OVERVIEW:
This case involves Convolve, Inc (Convolve) appealing the decision of the United State District Court that granted summary judgment in favor of Compaq Computer Corp and Seagate technology, that Compaq and Seagate did not misappropriate trade secrets, claims of patent number 6,314,473 and ‘4,916,635 assigned to Convolve were invalid, and that Compaq and Seagate did not infringe on the patents. Therefore, this case has a little bit of everything from Trade Secrets, invalidity, and infringement analysis.
Convolve patent technology that dealt with minimizing the clicking noise that a hard drive made while performing read/write operations. Convolve was awarded the ‘635 patent in the 1990’s with a representative claim 1 as follows:
- A method for generating an input to a physical system to minimize unwanted dynamics in the physical system response comprising:
establishing expressions quantifying the unwanted dynamics of the physical system;
establishing first constraints bounding the available input to the physical system;
establishing second constraints on variation in system response with variations in the physical system characteristics;
finding a solution which is used to generate the input which minimizes the value of the expressions while satisfying the first and second constraints; and
controlling the physical system based on the input to the physical system whereby unwanted dynamics are minimized.
The ‘473 patent is directed towards a method for a user to utilize a user interface that allows customization of disk drive speed and acoustics, where a user could alter the settings of a seek time and the acoustic noise level of the hard drive in an inverse relation and allowing selected unwanted frequencies to be removed.
In 1998, Convolve and Compaq began licensing negotiation to use Convolve’s technology, where Seagate would be building the actual hard drives used in Compaq’s computers. Before negotiation, the companies signed a non-disclosure agreement stating, among other things, that confidential material disclosed orally must be designated confidential at the time of disclosure and followed by a written memorandum within 20 days of the disclosure. After meeting, the parties agreed that any oral disclosure of confidential information was covered by the NDAs. Despite a plurality of meetings, Convolve never executed licensing with Compaq and Seagate regarding the discussed Technology. Later, Convolve filed suit against Compaq and Seagate including, among other things, 1) misappropriation of trade secrets and 2) Patent infringement.
TRADE SECRETS:
District Court
The district court held that neither Compaq nor Seagate violated the NDA and trade secret agreements. Regarding several of Convolve’s claims against Seagate, the district court found that Convolve did not send any confirmatory memorandum following the Convolve’ s presentations, and that Convolve did not mark that trade secrets in confidential writing or properly designate it as confidential. Regarding Compaq, the district court found that Convolve’s asserted claims of trade secret violation were related to only marketing research, strategies and plans that are not covered by trade secret law, that Convolve did not mark materials as confidential, or the materials were known.
Court of Appeals
On appeal, the court of appeals agreed with the district court that materials disclosed were disclosed in the absence of written confidentially follow-up memorandum mandated by the NDAs. The court of appeals further stated that the language of the contract will govern the parties, therefore Convolve did waive the right to state orally disclosed materials are covered by the NDA when they did not deliver written memorandum stating the disclosed materials were confidential.
PATENT CLAIMS:
District Court
Seagate and Compaq alleged that they did not infringe the ‘473 patent because they did not have a “user interface” or target “selected unwanted frequencies” as required by the patent claims in the ‘473 patent. The district court construed “selected unwanted frequencies” to mean “at least the chosen unwanted frequencies” and that a party would first have to discover “unwanted frequencies” and then target them for reduction. Therefore, for devices to directly infringe the drives must not only reduce unwanted frequencies, but do so by using a discover and target method. The district court reasoned that because Seagate’s hard drives targeted a single frequency to reduce, that the claim language of reducing “multiple frequencies” was not met. The district court further found that Seagate’s drives did not identify frequencies causing unwanted acoustics and target them, that Seagate instead tried a variety of filters to find the one that gave them the best performance that reduced all frequencies above a level. The District court found that these drives did not infringe the ‘473 patent’s claims.
Regarding the ‘635 Patent, the District Court held that the ‘635 was invalid as not being enabling. Therefore, the District Court granted Seagate’s motion of summary judgment.
Court of Appeals
Regarding the ‘473 patent the Court of Appeals found that the district court erred in their granting of summary judgment because it failed to consider evidence whether Seagate’s disk engineer actually only targeted a single frequency when designing the disk drive. The court of appeals reasoned that during development of the disk drive, the disk engineer identified the 2.6 KHz resonance and was surprised that so much sound power was focused in a narrow frequency band, but the disk engineer developed a filter that had multiple peaks around the 2.6 KHz frequency, not only the 2.6 KHz frequency in isolation. The Court of Appeals reasoned that in light of this evidence, and drawing all reasonable inferences in the non-movant’s favor, a reasonable juror could conclude that Seagate targeted specific frequencies when developing there hard drives.
The Court of Appeals also held that Seagate and Compaq may have induced their users to infringe the asserted claims, because demonstrating direct infringement requires Convolve either to point to specific instances of direct infringement or show that that accused device necessarily infringes. The Court of Appeals reasoned that Convolve presented evidence from Seagate and Compaq include press releases, end-user instructions, and distributed tools that allowed or encouraged computer users to select between different performance levels and that the devices are capable of infringing. The Court of appeals held summary judgment would not be proper.
Regarding the ‘635 patent, the Court of Appeals agreed with the district court holding of non-enablement. The court of appeals, reasoned that by choosing such broad claim language, Convolve put itself at the peril of losing any claim that cannot be enabled across its full scope of coverage. The Court of Appeals held that because the inventor himself stated that he was unable to fully implement the claimed method in disk drives for 9 years after the filing date, the patent was not enabling.
AUSTIN PATENT ATTORNEY TAKE-A-WAYS:
1) When start-up companies are discussing inventors/intellectual properties with potential investor’s and/or manufacturers they should 1) generate slides for presentations with materials that they plan on discussing, 2) label such slides as “confidential.” When having oral conversations, start-up companies should plan on taking minutes or recording conversations had with potential investors and/or manufacturers and review the oral conversation to determine if their disclosed materials include anything that was confidential. Additionally, when you sign a NDA you should make sure that you fully understand your requirements and obligations under the NDA. Hope for the best, plan for the worst.
2) As a patent attorney when drafting claims, if possible, try to draft the claims in the singular. This is because “a plurality” will always include “at least one.” If most of the embodiments of an invention require multiple elements, draft the claim language as “at least one.” This will broaden the patent scope, which might make a huge difference down the line (and may limit litigation costs). Additionally, if prosecution forces a patent to be written with “a plurality of x,” in some circumstances it may be worth it to file a continuation patent dealing with “at least one of x.”
3) When drafting patent claims, consult with the inventor to make sure he can actually perform the claimed technology. Claims should always be looked at by the inventors, because if nothing else they should be a broad summary of how their invention works (at least the independent claims). When drafting claims, it may also be beneficial to have a very specific picture claim for enablement purposes. Litigation regarding enablement may occur in a couple of years for “google glass” and other relatively new technology where inventors may understand what they want to do, but they are not completely sure how the technology will work out. By having working prototypes, it may be easier for inventors to fully understand how their invention will work. For situations where inventors are not totally sure how their invention will work, it may be beneficial to first file a provisional, giving the inventor a year to work out how they will actually perform their technology.