[Copyrighted Material Omitted]
Appeal from the United States District Court for the Northern District of California in No. 3:11-cv-06637-RS,
3:11-cv-06638-RS, Judge Richard Seeborg.
LESLIE V. PAYNE, Heim, Payne & Chorush, LLP, Houston, TX, argued for plaintiff-appellant in 2014-1094 and 2014-1096. Also represented by ERIC J. ENGER, MICHAEL F. HEIM; BROOKE ASHLEY MAY TAYLOR, JORDAN CONNORS, Susman Godfrey L.L.P., Seattle, WA.
SEAN S. PAK, Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA, argued for defendant-appellee MicroStrategy, Inc. in 2014-1094. Also represented by KEVIN ALEXANDER SMITH, JENNIFER A. KASH.
ROBERT ALAN APPLEBY, Kirkland & Ellis LLP, New York, NY, argued for defendant-appellee TIBCO Software, Inc. in 2014-1096. Also represented by JOSEPH ALLEN LOY; JOHN C. O'QUINN, Washington, DC.
Before CHEN, LINN, and HUGHES, Circuit Judges.
Linn, Circuit Judge.
Vasudevan Software, Inc. (" VSi" ) appeals the district court's clarification order, Vasudevan Software, Inc. v. MicroStrategy Inc., No. 11-cv-06637 RS and No. 11-cv-06638 RS, available at 2013 WL 5288267 (N.D. Cal. Sept. 19, 2013) (" Clarification Order" ), of its prior claim construction order, Vasudevan, No. 11-cv-06637 RS and No. 11-cv-06638 RS, available at 2012 WL 4120501 (N.D. Cal. Sept. 19, 2012) (" Initial Order" ), pursuant to which VSi stipulated that MicroStrategy, Inc. (" MicroStrategy" ) and TIBCO Software, Inc. (" TIBCO" ) (collectively " defendants" ) did not infringe any of the asserted claims of VSi's U.S. Patents No. 6,877,006 (the " '006 patent" ), No. 7,167,864 (the " '864 patent" ), No. 7,720,861 (the " '861 patent" ) and No. 8,082,268 (the " '268 patent" ) (collectively, the " patents-in-suit" ). VSi also appeals the district court's grant of summary judgment that all claims of the patents-in-suit asserted against MicroStrategy are invalid for lack of enablement. Vasudevan Software, Inc. v. MicroStrategy Inc., No. 11-cv-06637 RS (N.D. Cal. Oct. 17, 2013) (the " MicroStrategy" suit). Finally, VSi appeals the district court's grant of summary judgment that all claims of the patents-in-suit asserted against TIBCO are invalid for lack of enablement and written description. Vasudevan Software, Inc. v. TIBCO Software, Inc., No. 11-cv-06638 RS (N.D. Cal. Oct. 17, 2013) (the " TIBCO" suit).
We affirm the district court's claim construction and, accordingly, the judgment of non-infringement predicated thereon. However, because there are genuine issues of material fact regarding whether the asserted claims are enabled and have sufficient written description support, we
reverse the district court's grants of summary judgment of invalidity and remand.
A. The Patents-In-Suit
The patents-in-suit are directed to different features of an online analytical processing (" OLAP" ) cube capable of collecting and processing " live" data from multiple incompatible databases. According to the patents-in-suit, prior to the invention, data from different databases had to be converted into a compatible format and stored in a data warehouse before the data could be analyzed. Prior art systems were thus analyzing " stale" data. The inventions of the patents-in-suit sought to overcome that problem by creating an OLAP cube capable of collecting and processing information from incompatible databases at run-time without going through an intermediate warehouse repository of " stale" data. The claims of the '006, '864 and '861 patents all recite a system that accesses " disparate . . . databases."  The claims of the '268 patent use the expression " incompatible databases of different types," rather than the term " disparate databases."
B. History of the Proceedings
VSi sued MicroStrategy for infringing claim 2 of the '006 patent; claims 26, 33, 36, 41, 43, 45, 46, 48 and 50 of the '864 patent; claims 3 and 4 of the '861 patent; and claims 1, 2, 6--10, 14 and 15 of the '268 patent. In a separate suit, VSi sued TIBCO for infringing claims 26, 33, 36, 39, 41, 45, 46, 48 and 50 of the '864 patent.
The district court did not consolidate the MicroStrategy and TIBCO suits, but nonetheless considered the claim construction issues together. A key dispute in both suits was over the proper construction of the expression " disparate databases." While there was little debate over the fact that " disparate" means incompatible, the parties differed over how extensive that incompatibility must be. VSi claimed that " disparate databases" meant " incompatible databases having different schemas," while defendants contended it meant " databases having an absence of compatible keys or record identifier (ID) columns of similar value or format in the schemas or structures of the database that would otherwise enable linking data within the constituent databases." Initial Order, [WL] at *3.
The district court agreed with defendants. It ruled that the applicant defined " disparate databases" when he stated during prosecution:
" The disparate nature of the above databases refers to [an] absence of compatible keys or record identifier (ID) columns of similar value or format in the schemas or structures of the database that would otherwise enable linking data within the constituent databases."
Id. at *4 (quoting '006 patent Prosecution History, Applicant's Amendments and Remarks of Oct. 30, 2003) (emphasis omitted). The district court ruled that the above-quoted statement was " clear" and " unmistakable." Id. at *5. Accordingly, it construed " disparate databases" to mean: " databases having an absence of compatible keys or record identifier columns of similar value or format in the schemas or structures that would otherwise enable linking data." Id. The district court noted that in a prior litigation IBM and Oracle
stipulated to VSi's proposed claim construction, but ruled that " [w]hile perhaps of some import," VSi " conceded" that the earlier stipulation could not bind defendants " without violating their due process rights." Id. at *3 n.6.
In its Clarification Order, the district court explained that a database would only be disparate if it had: (1) an absence of compatible keys; and (2) an absence of record ID columns of similar value; and (3) an absence of record ID columns of similar format in the schemas or structures that would otherwise enable linking data. See Clarification Order, [WL] at *5.
The district court further held that because VSi had previously prevailed in its argument that " incompatible databases of different types" should be equated with " disparate databases," VSi was now " estopped" from claiming that the two phrases had different meanings. Id. at *1 n.3. In view of the Clarification Order, the parties stipulated to non-infringement.
The district court, finding no genuine issue of material fact, next granted a motion filed by TIBCO for summary judgment of invalidity of all the claims VSi asserted against it, contending that the specification lacked written description support of and failed to enable the " disparate databases" limitation. See TIBCO at 25--31. The district court likewise granted a similar motion filed by MicroStrategy for summary judgment of ...