CHRISTOPHER J. BURKE, Magistrate Judge.
In this patent case filed by Plaintiff Lambda Optical Solutions, LLC ("Lambda" or "Plaintiff') against Defendants Alcatel-Lucent USA Inc. and Alcatel-Lucent Holdings Inc. (collectively, "Alcatel" or "Defendants"), Plaintiff alleges infringement of U.S. Patent No. 6,973,229 ("the '229 patent"). Alcatel timely answered Plaintiffs Complaint, and asserted counterclaims against Lambda, Lambda Optical Systems Corporation ("LOS"), and Anastasios Tzathas (collectively, "Counter-Defendants"), one of the named inventors of the '229 patent. Presently before the Court is Defendants' Motion for Summary Judgment of Invalidity regarding anticipation (the "Motion"). (D.I. 363)
The '229 patent is entitled "Node Architecture for Modularized and Reconfigurable Optical Networks, and Methods and Apparatus Therefor," and was issued on December 6, 2005. (D.I. 178, ex. B)
The '229 patent relates to the field of optical networking, which involves transmitting voice, Internet traffic, and other digital data over fiber-optic cables. Systems that operate in this field convert electrical signals from one endpoint into optical signals (or light pulses) for transmission along fiber-optic cables. After transmission, the light pulses are converted back to electrical signals at another endpoint, so that they can be received by a network user.
Optical signals are often physically combined, or "multiplexed," for fiber-optic transmission over a single, high-speed "long-haul" fiber—a fiber cable that can transmit those signals over long distances. In wavelength division multiplexing ("WDM"), a fiber is shared by dividing the spectrum oflight (or "wavelengths" oflight). These "wavelength divisions" must be sufficiently spaced apart to prevent the multiple wavelengths from interfering with each other. The International Telecommunications Union ("ITU") has adopted standard wavelength spacing that should be used for such multiplexing, which is reflected in the "ITU grid." (See '229 patent, col. 18:9-11 ("The ITU grid specifies the minimum spacing and the actual wavelengths of the individual wavelengths in a WDM system.")) A wavelength that conforms to the ITU grid is considered "compliant." (See, e.g., id, col. 5:63-64)
The '229 patent is directed to one aspect of optical networking: an optical transport switching system.
('229 patent, col. 54:22-37 (emphasis added)) Asserted independent claim 25 closely tracks the language of claim 1, except that instead of focusing on the two ingress subsystems, it has a greater description of the two egress subsystems:
(Id., col. 56:28-42 (emphasis added))
On November 26, 2013, Defendants filed their Motion, in which they moved for summary judgment that the asserted claims of the '229 patent are invalid as anticipated and/or rendered obvious by four published articles that describe various aspects of the MONET project (the "MONET articles" or the "MONET references"). (D.I. 363) On July 24, 2015, the Court issued a Report and Recommendation recommending that Defendants' Motion be denied (the "First Invalidity R&R"). (D.I. 442) More specifically, with respect to Alcatel's anticipation defense, the Court recommended that summary judgment be denied upon finding a genuine issue of material fact as to the "threshold dispute" of whether the allegedly anticipatory references were enabled. (Id. at 8, 13-14) With respect to Alcatel's obviousness defense, the Court recommended that summary judgment be denied because Alcatel's Motion failed to satisfy its high burden of proving that the claimed invention would have been obvious to a skilled artisan at the time of the invention. (Id. at 21)
On September 30, 2015, Judge Richard G. Andrews issued a Memorandum Order adopting the Court's recommended disposition with respect to obviousness, but returning the matter of summary judgment on the issue of anticipation to the Court for resolution. (D.I. 464) Judge Andrews explained that, under the particular circumstances of this case, expert testimony would be required to "raise the issue" of enablement. (Id. at 5) On return to the Court, Judge Andrews suggested that the Court either (1) consider the enablement challenge resolved, and proceed to the merits of the anticipation arguments; or (2) allow the parties to amend their expert reports to address the enablement issue. (Id.)
The Court chose the latter course, and permitted supplemental expert discovery with respect to enablement, followed by supplemental briefing addressing "enablement, and that also addresses anticipation more generally[.]" (D.I. 467 at 4; see also D.I. 478 at 3) Supplemental briefing was completed on July 8, 2016. (D.I. 502)
A grant of summary judgment is appropriate where "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 moving party bears the burden of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd v. Zenith Radio Corp., 475 U.S. 574, 585 n.10 (1986). If the moving party meets this burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Id. at 587 (emphasis in original) (internal quotation marks omitted). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter oflaw. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). During this process, the Court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
However, in order to defeat a motion for summary judgment, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podobnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks and citation omitted). The "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis in original). Facts that could alter the outcome are "material," and a factual dispute is genuine only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248. "If the evidence is merely colorable . . . or is not significantly probative, . . . summary judgment may be granted." Id., at 249-50 (internal citations omitted). A party asserting that a fact cannot be—0r, alternatively, is-genuinely disputed must support the assertion either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials"; or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1)(A) & (B).
A claim is anticipated under 35 U.S.C. § 102(a) or (b) if:
35 U.S.C. § 102.
In order to anticipate, however, a reference must, inter alia, enable a person of skill in the ait (the "POSITA") to make the invention without undue experimentation. In re Gleave, 560 F.3d at 1334. The inquiry as to whether "undue experimentation" is required is "`not a single, simple factual determination, but rather . . . a conclusion reached by weighing many factual considerations.'" Martek Bioscis. Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378 (Fed. Cir. 2009) (quoting In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). Determining what level of experimentation qualifies as "`undue,' so as to render a disclosure non-enabling, is made from the viewpoint of persons experienced in the field of the invention." Elan Pharms., Inc. v. Mayo Found.for Med. Educ. & Research, 346 F.3d 1051, 1055 (Fed. Cir. 2003). The United States Court of Appeals for the Federal Circuit has provided several factors that may be utilized in determining whether a disclosure would require undue experimentation (the "Wands factors"): (1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d at 737.
A district court should presume that a prior art printed publication is enabled. Lambda Optical Sols. LLC v. Alcatel Lucent USA Inc., Civil Action No. 10-487-RGA, 2015 WL 5734427, at *1 (D. Del. Sept. 30, 2015). Ultimately, it is the patentee who bears the ultimate "burden of proving the nonenablement of [here, the prior art publication] before the district court." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003).
"Whether a prior art reference is enabling is a question of law based upon underlying factual findings." SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1342-43 (Fed. Cir. 2005) (citation omitted). Thus, ifthere is a genuine dispute of fact as to whether a prior art reference is nonenabling, summary judgment may not be granted. Cf SRI Int'l, Inc. v. Internet Sec. Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
Anticipation is a question of fact. Id. at 1343. If there are no genuine disputes underlying the anticipation inquiry, then the issue is ripe for judgment as a matter of law. Id. On the other hand, when presented with a motion for summary judgment on the ground that a prior art reference anticipates a patent's claims, a court may deny the motion if, for example, there are "[d]isputed material issues of fact concerning how one of ordinary skill in the art would understand disclosure of a particular technology[.]" Robocast, Inc. v. Apple Inc., 39 F.Supp.3d 552, 564 (D. Del. 2014); see also OSRAM SYLVANIA, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012).
Alcatel asserts that each of the MONET articles anticipates independent claims 1 and 25, and dependent claims 13-16 and 23-24 of the '229 patent. (D.1. 484 at 20) The parties' threshold dispute is whether the MONET articles' disclosures are enabled for Section 102 purposes. Lambda argues that, at a minimum, there are factual disputes regarding whether the MONET articles' disclosures are enabled, and thus summary judgment of anticipation must be denied. (See D.I. 488 at 2, 20)
As an initial matter, the parties quarrel a bit with respect to what the law requires for prior art to be enabling for purposes of Section 102. Alcatel points out that "absent a specific claim limitation, the prior art need not satisfy a particular efficacy, usefulness, or commercial viability criterio.n-and need only enable one to make a single embodiment covered by the asserted claim." (D.1. 502 at 4-5) This is a correct statement of the law. See, e.g., Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010) ("It is well-settled that utility or efficacy need not be demonstrated for a reference to serve as anticipatory prior art under section 102.");
To the extent Alacatel's interpretation is correct-and Lambda is requiring that the MONET articles disclose not merely how to make an operative switch, but also how to make an operative switch meeting a particular level ofperformance that one would find to be truly "useful"—then Lambda's position is wrong. For purposes of anticipation, a prior art reference must "teach a skilled artisan to make or carry out what it discloses in relation to the claimed invention." In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012). While the MONET references must enable a POSITA to make an optical transport switching system that would operate in an optical network (with independent claims 1 and 25 claiming a system "for use in an optical network"), no more is required of the prior art than is required by the claims themselves.
With Section 102's legal requirements now set out, and with the presumption that the MONET articles are enabled as our starting point, the Court next assesses Lambda's claim that there are unresolved factual issues as to whether it can overcome the presumption.
Lambda's primary nonenablement argument is that the POSITA could not make an operative optical transport switching system without addressing certain implementation details that are not recited in the claims.
Lambda acknowledges that the claims of the '229 patent do not explicitly recite signal conditioning as a claim limitation, but argues that the claims need not include every "implementation detail, even if those details are necessary" for the claimed switch to be capable of performing the recited functions. (D.I. 488 at 9-10) In other words, according to Lambda, even though signal conditioning is not an express claim limitation, it is nevertheless required in order for the claimed optical transport switch to be able to send, receive and add/drop signals between the optical network and the access network that can be used by network users. (Id.; see also, e.g., Lambda's Appendix, ex. 10 at A0454-55 (Dr. Smith explaining that signal conditioning is not a claim limitation "but . . . if you make a system that is useful in an optical network, you have to address a number of issues" including signal conditioning, which he characterized as "engineering enablement"))
Turning to the MONET articles, Lambda then argues that they are not enabling because they "did not resolve the signal conditioning requirements needed to make the claimed invention." (D.I. 488 at 11; see also Lambda's Appendix, ex. 13 at ¶ 41) Alternatively, Lambda argues that even if the MONET project had itself successfully achieved transmission of usable signals through optical and access networks, "the MONET articles would still fail to instruct a [POSITA] how to implement these solutions to build the claimed switching system." (D.I. 488 at 11-12 (emphasis in original))
For its part, Alcatel asserts that signal conditioning and related issues (such as transient control/protection, signal amplification and noise suppression) are not claim requirements, and that Lambda's enablement argument therefore "improperly seeks to graft these" components into the claims to avoid invalidity. (D.I. 484 at 1 & n.l, 13-14) In accordance with the Court's claim construction, the optical access ingress subsystem of claim 1 must receive one or more optical signals, originating from an access network, which are compliant with the optical network, and the optical access egress subsystem of claim 25 must direct one or more compliant optical signals from the optical network, toward an access network, where a "compliant" optical wavelength is one that conforms to the ITU standards. (See D.I. 234 at 3, 26) Alcatel's expert, Paul R. Prucnal, Ph.D., asserts that Dr. Smith "fails to provide any textual support for his additional limitation that the compliant signals must also be conditioned for transport on an optical network. . . . [he] does not cite to either the claims or the specification in support." (D.I. 485 (hereinafter, "Alcatel's First Appendix"), ex. 13 at ¶ 133) To that end, Dr. Prucnal opines that signal conditioning is not inherently required by the claims because, for example, "in some implementations signal conditioning may not be needed because the incoming signal is known to be compliant as received." (Id.)
That said, Alcatel does seem to acknowledge that the invention claimed in the '229 patent must generate usable signals, (see, e.g., Lambda's Appendix, ex. 11 at A0722-23 (Dr. Prucnal agreeing that for the system "to work, the signal has to be good enough to be received")),
The Court is persuaded by Alcatel's position. That is, even if the claims require stable signals in order for the claimed system to operate, there is not a genuine issue of fact as to whether the MONET references are not enabled because they fail to describe how to generate such signals. This is because Lambda has not sufficiently shown that such "requirements" were anything other than well-known at the relevant time. The Court so concludes for at least the following three reasons.
First, as Alcatel points out, (D.I. 484 at 5), courts have made it clear that a prior art reference "need not enable [unclaimed limitations] in order to be deemed anticipating." Aventis Pharms., Inc. v. Barr Labs., Inc., 335 F.Supp.2d 558, 583-84 (D.N.J. 2004) (citing Amgen, 314 F.3d at 1325); see also, e.g., Verizon Servs. Corp., 602 F.3d at 1337 (rejecting the plaintiffs argument that anticipatory references were not enabling because."they do not disclose or enable the `basic claim requirement' of being able to make ordinary two-way telephone calls" where "none of the claims in the [patents-at-issue] actually recite performing two-way telephone calls"); Ultratec, Inc. v. Sorenson Commc'ns, Inc., 45 F.Supp.3d 881, 917 (W.D. Wis. 2014) (explaining that "plaintiffs must limit their enablement arguments to whether [the allegedly anticipatory reference] was enabled with respect to [the claim limitation at issue] and not [an unclaimed limitation]"); cf Melchior v. Hilite Int'l, Inc., 665 F. App'x 894, 899-900 (Fed. Cir. 2016) ("Our cases establish that prior art cannot be distinguished on the ground that it lacks features that are not claim limitations.") (citing cases); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014) ("Anticipation challenges under [Section] 102 must focus only on the limitations actually recited in the claims.").
Lambda attempts to side-step the impact of this general rule with its argument that the claims of the patent-in-suit do "not need to explicitly include every implementation detail, even if those details are necessary to enable the device." (D.I. 488 at 9) Lambda cites for support to two Federal Circuit decisions regarding claim construction. (Id.) And in these two cases, the Federal Circuit does reiterate the unremarkable principle that it is improper to import limitations into the claims from the specification as "`the claims need not recite every component necessary to enable operation of a working device/"—"[t]hat a device will only operate if certain elements are included is not grounds to incorporate those elements into the construction of the claims." Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293, 1301 (Fed. Cir. 2011) (quoting Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1093 (Fed. Cir. 2003)). In one of the cases, Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293 (Fed. Cir. 2011), the Federal Circuit provided a helpful example in support of this notion: "[a] claim to an engine providing motive power to a car should not be construed to incorporate a limitation for an exhaust pipe, though an engine may not function without one." Id. Lambda then tries to tie the principle set out in these two cases to the facts here by asserting that for the claimed system to generate usable signals, "signal conditioning and system control . . . must be enabled by the prior art" though "the components which enable the optical transport switch to do so should not be required as limitations to that claim, any more than an exhaust pipe should be incorporated as a limitation to a claim to a car engine." (D.I. 488 at 9-10 (internal citations omitted))
Yet even so, it is worth noting that Lambda does not cite a single case where prior art was deemed non-enabling due to the fact that it did not adequately discuss unclaimed features from a patent's specification. (See D.I. 502 at 5) This is likely because (as Alcatel notes) many such unclaimed details tend to go unclaimed precisely because they either are the kind of detail that are already within the knowledge of one skilled in the art (and would also have been recognized as such at the time of the prior art reference at issue) or are non-essential to an operative claimed invention. (Id. at 5 & n.6) At a minimum, this suggests that it is likely the rare case where a prior art reference will be found nonenabling for failure to set out an unclaimed "implementation detail" that is necessary to enable the claimed invention at issue.
Second, Alcatel pinpoints the logical reason why the asserted claims of the '229 patent do not recite these supposedly necessary implementation details-that is, that the record demonstrates that they were known to a POSITA by February 2001. (D.I. 484 at 14-16; D.I. 502 at 4-5 (Alcatel asserting that there is "no dispute that claims do not need to recite every conventional component that goes into making a device") (emphasis in original)) In other words, as Alcatel explains, "while a novel gas engine may require an exhaust pipe to work, there is no need to recite a[] [conventional] exhaust pipe in the claim." (D.I. 502 at 5) In order to anticipate such a patent on the exemplary gas engine, then, prior art "directed to the purportedly novel gas engine [need not] also describe how to make a conventional exhaust pipe." (Id. (emphasis omitted))
Here, Dr. Prucnal opined that the concept of signal degradation and the need for signal conditioning was well-known in the art of optical networking before February 2001, and "before February 2001, there were well-known techniques to compensate for [the different types of] degradation in an optical system." (Alcatel's First Appendix, ex. 13 at ¶ 101) His report then discusses these known techniques to condition signals and to compensate for degradation issues-techniques such as crosstalk suppression, use of particular fibers, use of a thermistor and thermo-electric cooler, amplifier design, use of filters, and automatic gain control. (Id. at ¶¶ 101-11)
And third, while Lambda suggests that the patent's specification recites certain requirements that the MONET articles must enable—by asserting that "[a] court may consult the specification to determine that a prior art reference did not enable a patented invention's characteristics, even if those characteristics are not recited in the claims[,]" (D.I. 488 at 7-8)—it fails to persuasively explain why this is in fact the case here.
As an initial matter, the Court agrees with Alcatel that Lambda is misreading the sole case that it cites in support of this proposition: Application ofSheppard, 339 F.2d 238 (C.C.P.A. 1964). (D.I. 502 at 3) In Application ofSheppard, the patent claimed certain chemical compounds, and the specification stated that the compounds are "`characterized by excellent thermal and chemical stability[.]'" 339 F.2d at 238-39. The Court concluded that the examiner should not have rejected certain claims as anticipated over a prior art reference where the author of that reference failed to "alter the reaction conditions or reactants in order to make a stable pentafluoride[,]" and that the reference was therefore not enabling. Id. at 241-42. The Court agrees with Alcatel's view that the case "stands for the unremarkable proposition that an unsuccessful attempt to make a chemical is not enabling." (D.I. 502 at 3); see also In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (distinguishing Application ofSheppard simply as a case where "the reference[] [was] deemed insufficient, because [it] stated that attempts to prepare the claimed compounds were unsuccessful").
Separate and apart from that, the Court would expect Lambda to point out in some detail what are the portions of the asserted patent's specification that supposedly support its argument (i.e., that show that "a prior art reference did not enable a patented invention's characteristics, even if those characteristics are not recited in the claims") and why they show that Lambda's argument is viable. Lambda did not do so, however. Instead, Lambda simply cited to several paragraphs from the reports of Dr. Smith and from Dr. Prucnal, in support of the notion that a device such as the one claimed in the '229 patent must "be able to generate stable optical signals for use in an optical network[.]" (D.I. 488 at 8) Only one of those paragraphs actually refers to a specific portion of the text of the patent specification: paragraph 60 of Dr. Smith's supplemental expert report, which in tum refers to Figure 11 of the patent, which itself depicts a "preferred embodiment for the transport ingress subsystem[.]" (Lambda's Appendix, ex. 1 at ¶ 60 (cited in D.I. 488 at 8)) In this paragraph of his report, Dr. Smith states that Figure 11 "contains optical signaling channel (OSC) extraction as well as an optical performance monitor (OPM)" and that "[t]ransient control is thus present in the figure and an ordinary skilled artisan would understand the problem, even as described as a problem in MONET, but not disclosed as how to be solved by MONET[.]". (Id.)
Yet in this paragraph, Dr. Smith does not explain (and Lambda does not further explain in its briefing) how it is that the Court should understand Figure 11 to explain why "a prior art reference [the MONET articles] did not enable a patented invention's characteristics, even if those characteristics are not recited in the claims." That is, in paragraph 60 of his report, Dr. Smith does not articulate why: (1) Figure 11 explains that the problem of how to deal with signal degradation (or how to achieve sufficient signal conditioning/transient control) was something not already well understood to a person of skill in the art; or (2) Figure 11 explains that this was an unsolved "problem" as of February 2001 (or, for that matter, as of the time of the MONET articles).
Much of the remainder of Lambda's briefing is directed to asserting that even if MONET had resolved the signal conditioning requirements needed to make the claimed switching system, the MONET references would not enable a skilled artisan to make the claimed node without undue experimentation. (D.I. 488 at 11-18; see also id. at 11-12 ("However, even if MONET had achieved transmitting useable signals through optical and access networks, the MONET articles would still fail to instruct a [POSITA] how to implement these solutions to build the claimed switching system.") (certain emphasis added, certain emphasis in original))
That conclusion, however, does not end the enablement analysis. As the Court will explain below in addressing anticipation, there remains a genuine dispute as to whether any or all of the MONET references discloses the capability of the switch subsystem to direct optical signals to or receive optical signals from an access network. Therefore, Lambda has generated a material dispute of fact as to whether the MONET references enabled a POSITA to make a claimed switch system that includes this claim limitation. (See D.I. 488 at 13 ("This is part of the enablement issue Dr. Smith states is missing from MONET, e.g., the MONET articles did not enable the capability to connect to access networks.") (citing, inter alia, Lambda's Appendix, ex. . 1 at ¶¶ 147, 200, 204, 208-209; id, ex. 10 at 112))
The Court now turns to whether Alcatel has shown that there is no genuine dispute of material fact as to whether one or more of the MONET references discloses every limitation of the asserted claims of the '229 patent. The focus of the First Invalidity R&R was the claims' requirement that the switch subsystem be capable of directing optical signals to or receiving optical signals from an access network (defined as "a network external to the optical network"). (D.I. 442 at 11 & nn.7-8, 16-18 & nn.15-16) While the Court did not substantively assess whether each of the MONET references anticipated the claims of the '229 patent in light of its conclusion with respect to enablement, (id. at 13-14), with respect to obviousness, the Court found that, inter alia, a genuine issue of material fact existed as to whether the MONET references disclosed connection to an optical access network (or alternatively, whether it would have been obvious to the skilled artisan to connect the transport network disclosed in the MONET references to an access network), (id. at 16-18).
Here again, the record continues to demonstrate a genuine dispute of material fact as to whether each of the MONET references disclosed this requirement. In significant part, this is due to the fact that Alcatel's supplemental briefing on the issue essentially reiterates its prior positions.
For one thing, Alcatel asserts again that "Lambda's expert has afready admitted the optical access subsystems of MONET were capable of being connected to an access network." (D.I. 484 at 8 (citing Alcatel's First Appendix, ex. 11 at A592-96, A599-600)) But as the Court explained in the First Invalidity R&R, "[w]hile Dr. Smith acknowledges [in these portions of his deposition] that the MONET articles disclose certain subsystems that might be possible to link to an access network, Alcatel stretches his testimony too far to the extent it characterizes it as describing an actual, definitive connection." (D.I. 442 at 17 (emphasis in original); see also D.I. 488 at 13)
Second, Alcatel reiterates its argument that the MONET articles disclose access subsystems "`adapted to'" exchange data with access networks and specifically disclose access networks themselves in the process. (D.I. 484 at 8 n.9) In support it cites, for instance, the reference in Johnson that "A CCI [compliant client interface] is a single-wavelength interface between the optical server layer network (that is, MONET) and the client network that uses a MONET-compliant wavelength." (Id. (citing Alcatel's First Appendix, ex. 1 at A027) (emphasis in Alcatel's brief)) But the Court already addressed this argument in the First Invalidity R&R, explaining that this point failed to demonstrate the absence of a triable fact in light of, inter alia: (1) Alcatel's failure to offer expert testimony in support of this position;
In sum, whether any or all of the MONET references disclosed the capability of the switch subsystem to direct optical signals to or receive optical signals from an access network remains in dispute. Therefore, Alcatel's Motion does not satisfy its high burden of proving that any or all of the MONET references taught every limitation in the asserted claims of the '229 patent.
For the reasons set out above, the Court recommends that Defendants' Motion (D.I. 363) be DENIED.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B), Fed. R. Civ. P. 72(b)(1), and D. Del. LR 72.1. The parties may serve and file specific written objections within fourteen (14) days after being served with a copy of this Report and Recommendation. Fed. R. Civ. P. 72(b)(2). The failure of a party to object to legal conclusions may result in the loss of the right to de novo review in the district court. See Sincavage v. Barnhart, 171 F. App'x 924, 925 n.l (3d Cir. 2006); Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987).
The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov.
Because this Report and Recommendation may contain confidential information, it has been released under seal, pending review by the parties to allow them to submit a single, jointly proposed, redacted version (if necessary) of the Report and Recommendation. Any such redacted version shall be submitted no later than
