Mangosoft v . Oracle 02-CV-545-SM 03/14/06 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Mangosoft, Inc. and Mangosoft Corporation, Plaintiffs

v. Civil N o . 02-cv-545-SM Opinion N o .

Oracle Corporation, Defendant

O R D E R

Mangosoft, Inc. and Mangosoft Corporation (collectively,

“Mangosoft”), bring this patent infringement action against

Oracle Corporation (“Oracle”), asserting that Oracle’s products

infringe its patent, United States Patent N o . 6,148,377 (“the

’377 patent”). 1 In response, Oracle filed a counterclaim,

seeking a declaratory judgment that the patent is invalid,

unenforceable, or not infringed.

Before the court are summary judgment motions from both

parties. Oracle moves for summary judgment, asserting that it

does not infringe the ’377 patent, the ’377 patent is invalid,

and the ’377 patent is unenforceable. Mangosoft moves for

1 Although Mangosoft originally alleged that Oracle also infringed U.S. Patent N o . 5,918,229, it subsequently withdrew all claims relating to that patent. summary judgment asserting that, as a matter of law, Oracle is

infringing claims 1 , 5 , and 9 of the ’377 patent, and for partial

summary judgment holding the ’377 patent valid. For the reasons

set forth below, Oracle’s motion is granted in part and denied in

part and Mangosoft’s motion is granted in part and denied in

part.

Standard of Review

Summary judgment is appropriate when the record reveals “no

genuine issue as to any material fact and . . . the moving party

is entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(c). In this context, “a fact is ‘material’ if it potentially

affects the outcome of the suit and a dispute over it is

‘genuine’ if the parties’ positions on the issue are supported by

conflicting evidence.” Intern’l Ass’n of Machinists & Aerospace

Workers v . Winship Green Nursing Ctr.,

(1st

Cir. 1996) (citations omitted). Notwithstanding this

deferential standard, the non-moving party cannot defeat a motion

for summary judgment by simply relying on improbable inferences,

conclusory allegations, or rank speculations. Ingram v . Brink’s,

2 2 , 228 (1st Cir. 2005) (citing Mesnick v . Gen. Elec.

Co.,

(1st Cir. 1991)).

2 Background

Mangosoft and Oracle are software companies, specializing in

database software. Mangosoft owns the ’377 patent. Oracle

produces the allegedly infringing Real Application Clusters

(“RAC”) software, sold in conjunction with its 9i and 10g

Database software.

On November 2 2 , 1996, Mangosoft filed with the United States

Patent and Trademark Office (“PTO”) the patent application that

issued on November 1 4 , 2000, as the ’377 patent. Generally

speaking, the ’377 patent teaches a “distributed shared memory

system.” It describes computer systems consisting of groups of

computers linked by a network connection, also known as a

“cluster” or “computer cluster.” Each computer, or “node,” in

the cluster manages its own memory (both volatile and non-

volatile) and, employing the invention, makes that memory

available to other nodes in the cluster. Furthermore, says

Mangosoft, unlike earlier systems, which only provided a means

for sharing data stored in non-volatile memory (e.g., hard

disks), the invention taught by the ’377 patent allows nodes to

also share volatile memory (e.g., random access memory or “RAM”)

with other nodes in the cluster. Thus, the invention teaches a

means by which nodes may share both non-volatile and volatile

3 memory space, by creating a “pool” of shared memory space which

is accessible by all nodes participating in the system.

Specifically, claim 1 of the ’377 patent teaches:

1 . A computer system having a shared addressable memory space, comprising

a data network for carrying data signals representative of computer readable information, and

a plurality of computers, each of said plurality of computers sharing the shared addressable memory space and including

an interface, coupled to said data network, for accessing said data network to exchange data signals therewith,

a local volatile memory device coupled to said computer and having volatile storage for data signals,

a local persistent memory device coupled to said computer and having persistent storage for data signals, and

a shared memory subsystem for mapping a portion of said shared addressable memory space to a portion or the whole of said persistent storage and said volatile storage to provide thereby addressable persistent and volatile storage for data signals accessible by each of the plural computers, said shared memory subsystem including

a distributor for mapping portions of said addressable memory space across said plurality of local persistent memory devices, to distribute said addressable memory

4 space across said plurality of local persistent memory devices, and

a disk directory manager for tracking said mapped portions of said addressable memory space to provide information representative of which of said local persistent memory devices has which of said portions of said addressable memory space mapped thereon.

The ’377 patent, 15:56-16:23 (emphasis supplied). Claims 5 and 9

depend on claim 1 .

Following a Markman hearing, the court construed the

disputed terms in the ’377 patent. See generally Markman v .

Westview Instruments, Inc.,

(1996). Subsequently,

both parties moved for summary judgment.

Discussion

I. Infringement of the ’377 Patent

Both Mangosoft and Oracle move for summary judgment on the

issue of infringement. Mangosoft argues that a computer cluster

running Oracle’s 9i and/or 10g Database software (“RAC cluster”)

infringes, either literally or by equivalents, claims 1 , 5 , and 9

of the ’377 patent. Oracle, on the other hand, says that an RAC

cluster does not infringe because it does not use local

5 persistent memory devices or provide a shared addressable memory

space, as required by claim 1 . Oracle is correct.

Determining patent infringement is a two step process: “the

court first construes the scope of the asserted claims and then

compares the accused device to the properly construed claims to

determine whether each and every limitation of the claim is

present, either literally or equivalently, in the accused

device.” Tate Access Floors, Inc. v . Interface Architectural

Res., Inc.,

(Fed. Cir. 2002) (citing

Amazon.com, Inc. v . Barnesandnoble.com, Inc.,

(Fed. Cir. 2001)). Claim interpretation is a matter of law.

Markman v . Westview Instruments, Inc.,

6 7 , 977 (Fed.

Cir. 1995), aff’d,

(1996). But, whether the accused

product infringes the claims as interpreted is a factual

question. Syntex (U.S.A.) LLC v . Apotex, Inc.,

(citing Bai v . L & L Wings, Inc.,

(Fed.

Cir. 1998)). Because infringement is based on a question of

fact, summary judgment on infringement is proper for the patent

owner only when, drawing all inferences in favor of the alleged

infringer, there exists no genuine issue of material fact that

every limitation recited in the properly construed claim is found

in the accused product. P.C. Connector Solutions LLC v .

6 SmartDisk Corp.,

(Fed. Cir. 2005)(citing Bai,

)). On the other hand, summary judgment for

the accused infringer is proper only when, drawing all inferences

in favor of the patent holder, there exists no genuine issue of

material fact that one or more limitations recited in the

properly construed claims is not found in the accused product.

In this case, the claim limitation in question is the

requirement in claim 1 for a “shared addressable memory space.”

The court interpreted “shared addressable memory space” to mean:

a memory space distributed across the volatile and non- volatile memory of all the nodes participating in the patents’ shared memory system (though not necessarily all nodes on the network), which shared addressable memory space can be accessed by the various participating nodes using one or more addresses. The participating nodes need not, however, utilize a common or global addressing scheme.

Order at 2 8 , September 2 1 , 2004 (document n o . 60) (the “Markman

Order”). In particular, the shared addressable memory space must

be distributed across both the non-volatile and volatile memory

of the participating nodes. Non-volatile memory, also referred

to as persistent memory, is memory capable of retaining data

after power is removed.

7 Claim 1 restricts persistent memory devices to “local

persistent memory devices.” The ’377 patent, 16:3. The court

interpreted “local,” when used to modify a computer device, to

mean:

a computer device (e.g., a hard drive) that is directly attached to a single computer’s processor by, for example, the computer’s bus. Such a “local” device may, however, be shared with and accessible by other nodes on the network (and, of course, other nodes participating in the shared memory system).

Markman Order at 2 9 . Therefore, to read on claim 1 , a shared

addressable memory space must be distributed across the

persistent memory of all the participating nodes. And, the

persistent memory of a given participating node must be provided

by a persistent memory device that is directly attached to that

one, and only that one, participating node (though it may be

shared by other nodes).

A. Literal Infringement

Oracle argues that the memory space shared in RAC clusters

does not span local persistent memory devices. Mangosoft

disagrees, arguing that three different RAC cluster

configurations use local persistent memory devices: the Dell

8 configuration, the VeriSign configuration, and the Storage Area

Network (“SAN”) configuration.

i. The Dell Configuration and the VeriSign Configuration

The Dell and the VeriSign configurations are similar. In

the Dell configuration, two servers are connected to a common

persistent memory array via Fibre Channel cables. In the

VeriSign configuration, two servers are connected to a common

pair of persistent memory arrays via cables. Therefore, the

persistent memory device is connected to more than one node in

each configuration.

Mangosoft contends that the Fibre Channels and the cables

create a direct attachment between the servers and the persistent

memory arrays, making the persistent memory arrays “local” to the

servers. According to the court’s construction, however, a local

device is a device that is “directly attached to a single

computer’s processor.” Markman Order at 29 (emphasis supplied).

The “single” requirement emphasizes that a local device is

somehow unique to one node (although it may also have non-unique

associations with other nodes).

9 The specification describes local persistent memory devices

as “each couple[d] to a respective one of the plural computers.”

The ’377 patent, 3:11-14, 59-62. Additionally, claim 1 teaches

“a local persistent memory device coupled to said computer.” The

’377 patent, 16:3-5. Plainly, then, the ’377 patent emphasizes

that each local device is uniquely associated with one of the

participating nodes.

Moreover, unlike its current position, Mangosoft once

contended that “local” refers to the “memory devices that a given

computer or node contributes to the shared memory system.” Pl.’s

Markman B r . at 9, 10 (document n o . 3 5 ) . Mangosoft contrasted the

term “local” with the term “remote,” “which is used in reference

to how a given computer or node distinguishes the memory that

other computers or nodes contribute to the shared memory system

and services.”

As the ’377 patent itself does, Mangosoft

emphasized that each local device must have an association unique

to one of the participating nodes.

Regardless of whether the Fibre Channels and the cables

create a sufficiently direct attachment, the persistent memory

arrays in both configurations are connected to and shared by more

than one node. The persistent memory arrays in both

10 configurations are not unique to a single node, placing them

outside the scope of “local” as contemplated by the ’377 patent.

Mangosoft does not contend that either configuration shares

any persistent memory other than that provided by the persistent

memory arrays. Therefore, the Dell configuration and the

VeriSign configuration do not infringe claim 1 (the sole

independent claim at issue) of the ’377 patent because they lack

a shared addressable memory space that spans a local persistent

memory device. It necessarily follows that those configurations

do not infringe claims 5 and 9 of the ‘377 patent because those

claims depend on claim 1 .

ii. The SAN Configuration

In the SAN configuration, three nodes are connected to a

switch that is connected to three persistent storage disks.

Mangosoft argues that at a given point in time, the switch allows

one node direct access to one persistent storage disk, making

that storage disk “local” to that node and shared with the other

nodes. Mangosoft focuses on the ability of a node to issue local

block level commands to the persistent storage disks via the

switch. Consistent with its position, Mangosoft contends that

configurations using servers to coordinate the communication

11 between persistent storage devices and nodes, such as a Network

Attached Storage (“NAS”) configuration, are not local because the

nodes do not issue local block level commands directly to the

persistent memory devices. The court, however, did not construe

“local” in terms of access but in terms of attachment.

At the Markman hearing, the parties disputed “whether a

local memory device must be ‘attached’ to only one computer

(Oracle’s view), or whether it need only be ‘accessible’ by a

computer without having to go through another node or computer

controlling access to that device (Mangosoft’s view).” Markman

Order at 1 8 . After considering both views, the court construed a

“local” device to be one that is directly attached to a single

node. This construction is supported by the ’377 patent’s

consistent description of local memory devices as being “coupled”

to a computer, implying that whether a memory device is local to

a node depends on some physical relationship, rather than a

particular mode of communication. The ’377 patent, 3:11-14, 59-

6 2 , 16:1-5.

Direct command level access and direct physical attachment

are not synonymous; direct attachment is a narrower requirement

than direct access. As Mangosoft’s expert, David Klausner,

12 stated, “a device does not need to be directly attached to a node

in order for it to be directly accessed by the node.” Klausner

Decl. at para. 1 4 , submitted with Pl.’s Opp’n B r . on Claim

Construction (document n o . 4 3 ) . Therefore, even if the nodes

treat the persistent storage disks as local by issuing local

block level commands, the persistent storage disks are not

necessarily local, as that term is used in the ’377 patent,

unless they are directly attached to the nodes.

Memory devices attached to a node by a switch are not

directly attached to the node. As the court has construed the

‘377 patent, a local device is “directly attached” to a node if

it does not require “an intervening communication channel.”

Markman Order at 1 8 . The court’s construction of the ‘377 patent

draws a distinction between a local device, which is directly

attached to a single node, and a non-local device, which, “by

some intervening communication channel, might be accessed by more

than one computer.”

A switch falls squarely within the

scope of “intervening communication channel” as contemplated by

the Markman Order, because it provides a means for memory devices

to be accessed by more than one computer. Additionally,

Mangosoft’s own expert conceded that storage devices connected to

a computer node via a switch are not directly attached. Klausner

13 Decl. at para. 16. 2 By virtue of the switch, the persistent

storage disks in the SAN configuration are not local to the

nodes.

Mangosoft does not argue that any other persistent memory is

shared by the nodes in the SAN configuration. Thus, the SAN

configuration does not infringe claim 1 , and by extension claims

5 and 9, because it lacks a shared memory space that spans local

persistent memory devices.

In summary, then, none of the three configurations

identified by Mangosoft literally infringes the ’377 patent

because none of those configurations has the required element of

a shared addressable memory space that is distributed across

2 Mangosoft attempts to explain away this statement by asserting that it was directed to a NAS configuration rather than a SAN configuration. In fact, the declaration references an example that shows “several network storage devices connected through a switch (not directly attached) to several computer nodes (Ex. A , p . 5 , Fig. 3).” Klausner Decl. at para. 6. Figure three shows a Switched Fibre Channel topology. Klausner Decl., Ex. A at 5 . In the paragraphs preceding that figure, Fibre Channels are associated with a SAN configuration, not NAS configurations. Klausner Decl., Ex. A at 4 . In any case, the differences between a NAS and a SAN configuration bear no relationship to whether a switch constitutes an intervening communication channel. A switch performs the same function in both configurations - it allows more than one node to access a memory device.

14 local persistent memory devices. Thus, Mangosoft’s motion for

summary judgment is denied and Oracle’s motion for summary

judgment is granted as to literal infringement. Since Oracle

does not infringe claims 1 , 5 , and 9 of the ‘377 patent, the

court need not consider Oracle’s assertion that the three

configurations do not have a shared addressable memory space.

B. Infringement by Equivalents

None of the configurations identified by Mangosoft infringes

under the doctrine of equivalents. “Under the doctrine of

equivalents, a patent claim limitation not literally met may be

satisfied by an element of the accused product if the differences

between the two are ‘insubstantial’ to one of ordinary skill in

the art.” Boehringer Ingelheim Vetmedica, Inc. v . Schering-

Plough Corp.,

(Fed. Cir. 2003) (citing Reeves

v . Sanderson Plumbing Prods., Inc.,

(2000)).

The doctrine of prosecution history estoppel, however, limits

application of the doctrine of equivalents when “the applicant

makes a narrowing amendment for purposes of patentability.”

Salazar v . Procter & Gamble Co.,

(Fed. Cir.

2005) (citing Festo Corp. v . Shoketsu Kinzoku Kogyo Kabushiki

Co.,

2 2 , 736 (2002)). The patentee’s amendment to

narrow the scope of a claim does not bar the application of the

15 doctrine of equivalents as to that element, but rather limits the

range of equivalents available to the patentee. Festo Corp., 535

U.S. at 740 (“A patentee’s decision to narrow his claims through

amendment may be presumed to be a general disclaimer of the

territory between the original claim and the amended claim.”).

The patentee bears “the burden of showing that. . . [an]

amendment does not surrender the particular equivalent in

question.” Id.

Claim 1 , as originally filed, did not include the “local”

limitation on the persistent memory devices. Mangosoft amended

claim 1 to add the “local” restriction. That Mangosoft relied on

the amendment for patentability is underscored by its

representation to the PTO that “none of the relied upon [prior

art] references teaches or suggests local volatile memory devices

(e.g., RAM associated with each network computer) or persistent

memory devices (e.g., hard disks associated with each networked

computer), having portions of a shared memory space mapped

thereon.” Lumish Decl., Ex. 34 at ORCL 000386, submitted with

Def.’s Mot. for Summ. J. (document n o . 7 4 ) . Since Mangosoft

distinguished its invention from the prior art based on the use

of local memory devices, Mangosoft is limited to claiming

16 equivalents of configurations that use “local” persistent memory

devices.

The non-local persistent memory devices in the Dell,

VeriSign, and SAN configurations would literally infringe claim 1

as originally filed. But, holding that a configuration with a

non-local persistent memory device is equivalent to a

configuration with a local persistent memory device would permit

Mangosoft to reclaim territory that it surrendered during

prosecution of the ‘377 patent - something Mangosoft is barred

from doing. See Festo Corp., 535 U.S. at 733-734 (“When,

however, the patentee originally claimed the subject matter

alleged to infringe but then narrowed the claim in response to a

rejection, he may not argue that the surrendered territory

comprised unforeseen subject matter that should be deemed

equivalent to the literal claims of the issued patent.”). Thus,

Oracle’s motion for summary judgment is granted as to

infringement by equivalents.

C. Induced Infringement

Mangosoft further argues that Oracle is liable for inducing

direct infringement. To succeed on its claim that Oracle induced

others to infringe the ‘377 patent, however, Mangosoft must first

17 show that there actually has been direct infringement, either

literally or by equivalents. See MEMC Elec. Materials, Inc. v .

Mitsubishi Materials Silicon Corp.,

, 1378 (Fed.

Cir. 2005) (citing Minn. Mining & Mfg. C o . v . Chemque, Inc.,

(Fed. Cir. 2002)). As noted above in the

literal infringement and infringement by equivalents discussions,

Mangosoft has not shown direct infringement. It necessarily

follows that Oracle did not induce third parties to infringe the

patent by using its non-infringing software. See Anton/Bauer,

Inc. v . PAG, Ltd.,

(Fed. Cir. 2003).

Mangosoft’s motion for summary judgment on grounds of induced

infringement is denied.

II. Validity of the ’377 Patent

Both sides move for summary judgment on the issue of

validity. Mangosoft moves for partial summary judgment,

asserting that a number of prior art references submitted by

Oracle do not anticipate the ’377 patent. Oracle, on the other

hand, argues that the ’377 patent is anticipated and rendered

obvious by prior art references.

A patent claim is invalid if it is anticipated or obvious.

See

0 2 , 103. A patent claim is generally presumed

18 to be valid.

. The party alleging invalidity has

the burden of producing clear and convincing evidence of the

claim’s invalidity. Schumer v . Lab. Computer Sys., Inc.,

(Fed. Cir. 2002) (citing Apotex USA, Inc. v .

Merck & Co.,

(Fed. Cir. 2001)). Here, with

one exception, neither party has demonstrated that it is entitled

to judgment as a matter of law on the issue of validity or

invalidity of the ’377 patent. Only with respect to the Oracle

Parallel Server (“OPS”) reference is Mangosoft entitled to

summary judgment on the issue of validity.

A. Anticipation

A patent claim is invalid as anticipated under section 102

if “each and every limitation is found either expressly or

inherently in a single prior art reference.” Oakley, Inc. v .

Sunglass Hut Int’l,

(Fed. Cir. 2003) (quoting

Celeritas Techs. Inc. v . Rockwell Int’l Corp.,

(Fed. Cir. 1998)). “To anticipate, the reference must also

enable one of skill in the art to make and use the claimed

invention.” Bristol-Myers Squibb C o . v . Ben Venue Labs., Inc.,

(Fed. Cir. 2001) (citing In re Donhue,

3 1 , 533 (Fed. Cir. 1985)).

19 Under section 102(a), prior art includes art “known or used

by others in this country, or patented or described in a printed

publication in this or a foreign country, before the invention

thereof by the applicant for patent.”

(a). And,

under section 102(b), it includes art “patented or described in a

printed publication in this or a foreign country or in public use

or on sale in this country, more than one year prior to the date

of the application for patent in the United States.”

(b). Whether a prior art reference anticipates an invention

is a question of fact. Elan Pharms., Inc. v . Mayo Found.,

(Fed. Cir. 2003) (citing Hoover Group, Inc. v .

Custom Metalcraft, Inc.,

(Fed. Cir. 1995)).

With the exception of the OPS reference, genuine issues of

material fact regarding anticipation exist with respect to each

other reference. Consequently, neither party is wholly entitled

to judgment as a matter of law on the issue of anticipation.

i. The OPS Reference

In support of its motion for summary judgment, Mangosoft

asserts that the OPS reference does not anticipate claims 1 , 5 ,

and 9. Oracle disagrees and moves for summary judgment that the

OPS references, under Mangosoft’s theory of infringement, does

anticipate.

20 Oracle’s theory of anticipation rests on its argument that

“beyond an issue of material fact, there is no relevant

difference between the functionality of RAC alleged to infringe

and the functionality of OPS in the prior art.” Mem. in Supp. of

Def.’s Mot. for Summ. J. at 3 3 . Specifically, Oracle argues that

OPS was designed to operate on the same type of computer clusters

and in the same fashion as the accused RAC software. See Mem. in

Supp. of Def.’s Mot. for Summ. J. at 3 4 . As determined earlier,

a computer cluster configured to use RAC software does not

infringe, because it does not have a shared addressable memory

space spanning local persistent memory devices. A system that

generally mirrors the RAC system architecture, as Oracle concedes

the OPS reference does, lacks the same required element. Thus,

the OPS reference does not, as a matter of law, anticipate claim

1 , and by extension claim 5 and 9, because is does not include

every claim 1 limitation.

There is no need to further consider Mangosoft’s arguments

with respect to the OPS reference. Mangosoft’s motion for

summary judgment is granted and Oracle’s motion for summary

judgment is denied as to anticipation by the OPS reference.

21 ii. The VAXcluster References3

The VAXcluster references include three articles: the Snaman

article,4 the Thiel article,5 and the Kronenberg article.6

Mangosoft moves for summary judgment, asserting that the Snaman

and Thiel articles do not anticipate claim 1 , 5 , and 9, while

Oracle moves for summary judgment, asserting that the Kronenberg

article does anticipate. Each side opposes the other’s motion.

Mangosoft argues that the Snaman and Thiel articles do not

anticipate because neither discloses a shared addressable memory

space that spans the local volatile memory of the participating

nodes. Oracle disagrees.

3 Sometimes referred to by the parties as the DEC references. 4 William E . Snaman, Jr., Application Design in a VAXcluster System, Vol. 3 N o . 3 Digital Technical Journal 1 (Summer 1991) (sometime referred to by the parties as the DEC VAXcluster reference). 5 William E . Snaman, J r . & David W . Thiel, The VAX/VMS Distributed Lock Manager, N o . 5 Digital Technical Journal 29 (Sept. 1987) (sometime referred to by the parties as the DEC DLM reference). 6 Nancy P. Kronenberg et a l . , The VAXcluster Concept: An Overview of a Distributed System, N o . 5 Digital Technical Journal 7 (September 1987).

22 The Snaman article discusses the design and application of

VAXcluster systems so that computing systems can survive the

failure of any component. Gilman Decl., Ex RR at 1 , submitted

with Pl.’s Mot. for Summ. J (document n o . 7 5 ) . The processors in

a VAXcluster system “interact to form a cooperating distributed

operating system.”

In a VAXcluster system, “all disks and

their stored files are accessible from any processor as if those

files were connected to a single processor.”

To support its argument, Mangosoft relies on the statements

of its expert witness, David Klausner. Klausner argues that the

Snaman article only discloses “nodes participating in a

DECVAXcluster computer system . . . [accessing] the memory space

across the persistent memory devices,” not the volatile memory

devices of the nodes. Klausner Decl. at paras. 105 and 106.

(emphasis supplied). Although the article mainly discusses

sharing memory between persistent storage devices such as disks

and tapes, the article also discloses that the system may be

configured to utilize local buffer caches, which are volatile

storage devices. Gilman Decl., Ex. RR at 2 . Whether one of

ordinary skill in the art would understand utilizing local buffer

caches to constitute shared addressable memory space spanning the

local volatile memory is not readily apparent to the court.

23 Contrary to Mangosoft’s expert, Oracle’s expert witness, Paul

Clark, states that “[the Snaman article] teaches sharing copies

of blocks of data among clustered computers utilizing direct RAM

to RAM transfer between nodes.” Clark Decl. at 1 8 7 , submitted

with Def.’s Mot. for Summ. J. RAM, like cache, is volatile

memory. Given the disparate statements of these two experts, a

genuine issue of material fact arises with regard to whether a

person of ordinary skill in the relevant art would understand the

Snaman article to disclose a shared addressable memory space that

spans local volatile memory. Thus, Mangosoft’s motion for

summary judgment is denied with respect to anticipation by the

Snaman article.7

The Thiel article discloses a method of synchronizing access

to shared resources on a VAXcluster system. As with the Snaman

article, Mangosoft’s expert states that “[a]s described in the

[Thiel article], nodes participating in a computer system using

the DEC DLM as described cannot access the memory space

distributed across the volatile memory of all nodes participating

in the system.” Klausner Decl. at para. 108. The Thiel article

discloses a method for preventing more than one node accessing

7 Oracle did not move for summary judgment that the Snaman article anticipates claims 1 , 5 , and 9 of the ‘377 patent.

24 data at a time (i.e., data locking), while maintaining coherency

between the cache (volatile memory) and disk (persistent memory).

Ex. SS at 3 1 . The ability of nodes in a VAXcluster system to

access the cache, opines Oracle’s expert, sufficiently reads on

the necessary shared addressable memory space. Clark Decl. at

188, 189. Again, the disparity between expert witness opinions

creates a genuine issue of material fact: whether a person of

ordinary skill in the relevant art would understand the Thiel

article to disclose a shared addressable memory space that spans

local volatile memory. Thus, Mangosoft’s motion for summary

judgment is denied with respect to anticipation by the Thiel

article.8

Turning to Oracle’s motion and the third VAXcluster

reference, the Kronenberg article provides a general overview of

the VAXcluster system. Oracle argues that the Kronenberg article

anticipates claims 1 , 5 , and 9. Mangosoft counters that Oracle

has not even established a prima facie case of anticipation

because Oracle confusingly and improperly compares the Kronenberg

article to the claims limitations.

8 Oracle did not move for summary judgment that the Thiel article anticipates claims 1 , 5 , and 9 of the ‘377 patent.

25 Typically, to show that a prior art reference anticipates a

claim, a party “must identify each claim element, state [its]

interpretation of the claim element, and explain in detail how

each claim element is disclosed in the prior art reference.”

Koito Mfg. C o . v . Turn-Key-Tech, LLC,

(Fed.

Cir. 2004) (citing Schumer,

). Here, Oracle’s

arguments and supporting exhibits are insufficient to show that

the Kronenberg article anticipates. Oracle’s argument is based

entirely on conclusory statements that an element is disclosed,

supported only by ambiguous quotes from the reference. For

example, Oracle argues:

The Kronenberg article describes the VAX nodes as having local RAM. See, e.g., ORCL 89125 (“high speed memory-to-memory block transfer between nodes”); ORCL 89129 (“copying block data from the process virtual memory of one node to the process virtual memory of another node.”); ORCL 89136 (discussing buffer caching in a node.”)

Mem. is Supp. of Def.’s Mot. for Summ. J. at 44 (emphasis in

original). The conclusory statement and references to the

article are not supported by expert testimony explaining the

correlation between the article and elements of claim 1 of the

‘377 patent. And, the references to the article are not so

unambiguous as to require no explanation or discussion. The

court need not attempt to decipher confusing or generalized

26 argument to determine whether a case of invalidity has been made

out, particularly at the summary judgment stage. See Schumer,

.

Oracle argues that its expert witness compared the

VAXcluster system, on an element-by-element basis, to the claims.

While the expert’s declaration does discuss the VAXcluster

system, it only discusses the VAXcluster system with reference to

the Snaman article and the Thiel article. See generally, Clark

Decl. at 148-216. The Kronenberg article is not discussed.

Thus, Oracle’s motion for summary judgment on grounds that the

Kronenberg article anticipates is denied; it has failed to prove

by clear and convincing evidence that the Kronenberg article

discloses “each and every limitation” of claim 1 , and by

extension claims 5 and 9.

iii. The IBM Reference and the Franklin Reference

Mangosoft also moves for summary judgment, asserting that

the IBM reference and the Franklin reference do not anticipate

claims 1 , 5 , and 9. Specifically, Mangosoft argues that the IBM

reference does not disclose a shared memory subsystem that is

distributed among the participating nodes, as required by claim

1. And, as to the Franklin reference, Mangosoft says it does not

27 disclose a shared addressable memory space that includes local

persistent and volatile memory. Oracle disagrees on both counts.

The IBM reference is a research paper that discusses a

scheme for sharing, reading, and modifying data. The scheme uses

a Global Lock Manager to control the flow of data. Mangosoft,

relying on its expert witness, argues that this Global Lock

Manager is centralized, not distributed. The expert’s

declaration, however, simply states that “the IBM reference

describes a centralized Global Lock Manager that manages the

locks of a system as opposed to a distributed manager for

mapping,” without further explanation. Klausner Decl. at para.

103. In response, Oracle, relying on its expert witness, argues

that the Global Lock Manager is distributed. Oracle’s expert

bases his opinion on language from the IBM reference indicating

that multiple copies of the Global Lock Manager exist. See

Lumish Decl., Ex. AA at 255-56, submitted with Def.’s Opp’n to

Pl.’s Mot. for Summ. J. (document n o . 7 7 ) . The disparity in

expert witness testimony raises a question of material fact

sufficient to preclude the court from granting Mangosoft’s motion

for summary judgment in regards to anticipation by the IBM

reference.

28 For much the same reason, summary judgment is not proper

with respect to the Franklin reference. Again, both sides

disagree, relying on expert testimony to support their respective

positions. The Franklin reference discusses techniques used to

treat a system of computers as a single memory hierarchy. The

technique uses workstation computers and server computers.

Mangosoft’s expert says the memory space disclosed in the

Franklin reference does not incorporate the persistent memory of

the workstations or the volatile memory of the servers. See

Klausner Decl. at paras. 111-12. In opposition, Oracle’s expert

says the Franklin reference’s memory space does include both

local persistent and volatile memory. See Clark Decl. at paras.

180-82, 192-93. As with the IBM reference, the disparity in

expert witness testimony raises a question of material fact

sufficient to preclude the court from granting Mangosoft’s motion

for summary judgment as to the Franklin reference. Thus,

Mangosoft’s motion for summary judgment is denied with respect to

anticipation by the IBM reference and the Franklin reference.

iv. The Opal Reference, the SAOS Reference, the WADS Reference, and the MESS Reference

Next, Mangosoft moves for summary judgment on grounds that

the Opal reference, the Single Address-Space Operating System

29 (“SAOS”) reference, the Wide Area Data Space (“WADS”) reference,

and the MESS reference - all of which are cited by Oracle - do

not anticipate claims 1 , 5 , and 9, because they are not enabling.

Specifically, Mangosoft argues that the references do not enable

a “shared addressable memory space.” Again, Oracle disagrees.

“Whether a prior art reference is enabling is a question of

law based upon underlying factual findings.” SmithKline Beecham

Corp. v . Apotex Corp.,

(Fed. Cir. 2005).

To be enabling, a prior art reference must enable “one of

ordinary skill in the art [to] practice the invention without

undue experimentation.” Novo Nordisk Pharm., Inc. v . Bio-Techn.

Gen. Corp.,

(Fed. Cir. 2005) (citing

SmithKline Beecham,

). Undue experimentation “is

not a single, simple factual determination, but rather is a

conclusion reached by weighing many factual considerations.” In

re Wands,

3 1 , 737 (Fed. Cir. 1988). Those factual

considerations include: “(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.”

30 Warner-Lambert C o . v . Teva Pharms. USA, Inc.,

(Fed. Cir. 2005) (citing In re Wands,

3 7 ) .

Both patents and journal publications constitute prior art

references. See

(b). As an initial matter,

Mangosoft and Oracle dispute whether the In re Wands factors

apply to journal publications. Mangosoft argues that they d o .

Oracle disagrees, arguing that In re Wands only dealt with the

patent validity enablement requirement under

.

Both are correct.

In In re Wands, the question was “[w]hether the

specification in an application . . . is enabled.”

. Nevertheless, the Federal Circuit has also considered the

In re Wands factors in determining whether a prior art reference

is enabling. See, e.g., Elan Pharms.,

.

Still, the Federal Circuit recognizes that the enablement

requirements for a patent under section 112 para. 1 are different

from a non-patent prior art reference under section 102.

Rasmusson v . SmithKline Beecham Corp.,

, 1325 (Fed.

Cir. 2005). More specifically, section 112 para. 1 requires a

patent’s written description to disclose how to use the invention

and “set forth the best mode of carrying out the invention

31 contemplated by the inventor.” Although a written description

that fails to meet these technical requirements of section 112

para. 1 is not enabled, the written description may still

constitute an enabling reference under section 102. See

Rasmusson, 413 F.3d at 1326 (“[A] prior art reference need not

demonstrate utility in order to serve as an anticipating

reference under section 102.”). Thus, the In re Wands factors

are applicable in determining enablement of prior art references

consisting of journal publications.

Mangosoft argues that the four references are non-enabling

because “the references do not provide close to the type of

detail, such as specific guidance and working examples as set

forth in the ’377 patent.” Mem. is Supp. of Pl.’s Mot. for Summ.

J. at 5 3 . The invention disclosed in a prior art reference need

not actually have been made for the reference to be enabling. In

re Donohue,

3 1 , 533 (Fed. Cir. 1985). A working

example implies that the invention disclosed in the prior art

reference had actually been made, which is not a requirement.

Thus, the absence of working examples is not dispositive of

whether a prior art reference is enabling. See In re Wands,

(“Whether undue experimentation is needed is not a

32 single, simple factual determination, but rather is a conclusion

reached by weighing many factual considerations.”).

Even though working examples are not required, a prior art

reference must still be able to be made without undue

experimentation by a person of ordinary skill in the relevant

art. Novo Nordisk Pharm., Inc.,

(citing

SmithKline Beecham,

). Mangosoft asserts that

the prior art references are not enabling because “they are only

memorialized ideas and state explicitly that there are

implementation details left to the reader.” Mem. is Supp. of

Pl.’s Mot. for Summ. J. at 53 (emphasis in original). “But the

question of undue experimentation is a matter of degree.” PPG

Indus. v . Guardian Indus. Corp.,

(Fed. Cir.

1996) (quoting Atlas Powder C o . v . E.I. DuPont de Nemours & Co.,

(Fed. Cir. 1984)). And, the proper inquiry

is not whether some experimentation is required, but whether the

experimentation is unduly extensive. See

Furthermore, a considerable amount of experimentation is not

unduly extensive if it is merely routine. In re Wands,

. The fact that certain “details” are undefined does not

necessarily preclude enablement. See

Mangosoft does not

33 address why making the invention would require undue

experimentation without these “details,” nor does it address any

other In re Wands factor. Given that “undue experimentation” is

a factual question, there exists a substantial question of

material fact as to whether the unspecified implementation

details in the Opal reference, the SAOS reference, the WADS

reference, and the MESS reference would require undue

experimentation. Thus, Mangosoft’s motion for summary judgment

with regard to those four prior art references is denied.

B. Obviousness

A patent may be invalid as obvious under section 103(a) “if

the difference 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.”

(a). Whether a claim is

obvious under § 103(a), “depends on at least four underlying

factual issues: (1) the scope and content of the prior art; (2)

differences between the prior art and the claims at issue; (3)

the level of ordinary skill in the pertinent art; and (4)

evaluation of any relevant secondary considerations.” Princeton

Biochemicals, Inc. v . Beckman Coulter, Inc.,

, 1336

34 (Fed. Cir. 2005) (citing Graham v . John Deere Co.,

, 17

(1966)). A claim may be rendered obvious by combining elements

across different references if there is a “suggestion, motivation

or teaching to those skilled in the art for such a combination.”

Iron Grip Barbell C o . v . USA Sports, Inc.,

(Fed. Cir. 2004) (citing In re Fine,

(Fed.

Cir. 1988)).

“The ultimate determination of obviousness is a question of

law.” Para-Ordnance Mfg. v . SGS Imps. Int’l,

(Fed. Cir. 1995)(citing Stiftung v . Renishaw PLC,

(Fed. Cir. 1991)). But, determining the scope and content

of the prior art, differences between the prior art and the

claimed invention, the level of ordinary skill in the art, and

objective evidence of secondary considerations are questions of

fact.

Oracle argues claims 1 , 5 , and 9, are rendered obvious by

some combination of the OPS reference and the VAXcluster

references. Oracle’s analysis is insufficient, however, to

warrant the entry of summary judgment. Specifically, Oracle

fails to properly address the first and second Graham factors.

The first Graham factor considers the scope and content of the

35 prior art. Graham,

7 . As noted above, there are

questions of material fact as to the scope and content of

VAXcluster references. Furthermore, the second Graham factor

addresses the differences between the prior art and the claims at

issue.

Oracle fails to address any differences. Instead,

Oracle simply declares that “[b]oth OPS and the Kronenberg

article teach all of the limitations of the asserted claims.”

Mem. in Supp. of Def.’s Mot. for Summ. J. at 4 7 . Plainly, that

argument is insufficiently developed to warrant the entry of

summary judgment.

Additionally, Oracle is vague as to how the references

should be combined, simply stating that “the scope and content of

the prior art includes all of the functions Mangosoft alleges

infringe the asserted claims, and there is no difference in

scope.” Mem. in Supp. of Def.’s Mot. for Summ. J. at 4 7 . Like

its arguments for anticipation, Oracle’s arguments for

obviousness are merely conclusory and lack any explanation or

analysis. And, as mentioned previously, the court need not

attempt to decipher confusing or generalized argument to

determine whether a case of invalidity has been made out,

particularly at the summary judgment stage. See Schumer,

. Oracle’s motion for summary judgment as to

36 obviousness is denied, on grounds that it has failed to

establish, by clear and convincing evidence, that claims 1 , 5 ,

and 9 are invalid as obvious. Accordingly, there is no need to

consider Mangosoft’s arguments regarding secondary indicia of

non-obviousness.

III. Enforceability of the ’377 Patent

Finally, Oracle moves for summary judgment on the issue of

enforceability, accusing Mangosoft of misconduct during the

prosecution of the ’377 patent. Mangosoft denies misconduct.

A patent may be rendered unenforceable if it was procured by

inequitable conduct. Minn. Mining & Mfg. C o . v . Johnson &

Johnson Orthopaedics, Inc.,

(Fed. Cir. 1992)

(citing Kingsdown Med. Consultants, Ltd. v . Hollister, Inc.,

6 7 , 877 (Fed. Cir. 1988)). Applicants have a duty to

prosecute a patent application with candor and good faith toward

the PTO. Li Second Family Ltd. P’ship v . Toshiba Corp.,

(Fed. Cir. 2000) (citing Molins PLC v . Textron, Inc.,

(Fed. Cir. 1995)). This duty extends to

“[e]ach individual associated with the filing and prosecution of

a patent.”

(a). Breaching the duty of candor by

failing to disclose material information with an intent to

37 deceive the PTO amounts to inequitable conduct. Li Second Family

Ltd. P’ship,

(citing Molins PLC,

). Here, Oracle asserts that Mangosoft breached its duty of

candor when Scott Davis, allegedly one of two Mangosoft engineers

involved in prosecuting the ’377 patent, failed to disclose the

VAXcluster references.9

To succeed on its claim of inequitable conduct, Oracle must

show by “clear and convincing evidence” that Mangosoft failed to

disclose material information with an intent to mislead the PTO.

Bristol-Myers Squibb C o . v . Rhone-Poulenc Rorer, Inc.,

, 1233-34 (Fed. Cir. 2003) (citing Kingsdown Med.

Consultants,

7 2 ) . In other words, Oracle must show

that the VAXcluster references were material, and that Davis

intended to deceive the PTO by failing to disclose them. Both

materiality and intent to mislead are questions of fact.

at

1234 (citing G F I , Inc. v . Franklin Corp.,

, 1273

9 Although Oracle argues that Mangosoft failed to disclose the VAXcluster references, it only specifically mentions the Kronenberg article. For purposes of this order, the court assumes Oracle is referring to the Snaman article and the Thiel article when it refers to the “other” VAXcluster references, since those three articles are the only ones discussed by Oracle that involve the VAXcluster technology.

38 (Fed. Cir. 2001). Oracle has failed to carry its burden at this

stage.

Information is material if “[i]t establishes, by itself or

in combination, a prima facie case of unpatentability . . . [by]

compel[ling] a conclusion that a claim is unpatentable . . .

giving each term in the claim its broadest reasonable

construction consistent with the specification.”

(b). Oracle argues that the Kronenberg article, by itself

and in combination with the other VAXcluster references,

establishes a prima facie case that claim 1 is unpatentable. As

noted above, however, there exists a substantial question whether

the Kronenberg article would establish a prima facie case of

unpatentability. Additionally, as mentioned above in the court’s

anticipation and obviousness discussion, there is a substantial

question whether any VAXcluster reference would establish a prima

facie case, either alone or in combination, of unpatentability.

Thus, it cannot be said that, as a matter of law, the VAXcluster

references were material. If the VAXcluster references were not

material, then Mangosoft had no duty to disclose them. Hebert v .

Lisle Corp.,

(Fed. Cir. 1996) (citing

Kingsdown Med. Consultants,

7 2 ) .

39 Oracle further argues that the VAXcluster references are

material because the references are inconsistent with Mangosoft’s

position opposing the PTO’s argument of unpatentability.

Information may also be material if “[i]t . . . is inconsistent

with, a position the applicant takes in . . . [a]sserting an

argument of patentability.”

(b)(2)(ii). During

prosecution of the ‘377 patent, the PTO rejected all of the

pending claims in the patent application over the Costa, Kish,

and Parrish prior art references. Mangosoft traversed the

rejection arguing that the cited prior art references do not

disclose multiple computers sharing memory over a network, but

rather disclose a single computer with multiple processors.

Oracle contends that (1) Mangosoft was asserting, for

purposes of patentability, that multiprocessor systems are not

similar to client-server systems, and (2) the VAXcluster

references are material because they are inconsistent with

Mangosoft’s assertion. Oracle fails to show that any

inconsistency in Mangosoft’s assertion makes the VAXcluster

references material. First, Mangosoft was merely asserting that

a single computer with multiple processors does not anticipate a

necessary element of claim 1 or the ‘377 patent: a plurality of

computers. Second, Oracle fails to show any inconsistency in

40 this assertion because Oracle does not argue that the VAXcluster

references show that a single computer with multiple processors

is a plurality of computers. Therefore, Oracle has failed to

show that the VAXcluster references are material as a matter of

law.

Even assuming, arguendo, that the VAXcluster references were

sufficiently material, “a mere showing that references having

some degree of materiality were not disclosed does not establish

inequitable conduct.” Halliburton C o . v . Schlumberger Tech.

Corp.,

(Fed. Cir. 1991) (citing FMC Corp. v .

Manitowoc Co.,

(Fed. Cir. 1987)). “[T]here

must be a factual basis for a finding of deceptive intent.”

Hebert,

(Fed. Cir. 1996) (citing Braun, Inc. v .

Dynamics Corp.,

(Fed. Cir. 1992)). Oracle

argues that Davis worked in “stealth mode,” trying to distance

himself from DEC, his former employer and creator of the

VAXcluster technology, to maintain the secrecy of the inventions

claimed in the ’377 patent. Mangosoft counters that Davis’s

“stealth mode” was not driven by an intent to deceive the PTO

but, instead, was necessary to prevent Mangosoft’s new technology

from being stolen or developed by a competitor. A substantial

question exists as to Davis’s intentions. Because there are

41 substantial questions of material fact as to both the materiality

of the VAXcluster references and, assuming materiality, Davis’s

intentions, summary judgment is inappropriate. Thus, Oracles

motion for summary judgment with respect to inequitable conduct

is denied.

Conclusion

For the foregoing reasons, the court concludes that, as a

matter of law, Oracle does not infringe claims 1 , 5 , and 9 of the

’377 patent. But, the court also concludes that the OPS

reference does not invalidate claims 1 , 5 , and 9 of the ’377

patent by anticipation.

As to whether the other references identified by Oracle

anticipate the ‘377 patent, genuine issues of material fact

preclude entry of summary judgment in favor of either party. A

substantial question of material fact also exists as to whether

the references at issue invalidate claims 1 , 5 , and 9 of the ’377

patent by rendering them obvious. Finally, there are a number of

genuinely disputed material facts that preclude entry of summary

judgment as to whether the ’377 patent is unenforceable due to

inequitable conduct.

42 Accordingly, Oracle’s motion for summary judgment (document

n o . 74) is granted to the extent it seeks a judicial declaration

that its products do not infringe claims 1 , 5 , or 9 of the ‘377

patent. It i s , however, denied with respect to invalidity and

unenforceability.

Mangosoft’s motion for summary judgment (document n o . 75) is

denied with respect to its claims that Oracle infringes claims 1 ,

5 , and/or 9 of the ‘377 patent. But, with respect to the

validity of the patent despite the existence of the OPS

reference, that motion is granted. In all other respects,

Mangosoft’s motion is denied.

At this juncture, Mangosoft’s claim for infringement of the

‘377 patent is resolved in favor of Oracle. Oracle’s counter

claims on grounds of invalidity and/or inequitable conduct remain

unresolved. Having construed the disputed terms in the patent,

and having resolved the major issues at the core of this dispute,

the court expects that the parties can resolve the remaining

issues amicably and in the interests of their respective clients

(and, parenthetically, notes that the USPTO provides alternate

methods for invalidating a patent).

43 On or before April 1 7 , 2006, Oracle shall notify the court

if it intends to pursue its claims of invalidity and

unenforceability.

SO ORDERED.

Steven J. McAuliffe Chief Judge

March 1 4 , 2006

cc: Alexander J. Walker, Esq. Paul J. Hayes, Esq. Robert R. Gilman, Esq. Daniel L. Pacik, Esq. Eugene Y . Mar, Esq. Leeron G. Kalay, Esq. Martha Van Oot, Esq. Matthew D. Powers, Esq. Matthew M . Sarboraria, Esq. Paul T . Ehrlich, Esq.

44