeLorme’s InReachTM devices infringed the '380 Patent. DeLorme’s Answer ¶ 24. Over BriarTek’s objection, the ITC terminated the investigation after De-Lorme consented on March 7, 2013 to an order in which it agreed not to sell or offer for sale within the United States after importation any devices that infringe claims 1, 2, 5, 10-12, or 34 of the '380 Patent. Id. The consent order terminated the investigation before the Administrative Law Judge (“ALJ”) made a determination regarding the validity of the '380 Patent. On June 9, 2014 the ITC found that De-Lorme violated the consent order and imposed a civil penalty of $6,242,500. Notice of International Trade Commission’s Issuance Of Civil Penalty [Dkt. No. 163] at 2.
DeLorme filed the instant declaratory judgment complaint on May 28, 2013. After BriarTek’s Motion to Dismiss was denied, it filed an answer and counter-claim. DeLorme has moved for summary judgment, to which BriarTek has responded, and DeLorme has filed a reply. [Dkt. Nos. 110,139, and 140].
A. Prosecution History of the '380 Patent
The '380 Patent issued from United States Patent Application No. 11/698,434 (the “'434 Application”), which was filed on March 7, 2007 and claimed priority to Provisional Application No. 60/788,411 (“the Provisional Application”), filed on March 30, 2006.
[a]n emergency monitoring and reporting system, comprising:
a user unit; and
a monitoring system;
wherein the user unit includes an input device, a user satellite communication system, and a user processor com-municatively coupled tо the input device and the user satellite communication system;
wherein the monitoring system includes a monitoring satellite communication system, an output device, and a monitoring processor communicatively coupled to the monitoring satellite communication system and the output device;
and wherein the user satellite communication system and the monitoring satellite communication system are adapted for mutual communication via a satellite network such that the output device can present information to an observer, wherein the information corresponds to information entered at the input device, Id.
The United States Patent and Trademark Office (“USPTO”) rejected all proposed claims of the '434 application as anticipated by United States Patent Application Publication No. 2006/0007038 (“Bol-ing”). DSB Dee. Exs. 2, 3. The applicants then proposed claim amendments which they argued distinguished their invention from Boling. Specifically, they added the limitation “wherein the input device includes a text entry device adapted to receive textual data entered by a user” to the original language of claim 1. Id. Ex. 4.
The USPTO rejected the amended claims as obvious over Boling in light of United States Patent No. 5,914,675 (“Tog-nazzini”). Id. Exs. 5, 6. The applicants argued in response that the amended claims were not obvious because
the claimed invention is an improvement on the Boling et al. system in that it provides capabilities beyond those suggested or contemplated by Boling et al., even considering the availability of text-messaging hardware such as that, disclosed by Tognazzini. That is, the Boling et al. system is not reasonably capable of being modified to allow for detailed text messaging, and therefore any teaching related to the transmission of text messaging cannot be applied to the Boling et al. system, and any such attempt would be unworkable absent substantial re-design on the order of patentable effort.
DSB Dec. Ex. 7. The USPTO later issued the '380 Patent. Id. Ex. 8.
B. The '380 Patent
BriarTek alleges that DeLorme infringes claims 1, 2, 5-12, 17, 34, and 35 of the '380 Patent. Although the “Background of the Invention” describes allowing a traveler to contact rescue authorities when “outside of the range of traditional telephones, cellular phones, or radios,” '380 Patent col. 1 lines 22-23, the claims
[a]n emergency monitoring and reporting system, comprising:
a user unit; and
a monitoring system;
wherein the user unit includes an input device, a user satellite communication system, and a user processor com-municatively coupled to the input device and the user satellite communication system;
wherein the monitoring system includes a monitoring satellite communication system, an output device, and a monitoring processor communicatively coupled to the monitoring satellite communication system and the output device;
wherein the user satellite communication system and the monitoring satellite communication system are adapted for mutual communication via a satellite network such that the output device can present information to an observer, wherein the information corresponds to information entered at the input device;
and wherein the input device includes a text entry device adapted to receive textual data entered by a user.
'380 Patent col. 8 lines 2-23.
In essence, claim 1 discloses a system consisting of two components, a user unit (Figure 1[2]) and a monitoring system (Figure 1[3]), that send text messages to each other via a satellite network (Figure 1[10]). Id. There is no limitation on the size, shape, or form of the user unit or the monitoring system in the claim language or the patent specification. DSB Dec. Ex. 10 (Deposition of Paul Gregory Steffes) (“Steffes Dep.”) at 30, 36, 44.
As shown in the following chart, each of the asserted dependent claims adds various elements to the system disclosed in claim 1:
Claim 2 “The system of claim 1, wherein the user unit is adapted to be coupled to a _user.”_
Claim 5 “The system of claim 1, wherein the user unit further includes a memory device in communication with the user processor, and the input device includes an actuator that when selected accesses message data stored in the memory __device.”_
Claim 6 “The system of claim 5, wherein selection of the actuator causes the accessed message data to be transmitted by the user satellite communication system to _the monitor satellite communication system via the satellite network.”_
Claim 7 “The system of claim 6, wherein the message data includes a plurality of instances of message data, wherein each data instance of said plurality of data _instances is stored in a respective selectablе portion of the memory device.”
Claim 8 “The system of claim 7, wherein the input device includes a selection device that is adapted to select one message data instance from among the plurality of data instances, wherein the selected one message data instance is transmitted by the _user satellite communication system on selection of the actuation device.”
Claim 9 “The system of claim 8, wherein the selection device is a scrolling device.”_
Claim 10 “The system of claim 1, wherein the user satellite communication system includes a transmitter, and wherein the input device is adapted to receive user data from a user and the user processor is adapted to format the data for _transmission by the transmitter.”_
Claim 11 “The system of claim 10, wherein the monitor satellite communication system includes a receiver that is adapted to receive transmissions from the transmitter via the satellite network, and wherein the monitor processor is adapted toformat the user data received by the receiver for presentation to the observer on _the output device.”_
Claim 12 “The system of claim 11, wherein the output device is adapted to display textual _messages.”_
Claim 17 “The system of claim 1, wherein the user unit further includes a status sensor that is communicatively coupled to the user processor and that provides a status output, wherein the user processor is adapted to format the status output for communication from the user unit to the monitoring systеm via the satellite _network.”_
Claim 34 “The system of claim 1, wherein the satellite network provide [sic] substantially _global coverage.”__;_;_
Claim 35 “A method of providing a travel service, comprising providing the user unit of claim 1 to a user; and monitoring the monitoring system of claim 1.”
II. DISCUSSION
DeLorme moves for summary judgment, arguing that the claims at issue in the '380 ‘ Patent are invalid as anticipated by three prior art references. In the alternative, DeLorme argues that the asserted claims are obvious in light of those same references. DeLorme also argues that the '380 Patent is invalid because it contains inadequate written description of the invention, is directed to unpatentable subject matter, and contains claims which are indefinite. BriarTek responds that the claims are not invalid, and that two of the references that DeLorme cites are not prior art because DeLorme has not presented sufficient proof of public availability before the critical date.
A. Standard of Review
Summary judgment is appropriate where the record demonstrates “that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R.Civ.P. 56(c). A genuine issue of material fact exists “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc.,
The Court must view the record in the light most favorable to the nonmoving party, see Bryant v. Bell Atl. Md., Inc.,
B. Availability of Prior Art
Before determining whether a reference invalidates a claim, the Court must first determine whether the reference is avail
BriarTek has not contested de Vries’ availability as prior art, see BriarTek IP, Inc. and BriarTek, Inc.’s Opposition [Dkt. No. 139] (“BriarTek Opp’n”), given that it was published on June 10, 2004; however, BriarTek contends that DeLorme has presented insufficient evidence that ORB-COMM and the Motorola Manual were published before the effective filing date of the '380 Patent, and previously moved to strike those references as prior art. See id. at 18-19 (ORBCOMM), 25-26 (Motorola Manual). BriarTek’s Motion to Strike those references was argued in open court and denied from the bench. Order Denying Motion to Strike [Dkt. No. 138]. To ensure the clarity of the record, BriarTek’s arguments are addressed here.
“Whether a reference was published prior to the critical date, and is therefore prior art, is a question of law based on underlying factual questions.” TypeRight Keyboard Corp. v. Microsoft Corp.,
1. Motorola Manual
BriarTek has not raised a material •factual dispute regarding whether the Motorola Manual was available to the public; instead, it merely makes the assertion that “there is no evidence presented that the document was publicly available.” Briar-Tek Opp’n at 25. That argument fails for several reasons. First, the manual itself bears a copyright date of 1999. Motorola Manual at 115. Moreover, DeLorme deposed Eva Valentine, the person who created the Motorola Manual. DSB Dec. Ex. 15 at 5-6. Ms. Valentine testified that the Motorola Manual was distributed “with the actual, physical product.” Id. at 9. Members of the public could also receive a copy via CD-ROM, downloading over the Internet, or by calling Motorola. Id. at 10-14.
BriarTek does not present any evidence to rebut Ms. Valentine’s statements, instead simply asserting that “[t]here is no evidence presented that the document was publicly available.” BriarTek Opp’n at 25. Such lawyer argument does not create a factual dispute. In light of the copyright date on the Motorola Manual and the un-controverted testimony of Ms. Valentine, there is no genuine dispute of material fact regarding the public availability of the Motorola Manual. Therefore, as a matter of law, the Motorola Manual is a qualifying printed publication under 35 U.S.C. § 102.
2. ORBCOMM
BriarTek has also failed to raise a material factual dispute regarding whether ORBCOMM was available to the public, again merely arguing that “[t]here is no evidence that [ORBCOMM] was publicly available.” BriarTek Opp’n at 18. That argument was contradicted by BriarTek’s own expert, who stated that he believed that ORBCOMM was published in 1995. Steffes Dep. at 10. Further, ORB-COMM’s corporate representative, Donald Brickerd, Jr., stated in his deposition that ORBCOMM was published in 1995. DSB Dec. Ex. 12 at 9.
By failing to come forward with any evidence, in the form of'declarations, depositions, or documentation, indicating that ORBCOMM was not publicly available, BriarTek has failed to rebut the evidence of prior publication. Therefore, as a matter of law, ORBCOMM is also a qualifying printed publication under 35 U.S.C. § 102.
Because de Vries, the Motorola Manual, and ORBCOMM were all available as printed publications more than one 'year before Oct. 4, 2006 (the effective filing date of the '380 Patent), as a matter of law each of the three references qualifies as prior art under 35 U.S.C. § 102(b).
C. Claim Construction
“The first step in any invalidity analysis is claim construction.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
Solely for the purposes of evaluating the summary judgment motion, this Court will adopt the constructions that the parties agreed to before the ITC. To ensure the clarity of the record, those constructions are set forth below.
Claim Number Claim Term_Agreed Construction_
Claim 1 “a user processor communicatively “an apparatus on or in the user decoupled” vice that processes data or information, and transmits the data or information between the input device and the user satellite communication system!]_
“an apparatus on or in the monitoring system that processes data or information between the output device and the monitoring satellite system!]_ “monitoring processor communica-tively coupled”
“adapted for mutual communication “configured for two-way communica-via a satellite network” • tion via the satellite communications _network.”_
“adapted to receive textual data en- “configured for entry of text mes-_tered by a user”_sages by the user.”_
Claim 2 “adapted to be coupled to a user” “configured for physically coupling _or tethering to a user.”_
Claim 5 • “memory device in communication “memory chipset or circuitry that is with the user processor” _ accessed by an apparatus on or in the user device that processes data ■_._or information.”_
“an actuator that when selected ac- “a key or button that accesses mes-eesses message data stored in the sage data stored on the memory _memory device”_chipset or circuitry.”_
Claim 10 “adapted to format the data for “configured for processing the data • transmission”for transmission.”
The parties dispute the meanings of a number of claim terms. See DeLorme’s Claim Construction Brief at 11-22 (listing both proposed сonstructions). For the purposes of .evaluating this motion, Briar-Tek’s proposed constructions are adopted. Those constructions are set forth below,
Claim Number Claim Term_BriarTek’s Construction_
Claim 1 “An emergency monitoring and re- “a system for observing and check-porting system.”8 é ing the progress as well as providing
an account of individuals operating in serious or unexpected conditions.”
“user unit” “a device or equipment used by a user.”
“monitoring system” “a communications system to check on the progress of a user and to receive information from the user.”
“input device” “a thing adapted for receipt of data.”
“text entry device” “keypad or virtual keyboard capable of entering detailed te[x]t messages.”
“user satellite communication system” “the transmitter, receiver, and antenna necessary for mutual communication via a satellite network.”9
“monitoring satellite communication system” “the transmitter, receiver, and antenna necessary for mutual eommu-nication via a satellite network.”
“output device” “a device or equipment that is capable of displaying data and information.”
“output device can present information to an observer that corresponds to information entered at the input device” “the output device displays textual messages and/or audio messages, corresponding to the format of the message sent by the user unit, and the information displayed matches or agrees almost exactly with the information input.”
Claim 5 “actuator” • “a switch, button, or virtual button.”
Claim 8 “selection device” “a mechanism that accesses a plurality of data, including a scrolling device.”
Claim 12 “wherein the output device is adapt- , • ed to display textual messages” “the output device displays the text messages that matches or agrees- almost exactly with the information input by the user.”
Claim 17 “status sensor” “a device or process that determines the presence or absence of a parameter.”
D. Level of Ordinary Skill in the Art
Although BriarTek emphasizes the “[n]eed for [e]vidence on [o]ne of Mrdi-nary [s]kill in the [a]rt,” BriarTek’s Claim Construction Brief at 3, BriarTek does not identify any issue in the instant motion where resolving the level of ordinary skill in the art makes a difference. See Briar-Tek Opp’n. For example, nowhere does BriarTek argue that the claims would be obvious to a person of the experience described by DeLorme, but would not be obvious to a person of the experience described by BriarTek. Indeed, it would seem that BriarTek’s proposed person of ■ordinary skill is more likely to find the patent invalid because BriarTek’s person of ordinary skill has more education and experience than DeLorme’s. For the purposes of resolving DeLorme’s summary judgment motion, the Court adopts Briar-Tek’s definition of a person of ordinary skill in the art.
E. Anticipation
Because patents are entitled to a presumption of validity by virtue of their approval by the USPTO, a challenger must prove invalidity by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, — U.S. —,
“Anticipation is a question of fact.” Glaverbel Societe Anonyme v. Northlake Mkting. & Supply, Inc.,
1. De Vries
Patent Application Publication No. 2004/0111195 to Jeroen Joost de Vries et al., titled “Systems and Methods for Marine Satellite Monitoring,” describes a “service for tracking information relating to the location and condition of boats, as well as other information useful to boaters.” De Vries ¶ [0002], “In one embodiment, the invention includes a marine tele-matics system comprising a satcom unit on a boat ... for sending and receiving signals to a land-based center of operations.” Id. ¶ [0009]. “The signals may ... include speech or text signals from the boater to the land-based center of operations or speech or text signals from the land-based center of operations to the boater.” Id. The speech and text communications may be sent between the user unit on the boat and the land-based center of operations via satellite. Id. ¶ [0036]. As a matter of law and as shown in the following tables, de Vries anticipates claims 1, 5-12,17, 34, and 35 of the '380 Patent.
i. Claim 1
'380 Patent Claim 1 De Vries
“An emergency monitoring and reporting system” “The marine telematics system of the invention may include components that ensure a boater’s safety by providing support in the case of emergencies and guidance in case the boater becomes lost,” and allows for “contacting a local emergency response authority, such as harbor police or the Coast Guard.” De Vries ¶¶ [0008], [0010], The system allows for detection of events and “handling of situations which may arise while the boat is in use or at dock.” See also Zancho Opening Report ¶ 133.
“comprising: a user unit” “Marine SatCom Unit 506(MSU)” in de Vries Figures 5A and 5B, and related description in ¶¶ [0044]-[0046]. The unit “may provide a means for sending and receiving communications via communications satellites. The communications can be text, data, spoken, or any other form of communication.” Id. See also Zancho Opening Report _¶ 135._
“comprising. . .a monitoring system” The system includes a “land-based center of operations. . .that is manned by a land-based systems operator who monitors incoming signals and messages” and exchanges “speech and text signals” with the boater. Id. ¶ [0009]. “Once the message has been received, the land-based system operator can send a receipt signal.” Id. ¶ [0033]. The land-based center of operations “receiv[es] signals. . .from a boat equipped with a satcom unit. . .send[s] signals from the land-based center of operations to the boat indicating that the signals have been received, and update[es] a database containing information about the position of the boat.” Id. ¶ [0010]. The signals “may include instructions for responding to events on the boat that are detected by one or more sensors on the boat.” Id. See also Zancho Opening Report ¶ 138.
“wherein the user unit includes an input device” The user unit includes a keypad including “buttons 176 for scrolling through text appearing in the text window 174 and buttons 178 for scrolling through menu options.” There may also be “a button 180 for selecting a function,” de Vries ¶¶ [0035]-[0037], and “[t]he boater may select one of a preset number of canned text messages to send using the scroll 176, menu 178, and select 180 buttons.” id.; See also Zancho Opening Report ¶ 136. '
“wherein the user unit include. . .a user satellite communication system” “[A]ll communications between the boat and the land-based Center are via the Marine SatCom Unit (MSU), communicating with satellites.” De Vries ¶ [0044], See also Zancho Opening Report ¶ 137.
“wherein the user unit includes. . .a user processor communicatively coupled to the user device and the user satellite communication system” “The invention may further include a computer connected to a communications! network. . .In one embodiment, information from the computer is received over the communications network,” de Vries ¶ [0009], and “the operator module could be a computer such as a laptop computer, or a handheld device, such as a PDA.” Id. ¶ [0039]. Further, “a processor is necessary for the Operator’s Module to execute t[he] functions of the operators module’M.e., the processor is inherent. Zancho Opening Report II137.
“wherein the monitoring system includes a monitoring satellite communication system” “[T]he land-based operations center [can] send text messages to the boater via satellite data transmission.” De Vries ¶ [0036]. See also Zancho Opening Report ¶ 138.
“wherein the monitoring system includes, output device” . .an “[T]he land-based operations center [can] send text messages to the boater via satellite data transmission,” de Vries ¶ [0036], and the boater can “communicate with the land-based operations center or with friends or family via text messages.” Id. ¶ [0037], Cоmmunicating via text messages requires being able to see those messages. See also Zancho Opening Report ¶ 139.
“wherein the monitoring system includes. . .a monitoring processor communicatively coupled to the monitoring satellite communication system and the output device” “[T]he land-based operations center [can] send text messages to the boater via satellite data transmission.” De Vries ¶ [0036], See also Zancho Opening Report ¶ 138.
“wherein the user satellite communication system and the monitoring satellite communication system are adapted for mutual communication via a satellite network” “[T]he land-based operations center [can] send text messages to the boater via satellite data transmission.” De Vries ¶¶ [0033], [0034], [0036], See also Zancho Opening Report ¶ 138.
“such that the’ output device can present information to an observer, wherein the information corre-' sponds to information entered at the input device” The boater can “communicate with the land-based operations center or with! friends or family via text messages.” De Vries ¶¶ [0033H0034] and [0037], See also Zancho Opening Report ¶¶ 138-40.
“and wherein the input device includes a text entry device adapted to receive textual data entered by a user.” ”[T]he operator unit may further comprise a keypad. . .that allows composition of text messages while the boater is underway, which may then be sent in the same manner as any canned messages.” De Vries V [0037]. See also Zancho Opening Report ¶ 140.
BriarTek does not dispute that de Vries teaches the vast majority of claim 1. See BriarTek Opp’n at 23. BriarTek only argues that de Vries does not anticipate claim 1 because de Vries “disclosfes] a system in which canned messages can be
BriarTek’s argument is unconvincing for several reasons. Neither BriarTek nor Dr. Steffes, their expert, explain why the communication process employed by de Vries differs from the claimed process. BriarTek Opp’n at 23; Rebuttal Expert Report of Paul G. Steffes On Behalf Of BriarTek Inc. And BriarTek IP. Inc. [Dkt. No. 154] Ex. 11 (“Steffes Rebuttal Report”) at 8. As such, the argument amounts to a conclusory statement of validity, which cannot prevent summary judgment. Krippelz,
Even if BriarTek were correct in arguing that the system of de Vries is different from “mutual communication using detailed text messages,” “using detailed messages” is not an element in claim 1 of the '380 Patent. The word “detailed” does not appear in any claim in the '380 Patent, and BriarTek does not dispute that de Vries teaches mutual communication. Moreover, the written description of the '380 Patent focuses the invention on “sendpng] and receiving] short text messages.” '380 Patent col. 3 lines 58-62 (emphasis added). Thus, BriarTek directs its sole argument that de Vries does not anticipate claim 1 to a feature not present in the claim. Presenting argument regarding unclaimed fеatures cannot prevent summary judgment. King Pharms.,
Accordingly, BriarTek does not raise a material dispute regarding the validity of claim 1. As de Vries teaches, expressly or inherently, each and every feature of claim 1, the claim is invalid as anticipated by de Vries.
ii. Claims 5-9
'380 Patent Claim 5 De Vries
“The system of claim 1, wherein the user unit further includes a memory device in communication with the user processor” “The boater may select one of a preset number of canned messages to send . . . These canned text messages may be preset by the boater before the voyage.” De Vries ¶ [0037]. For the messages to be pre-set, they must be stored, which necessarily means that a memory device is needed. Zancho Opening Report ¶ 142.
“and the input device includes an actuator that when selected accesses message data stored in the memory device.”11 “The boater may select one of a preset number of canned text messages to send using the scroll 176, menu 178, and select 180 buttons.” De Vries ¶ [0037]. See also Zancho Opening Report ¶ 142.
'380 Patent Claim 6 De Vries
“The system of claim 6, wherein selection of the actuator causes the accessed message data to be transmitted by the user satellite communication system to the monitor communication system via the satellite network.” “When the emergency button 110 is pressed, a visual signal 120. . .may be provided. . .to indicate that. . .the emergency transmission is being sent.” De Vries ¶ [0028]. “Pressing the emergency button 110 may automatically activate an automated position report function. The automated position report functiоn may then send a report of theboat’s position to the land-based system operator.” Id. ¶ [0029], Further, “[t]he boater may select one of a preset number of canned text messages to send using the scroll 176, menu 178, and select 180 buttons.” Id. ¶ [0037]. See also Zancho Opening Report ¶ 143.
'380 Patent Claim 7 De Vries
“The system of claim 6, wherein the message data includes a plurality of instances of message data, wherein each data instance of said plurality of data instances is stored in a respective selectable portion of the memory device.” “The boater may select one of a preset number of canned text messages to send using the scroll 176, menu 178, and select 180 buttons.” De Vries ¶ [0037]. See also Zancho Opening Report ¶ 144.
'380 Patent Claim 8 De Vries
“The system of claim 7, wherein the input device includes a selection device that is adapted to select one message data instance wherein the selected one message data instance from among the plurality of data instances, is transmitted by the user satellite communication system on selection of the actuation device.” “The boater may select one of a preset number of canned text messages to send using the scroll 176, menu 178, and select 180 buttons.” De Vries ¶ [0037]. See also Zancho Opening Report ¶ 145.
'380 Patent Claim 9 De Vries
“The system of claim 8, wherein the selection device is a scrolling device.” “The operator module may include buttons 176 for scrolling through text appearing in the text window 174 and buttons 178 for scrolling through menu options,” de Vries ¶ [0035], and “the boater may select one of a preset number of canned text messages to send using the scroll 176, menu 178, and select 180 buttons.” Id. ¶ [0037]. See also Zancho Opening Report ¶ 146.
Taken together, claims 5-9 describe sending and receiving preset messages. BriarTek does not dispute that de Vries teaches the majority of the limitations of claims 5-9. See BriarTek Opp’n at 24. BriarTek only argues that de Vries is limited to teaching canned messages or detailed messages, but cannot teach both. Id. at 24; BriarTek Opp’n Att. 2 (“Steffes Dec”) ¶ 67. BriarTek - does not explain why a device could not send both types of messages. Contrary to BriarTek’s argument, de Vries specifically states that “[t]he boater may select one of a preset number of canned text messages to send using the scroll 176, menu 178, and select 180 buttons ... the operator unit may further comprise a keypad ... that allows composition of text messages while the boater is underway.” De Vries ¶ [0037] (emphasis added). Thus, de Vries specifically teaches that a boater can either (1) select a preset message to send or (2) compose customized text messages while underway. BriarTek cannot create a material dispute by simply “submitting an expert declaration that something is black when the moving party’s expert says it is white; there must be some foundation or basis for the opinion.” Invitrogen Corp.,
in. Claims 10 and 11
'380 Patent Claim 10 De Vries
“The system of claim 1, wherein the user satellite communication system13 includes a transmitter, and wherein the input device is adapted to receive user data from a user and the user processor is adapted to format the ‘trаnsmitter.” “[T]he boater [can] communicate with the land-based operations center or with friends or family via text messages,” de Vries ¶ [0037], and the messages are sent “via satellite data transmission.” Id. [0036]. See also Zancho Opening Report ¶ 147-48.
'380 Patent Claim 11 De Vries
“The system of claim 10, wherein the monitor satellite communication system includes a receiver that is adapted to receive transmissions from the transmitter via the satellite network, and wherein the monitor processor is adapted to format the user data received by the receiver for presentation to the observer on the output device.” “[T]he boater [can] communicate with the land-based operations center or with Mends or family via text messages,” de Vries ¶ [0037], and the messages are sent “via satellite data transmission.” Id. ¶’[0036]. See also Zancho Opening Report ¶ 147-48.
BriarTek argues that “de Vries is using pre-programmed messages which would not disclose detailed text messages and would not disclose the need to change the format of the data.” BriarTek Opp’n at 25. Contrary to BriarTek’s argument, claims 10 and 11 of the '380 Patent do not require the processor to change the format of the data, but rather merely provide that the processor “format[s] the data for transmission.” Because BriarTek argues regarding limitations which are not present in claims 10 or 11, BriarTek does not create a material dispute. King Pharms.,
iv. Claim 12
'380 Patent Claim 12 De Vries
“The system of claim 11, wherein the output device “[T]he boater [can] communicate with the land-is adapted to display textual messages.” based operations center or with Mends or family via text messages,” de Vries ¶ [0037], and the messages are sent “via satellite data transmission.” Id. ¶ [0036], See also Zancho Opening Report ¶ 147-48.
BriarTek does not • specifically dispute that de Vries anticipates claim 12. See BriarTek Opp’n at 23-25.
v. Claim 17
'380 Patent Claim 17 De Vries
“The system of claim 1, wherein the user unit further includes a status sensor that is communica-tively coupled to the user processor and that provides status output, wherein the user processor is adapted to format the status output for communication from the user unit to the monitoring system via the satellite network.” “When the water level sensor detects. . .a water level in the bilge area where it should not be, indicating that the boat is taking on water, [the sensor] may send a signal to the operator module, which may then. . .send a signal to the land-based system.” De Vries ¶ [0037]. See also Zancho Opening Report ¶ 150.
BriarTek argues that the sensor in de Vries is not coupled to the user processor and that the processor does not format the data, for communication; however, Briar-Tek does not set forth facts regarding why that would be the case, оr how de Vries’ system would operate without a processor or data formatting. See BriarTek Opp’n at 25. Thus, BriarTek’s arguments amount to a conclusory allegation that cannot prevent summary judgment. Krippelz,
vi. Claim 8b.
'380 Patent Claim 34 De Vries
“The system of claim 1, wherein the satellite network provide[s] substantially global coverage” The system uses “Global Positioning Systems (GPS) [which] are worldwide satellite based navigation systems.” See also Zancho Opening Report ¶151.
BriarTek argues that de Vries only expressly addresses use^ by boats, that de Vries does not describe coverage of land masses, and therefore de Vries “teach[es] against coverage on land masses.” BriarTek Opp’n at 25. This argument fails for numerous reasons. First, “[Reaching away is irrelevant to anticipation.” Seachange Int’l., Inc. v. C-COR, Inc.,
vii. Claim 35
'380 Patent Claim 35 De Vries
“A method of providing a travel service, comprising providing the user unit of claim 1 to a user, and monitoring the monitoring system of claim 1.” “The data may include trip planning information such as the coordinates of waypoints, or the data may indicate the coordinates of a geofence.” De Vries ¶ [0010], See also Zancho Opening Report ¶ 152.
BriarTek does not specifically dispute that de Vries anticipates claim 35. See BriarTek Opp’n at 25; Steffes Dec. ¶ 71-72 (addressing claim 34, and then moving to the next reference).
For the foregoing reasons, claims 1, 5-12, 17, 34, and 35 of the '380 Patent are invalid as anticipated by de Vries.
DeLorme argues that de Vries teaches the '380 Patent’s claim 2, that “the user unit is adapted to be coupled to a user,” because de Vries teaches at [0039] that “the operator module could be a computer such as a laptop computer, or a handheld device such as a PDA.” As PDAs “commonly include belt clips, lanyards, carabineers, or other fasteners that can connect the unit to the user,” DeLorme Br. Att. 19 (“Zancho Dec”) ¶ 26, DeLorme argues that de Vries inherently teaches that the user unit may be “adapted to” or “configured to” be coupled to the user. DeLorme Br. at 16-17. Although Briar-Tek does not respond to DeLorme’s argument that de Vries’ teaching of a PDA satisfies the “coupling” element, see Briar-Tek Opp’n at 23, “anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp.,
2. ORBCOMM
Titled “ORBCOMM PCS Available Now!” and written by Todd Hara of Orbital • Communications Corporation, ORB-COMM was published in Volume 2 of the 1995 IEEE Military Communications Conference Record. ORBCOMM describes a system which “can provide the United States Armed Forces with two-way on-the-move data messaging anywhere in the world” using “light-weight and pocket-sized” subscriber communicators which send messages via satellite. § 1.0. Figure 1 illustrates the system as used to facilitate military operations:
Figure 1. The ORBCOMM System Supports US Armed Forces Mission Applications
Figure 3-2 illustrates the technical implementation.
Figure 3-2 i Ilústrales the technical implementation:
[[Image here]]
Figure 3-2. ORBCOMM System Components
One embodiment of the ORBCOMM system allows for more effective search and rescue operations. § 2.1.2. “The ORB-COMM system can effectively and inexpensively provide world-wide continuous Combat Search and Rescue ... The
As a matter of law and as shown in the table under each subheading. ORB-COMM anticipates claims 1, 2, 17, 34. and 35 of the. '380 Patent.
i. Claim 1
'380 Patent Claim 1 ORBCOMM
“An emergency monitoring and reporting system” “US Armed forced can use the ORBCOMM system for. . .search and rescue,” ORBCOMM § 1.0, and “[t]he ORBCOMM system can effectively and inexpensively provide world-wide continuous Combat Search and Rescue.” Id. § 2.1.2. See also Zancho Opening Report ¶ 156.
“comprising: a user unit” “Thousands of messages have been sent to and from the satellites using Subscriber Communicators (SCs) (user terminals) to other SCs, Internet mail, fax machines, and pagers.” ORBCOMM § 1.0. See also id. Fig. 3-2; Zancho Opening Report ¶ 157.
“comprising. . .a monitoring system” “[G]round segment,” “network control center,” and “satellite control center” allow monitоring of the SCs. ORBCOMM §§ 3.1.2-3.1.2.4. See also id. § 1.0: Zancho Opening Report ¶ 161.
“wherein the user unit includes an input device” “The SCs are compact, light-weight devices with. . .[a] keypad.” ORBCOMM § 3.1.4; Zancho Opening Report ¶ 158.
“wherein the user unit includes. . .a user satellite “The SCs are compact, light-weight devices with. . communication system” ,5-watt transmitters.” ORBCOMM §§ 3.0, 3.1.1.1, and 3.1.4. See also Zancho Opening Report ¶ 158.
“wherein the user unit includes. . .a user pro- ORBCOMM § 3.1.4 (describing operation of the cessor communicatively coupled to the user device SC). See also Zancho Opening Report ¶ 159. and the user satellite communication system”
“wherein the monitoring system includes a moni- “The GES transmits to the satellite. . .[and] re-toring satellite communication system” ceives. . .transmissions from the satellite.” ORB-COMM §§ 3.0.2, 3.1.1.1, and 3.1.2.4. See also Zan-cho Opening Report ¶ 159.
“wherein the monitoring system includes. . .an ORBCOMM § 3.1.2.2 and Fig. 3-2 (showing moni-output device” tor at NCC). See also Zancho Opening Report ¶¶ 160-61.
“wherein the monitoring system includes. . .a “The NCC is comprised of highly available dual monitoring processor communicatively coupled to . processor computers.” ORBCOMM §§ 3.1.2-the monitoring satellite communication system and 3.1.2.4 and Fie. 3-2. See also Zancho Opening the output device” Report ¶ 161.
“Thousands of messages have been sent to and from the satellites using Subscriber Communicators (SCs) (user terminals) to other SCs, Internet mail, fax machines, and pagers,” ORBCOMM § 1.0, the ORBCOMM System can be used for “two-way messaging,” id § 1.1, and “[t]he ORB-COMM System uses a constellation of 36 satellites.” Id. § 3.1.1.1, See also Zancho Opening Report ¶¶ 159,161. “wherein the user satellite communication system and the monitoring satellite communication system are adapted for mutual communication via a satellite network”
. “such that the output device can present informa- The ORBCOMM System can be used for “two-way tion to an observer, wherein the information corre- messaging,” ORBCOMM § 1.1, and “[t]he ORB-sponds to information entered at the input device” COMM System user can compose, transmit, andreceive messages.” Id. § 3.0, Pig. 3-2. See also Zancho Opening Report ¶ 161.
“and wherein the input device includes a text entry The ORBCOMM System can be used for “two-way ' device adapted to receive textual data entered by a messaging.” ORBCOMM § 1.1. See also Zancho user.” ' Opening Report ¶ 161
BriarTek first argues that ORB-COMM does not anticipate claim 1 because ORBCOMM “had latencies of up to several hours per message” and thus “[w]hile ORBCOMM may allow for two-way communications, it does not allow for two-way conversation as required in the application.” BriarTek Opp’n at 19.” BriarTek appears to be referencing the requirement in claim 1 of the '380 Patent that “the user satellite communication system and the monitoring satellite communication system are adapted for mutual communication via a satellite network.” Read literally, claim 1 does not require any particular latency or effectiveness, only “mutual communication,” and BriarTek admits that ORB-COMM teaches “two-way communications. Id. Accordingly, BriarTek’s argument is directed to an unclaimed limitation which cannot prevent summary judgment. King Pharms.,
BriarTek next argues that ORBCOMM does not anticipate claim 1 because it does not describe a system that was functioning when the article was published. BriarTek Opp’n' at 18; Steffes Dec. ¶ 51. That argument fails because “anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabling to one of skill in the art.” Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc.,
BriarTek also argues that ORBCOMM does not teach the '380 Patent’s monitoring system because ORBCOMM’s Network Control Center (“NCC”, see ORBCOMM Fig. 3-2 and § 3.1.2.2) only monitors and routes traffic, but does not contain an output device. BriarTek Opp’n at 20; Steffes Dec. ¶¶ 53-54. That argument is flatly contradicted by ORBCOMM Fig. 3-2, which shows a computer including a display as part of the NCC. Although BriarTek argues that Mr. Zancho admitted that the NCC is not a monitoring system by itself, Briar-Tek quotes Mr. Zancho out of context. In his deposition, Mr. Zancho stated that one way to see messages in the ORB-COMM reference does involve an output device, and he makes clear that “[t]here’s two ways to see the message [through the NCC]. One is by an outside observer attaching himself to that or the operator of the network control center can see those messages on that screen.” BriarTek Opp’n Ex. G (“Zancho Dep.”) p. 80 lines 7-11. BriarTek cannot manufacture a material dispute by “submitting an expert declaration that something is black when the moving party’s expert says it is white; there must be some foundation or basis for the opinion.” In-vitrogen Corp.,
ii. Claim 2
'380 Patent Claim 2 ORBCOMM
“The system of claim 1, wherein the user unit is adapted to be coupled to a user.” “The SCs are light-weight and pocket-sized.” ORBCOMM § 1.0. See also. Zaneho Opening Report ¶ 162.
ORBCOMM teaches that the Subscriber Communicators (SCs) are pocket-sized, § 1.0, which leads to the conclusion that the SCs may be tethered or coupled to the user by placing the SC in the user’s pocket. BriarTek questions whether a downed pilot could necessarily carry the SC, Briar-Tek Opp’n at 21, but does not contest that an SC may be tethered or coupled to the user by being placed in the user’s pocket. Thus, BriarTek has not raised a material dispute regarding whether ORBCOMM invalidates claim 2.
iii. Claim 17
'380 Patent Claim 17 ORBCOMM
“The system of claim 1, wherein the user unit further includes a status sensor that is communica-tively coupled to the user processor and that provides a status output, wherein the user processor is adapted to format the status output for communication from the user unit to the monitoring system via the satellite network-.” ”[T]he ORBCOMM System can. . .[provide] remote sensor control, transmission of data from intrusion, motion heat sensors.” ORBCOMM 12.0. See also Zaneho Opening Report ¶ 171 (formatting is necessary to communicate sensor signals).
BriarTek repeats its arguments about ORBCOMM lacking a monitoring system,
iv. Claim SU
'380 Patent Claim 34 ORBCOMM
“The system of claim 1, wherein the satellite network provide[s] substantially global coverage.” The ORBCOMM System “can provide the United States Armed Forces with two-way on-the-move data messaging anywhere in the world.” ORB-COMM § 1.0. See also Zaneho Opening Report ¶ 172.
BriarTek argues that the article states that only one satellite had been launched at the time of publication. See BriarTek Opp’n at 22. As discussed above, “anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabling to one of skill in the art.” Bristol-Myers Squibb,
v. Claim 85
'380 Patent Claim 35 ORBCOMM
“A method of providing a travel service, comprising providing the user unit of claim 1 to a user, and monitoring the monitoring system of claim 1.” The ORBCOMM system allows users to “[c]ommu-nicate on-the-move” from the SCs, and can “[t]rack the position of logistics throughout shipment.” ORBCOMM § 2.0. See also Zancho Opening Report ¶ 173.
BriarTek does not specifically dispute that ORBCOMM teaches the limitations of claim 35, instead relying on its arguments regarding claim 1. BriarTek Opp’n at 22. For the same reasons that BriаrTek’s arguments are unconvincing regarding claim 1, they are unconvincing regarding claim 35.
vi. Claims 10-12
DeLorme argues that. ORBCOMM anticipates claims 10-12. See DeLorme Br. at 14-15. Claim 10 depends on claim 1. Claim 11 depends on claim 10, and claim 12 depends on claim 11. Because dependent claims incorporate the limitations of the claim (or claims) on which they depend, claim 10 must be invalid in order for claims 11 and 12 to be invalid.
Claim 10 provides that “the user satellite communication system includes a transmitter, and wherein the input device is adapted to receive user data from a user and the user processor is adapted to format the data for transmission by the transmitter.” DeLorme argues that “[t]he SCs include five-watt transmitters.” DeLorme Br. at 14; Zancho Opening Report ¶ 168. DeLorme does not argue that ORBCOMM teaches the formatting limitation, or that the formatting limitation is inherent. See DeLorme Br. at 14; Zancho Opening Report ¶ 168. Therefore, DeLorme does not argue that ORBCOMM teaches each and every limitation of claim 10. Neither does Mr. Zancho present specific facts regarding the formatting limitation. Id. Therefore, DeLorme does not present sufficient evidence to conclude that ORBCOMM anticipates claim 10 as a matter of law. Because summary judgment is not appropriate as to claim 10, neither is it appropriate as to claims 11 or 12.
3. Motorola Manual
DeLorme has presented insufficient evidence to conclude that the Motorola Manual anticipates, as a matter of law, claims 1, 2, 5-12, 17, 34, or 35 of the '380 Patent.
The Motorola Manual, titled “Satellite Series 9505 Portable Telephone User’s Guide,” Motorola Manual at 1, describes how the phone can be placed into “satellite mode,” which allows communication via satellite. See id. at 46, 188. Using the phone in satellite mode allows “communication in many remote areas around the world.” Id. at i.
DeLorme argues that the Motorola Manual teaches each element of claim 1 because a person of ordinary skill could have created the system of claim 1 by using one satellite phone as the user unit, and connecting another satellite phone to a computer to create a monitoring system.
This evidence establishes a genuine issue оf material fact regarding whether the Motorola Manual anticipates claim 1 of the '380 Patent. Because claims 2, 5-12, 17, 34, and 35 depend, directly or, indirectly, on claim 1, BriarTek has raised a genuine issue of material fact regarding whether the Motorola Manual anticipates those claims as well.
In summary, claims 1, 5-12, 17, 34, and 35 of the '380 Patent are invalid as anticipated by de Vries. Additionally, claims 1, 2, 17, 34, and 35 of the '380 Patent are invalid as anticipated by ORBCOMM; however, there is insufficient evidence to conclude that the Motorola reference anticipates any of the asserted claims of the '380 Patent.
F. Obviousness
Even where an invention has not been identically disclosed in one prior art reference, the patent claims may nevertheless be invalid where “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
Obviousness under 35 U.S.C. § 103 “is a question of law based on underlying findings of facts,” namely (i) the scope and content of the prior art, (ii) the characteristics and understanding of an individual of ordinary skill in the art at the time of invention, (iii) the differences between the claimed invention and the prior art, and (iv) the evidence of secondary factors of non-obviousness. See Graham v. John Deere Co.,
“[T]he legal determination of obviousness may include recourse to logic, judgment, and common sense, in lieu of expert testimony.” Wyers v. Master Lock Co.,
1. Scope and Content of the Prior Art
Only references analogous to the claimed invention may be considered when evaluating obviousness. Wyers,
2. Level of Ordinary Skill in the Art
For the purposes of this motion, the Court adopts BriarTek’s definition of a person of ordinary skill in the art. To determine obviousness, the Court views a person of ordinary skill in the art as a person with a bachelor’s degree in physics or engineering with approximately ten years of experience in the field of satellite communications, satellite navigations, or wireless interfaces, or a master’s degree in physics or engineering and five years of relevant experience, or a Ph.D. and research in the same field. Steffes Opening Report at 20-21. Accordingly, there is no material dispute regarding the level of ordinary skill.
3.Secondary Considerations
“[Secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc .... may have relevancy” to the obviousness determination. Graham,
4.Differences Between Claimed Invention and Prior Art
Before making a determination of obviousness, the Court must resolve any differences between the claimed invention and the prior art. Graham,
Regarding claim 1, BriarTek argues that de Vries does not teach “mutual communication using detailed text messages.” BriarTek Opp’n at 23. Regarding claim 2, BriarTek argues that de Vries does not teach coupling or tethering. Id. Regarding claims 5-9, BriarTek repeats its arguments regarding the requirement for detailed text messages. Id.
Regarding claim 1, BriarTek argues that ORBCOMM does not contain a monitoring system. Id. аt 19-20. Regarding claim 2, BriarTek argues that ORBCOMM does not teach coupling. Id. at 21. Regarding claim 34, BriarTek argues that ORB-COMM does not teach worldwide coverage. Id. at 22. BriarTek does not. contest that all other claim limitations are present in ORBCOMM. See id. at 19-22.
Regarding claims 5 and 7, BriarTek argues that the Motorola Manual does not teach pre-stored text messages. Id. at 26.
5. Resolving Obviousness
For the purposes of resolving obviousness, it will be assumed that BriarTek is correct regarding the differences between the claimed invention and the prior art. This assumption renders the factual underpinnings of the obviousness inquiry without dispute. Accordingly, the legal determination of obviousness is ripe for summary judgment adjudication. ■
i. De Vries in view of the Motorola Manual
Regarding claims 1 and 5-9, BriarTek argues that de Vries does not teach detailed text messaging. Id. at 23-24. De-Lorme argues and BriarTek concedes that the Motorola Manual does teach detailed text messaging. DeLorme Br. at 18-19; Zancho Opening Report ¶ 201; BriarTek Opp’n at 25-27. It would have been obvious to one of ordinary skill in the art to combine de Vries and the Motorola Manual to arrive at the invention of claims 1 and 5-9. It would have been clear to even a layperson that sending customized detailed messages would be preferable to sending “canned” messages because customized messages allow for more robust communication. Further, de Vries specifically teaches that its user unit could be a device similar to the satellite phone described by the Motorola Manual. See de Vries [0039] (“The operator module could be ... a han-dheld device such as a PDA.”). Accordingly, De Vries specifically suggests use of a device like the Motorola satellite phone, which BriarTek does not contest provides detailed messaging capability. Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of de Vries and the Motorola Manual to reach the invention in claim 1.
Regarding claim 2, BriarTek argues that de Vries does not teach coupling to a user. BriarTek Opp’n at 23. As discussed above, there is a strong case for concluding that de Vries does teach coupling; however, there can be no reasonable dispute that the Motorola Manual does teach coupling, and BriarTek does not contest this teaching. DeLorme Br. at 19; Zancho Opening Report ¶ 209; BriarTek Opp’n at 25-27. Indeed, the Motorola Manual specifically discloses a carry case and wrist strap. Motorola Manual at 22-23. BriarTek also does not contest that de Vries teaches that its user unit may be a handheld device, and that handheld devices often come with methods to attach the device to the user. See BriarTek Opp’n. Therefore, it would have been obvious to combine the teachings in these two references to arrive at the invention in claim 2. A person of ordi
Regarding claims 10 and 11, BriarTek argues that formatting is not present in de Vries because de Vries does not teach detailed text messages. BriarTek also argues that when sending detailed text messages a device “need[s] to change the format of the data.”- BriarTek Opp’n at 25.' As discussed above, the Motorola Manual teaches detailed text messages and Briar-Tek admits that formatting is necessary for sending detailed text messages. Therefore, the combination of de Vries and the Motorola Manual teaches all of the limitations in claims 10 and 11, even under BriarTek’s reading of the prior art. Therefore, these claims would have been obvious to one skilled in the art.
Regarding claim 34, BriarTek argues that de Vries does not teach substantially global coverage. BriarTek Opp’n at 25. DeLorme argues, and BriarTek does not contest, that the Motorola Manual does teach substantially global coverage. De-Lorme Br. at 20; Zancho Opening Report ¶ 218; BriarTek Opp’n at 25-27. Thus, the combination of the two references teaches each element of claim 34. It would have been obvious to one of ordinary skill in the art to combine these teachings to arrive at the invention as claimed. Specifically, one of ordinary skill in the art would have recognized the advantage of having more coverage in a communication system, and would have recognized that substantial coverage would increase the number of people with whom a user could communicate.
ii. ORBCOMM in view of de Vries
DeLorme also argues that ORBCOMM and de Vries render the '380 Patent obvious. Regarding claim 1, BriarTek argues that ORBCOMM does not teach a monitoring system, BriarTek Opp’n at 19-20; however, BriarTek does not contest that de Vries teaches a monitoring system. See BriarTek Opp’n at 23-25. Thus, the combination of ORBCOMM with de Vries teaches each element.of claim 1. The advantages of a central system to monitor, for example, the search and rescue operations taught by ORBCOMM would have been obvious to one of ordinary skill. A central system allows for easier coordination of rescue operations-a stated goal of ORBCOMM,
iii. De Vries in view of the Motorola Manual in view of ORBCOMM
Regarding claim 17, BriarTek argues that de Vries does not teach that the sensor is coupled to the user processor to format the data for communication. Briar-Tek Opp’n at 25. DeLorme argues that ORBCOMM does teach this limitation, and BriarTek does not dispute that ORB-COMM teaches a sensor which transmits information. DeLorme’s Reply Brief [Dkt. No. 140] (“Reply Br.”) at 140; BriarTek Opp’n at 22. BriarTek also does not dispute that de Vries teaches a monitoring system which receives information from a sensor, see BriarTek Opp’n at 25, and that sensor signals must be formatted before they are transmitted. See id. at 22. It would have been obvious to one of ordinary skill in the art to combine the de Vries, ORBCOMM, and Motorola Manual teachings to arrive at the invention in
iv. ORBCOMM in view of de Vries in view of the Motorola Manual
Regarding claim 2, BriarTek argues that ORBCOMM does not teach coupling to a user, BriarTek Opp’n at 23, but does not contest DeLorme’s argument that the Motorola Manual does teach coupling. De-Lorme Br. at 19; Zancho Opening Report ¶ 209; BriarTek Opp’n at 25-27. Indeed, the Motorola Manual specifically teaches a carry case and wrist strap, Motorola Manual at 22-23, ORBCOMM teaches that the Subscriber Communicators (SCs) are pocket-sized, § 1.0, and De Vries teaches that the user unit can be a PDA. ¶ [0039]. BriarTek does not contest either that ORBCOMM teaches that its user unit may be a handheld device, or that handheld devices often come with methods for attaching the device to the user. See Briar-Tek Opp’n. It would have been obvious to combine these teachings to arrive at the invention in claim 2. A person of ordinary skill in the art would have recognized that allowing for coupling with the user would make the user unit more portable, and thus easier to use. This would have rendered the claimed invention obvious to one of ordinary skill in the art.
v. BriarTek’s Obviousness Arguments
BriarTek presents two general arguments to oppose a finding that any of the claims are obvious; however, each fаils as a matter of law. First, BriarTek argues that “[ojbviousness cannot be established by merely finding identical parts in the prior art.” BriarTek Opp’n at 27. As authority, BriarTek cites Applied Med. Res. Corp. v. U.S. Surgical Corp.,
Second, BriarTek argues that mixing of the systems described in DeLorme’s cited references would not be possible, because “each ... system[ ] i[s] limited by its technical implementation” and therefore the systems are “not generically interchangeable.” BriarTek Opp’n at 28. But “it is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mout-tet,
Because all the asserted claims have . been found to be invalid as a matter of law over the prior art, either as anticipated or as obvious, the arguments regarding written description, indefinitenеss, and subject matter eligibility need not, and will not, be addressed.
III. CONCLUSION
For the reasons stated above, plaintiffs’ Motion for Summary Judgment [Dkt. No. 10.9] will be granted by an appropriate Order to be issued -with this Memorandum Opinion.
Notes
. DeLorme’s Complaint named as defendants BriarTek IP, Inc. and BriarTek, Inc. See [Dkt. No. 1]. DeLorme later voluntarily dismissed its claims against BriarTek, Inc. See [Dkt. Nos. 141, 142],
. BriarTek, Inc. and BriarTek IP, Inc. share common ownership. BriarTek Inc.'s Answer [Dkt. No. 24] ¶ 10.
. DeLorme’s expert contests whether the Provisional Application provides sufficient writ
. The America Invents Act ("AIA”) extensively amended 35 U.S.C. § 102. Pub.L. No. 112-29, § 3, 125 Stat. 284, 285-93 (2011). As the '380 Patent was filed before the AIA’s implementation date, pre-AIA § 102 must be applied. See Solvay S.A. v. Honeywell Int’l. Inc.,
. "Q. Would the user guide have been in paper form when distributed with the phone?
A. Yes, but we also had an electronic copy available, I believe, through the website.
Q. So if a customer wanted to get a copy of the user guide from Motorola, they could go online to get it? ...
A. Yes. And I believe we also created CD ROMs of the user guide.
Q. Could somebody also call up Motorola and ask for a copy of the user guide? ...
A. Yes.”
. "Q. Do you know when the user guide for the 9505 would have become available? A. I'm assuming if my dates are correct, 2000.”
. "A. The Todd Hara article came out in 1995.”
. This language only appears in the preamble of claim 1. A preamble only limits the claim if it recites essential structure or gives meaning to the claim. Eaton Corp. v. Rockwell Int'l Corp.,
The preamble of claim I appears to be an intended use of the claimed system, rather than reciting essential structure or giving the claim meaning. DeLorme argues that preambles sire generally not limiting, but nonetheless proposes a definition for the term. De-Lorme’s Claim Construction Brief at 12-13.
. BriarTek’s definition indicates that a transmitter, receiver and antenna are "necessary” for mutual communication via a satellite network. Accordingly, a transmitter, receiver, and antenna are inherently present in any reference that tеaches mutual communication via a satellite network.
. BriarTek groups claims 5-9 together in opposing llhe Motion for Summary Judgment. BriarTek Opp’n at 23-24. Accordingly, those claims will be addressed together.
. The term “actuator” has been construed to mean ‘-‘a key or button that accesses message data stored on the memory chipset or circuitry.”
. BriarTek groups claims 10 and 11 together in opposing the Motion for Summary Judg
. BriarTek's definition of this claim term indicates that a transmitter, receiver and antenna are "necessary” for mutual communication via a satellite network. Accordingly, a transmitter, receiver, and antenna are inherently present in any system that teaches mutual communication via a satellite network.
. See, e.g., http://www.noaa.gov/ocean.html ("The ocean covers 71 percent of the Earth’s surface.”).
. DeLorme does not argue that ORBCOMM anticipates claims 5-9 of the '380 Patent.
. Those arguments, for the reasons explained above regarding claim 1, are unconvincing.
. ORBCOMM § 2.1.2 ("The ORBCOMM System can effectively and inexpensively provide world-wide [Combat Search and Rescue] coverage using the ORBCOMM satellite constellation.”).
. The parties also present numerous arguments regarding Boling. Because the other cited prior art is sufficient, the Court does not need to refer to Boling to resolve either the anticipation or obviousness analysis. When considered with the other references, however, Boling overwhelmingly confirms the conclusion of invalidity.