Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 1 of 53
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`LAMBETH MAGNETIC STRUCTURES, )
`LLC,
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`Plaintiff,
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`SEAGATE TECHNOLOGY (US)
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`HOLDINGS, INC., et al.,
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`Defendants.
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`LAMBETH MAGNETIC STRUCTURES, )
`LLC,
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`Plaintiff,
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`WESTERN DIGITAL CORPORATION,
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`et al.,
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`Defendants.
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`Civil Action No. 16-538
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`Judge Cathy Bissoon
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`Civil Action No. 16-541
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`Judge Cathy Bissoon
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`MEMORANDUM ORDER
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`Pending before the Court are two sets of cross-motions for summary judgment in two
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`related patent infringement cases, Civil Action Nos. 16-538 and 16-541. For the reasons that
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`follow, all four motions will be granted in part and denied in part.
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`In Civil Action 16-538, Seagate Technology (US) Holdings, Inc. and Seagate Technology
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`LLC (collectively, “Seagate”) move for judgment of (1) invalidity of United States Patent No.
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`7,128,988 (the “ꞌ988 patent”) due to inadequate written description; (2) non-infringement of the
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`ꞌ988 patent by Seagate; and (3) lack of pre-suit damages. (Seagate’s Motion for Summary
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`Judgment, Civil Action No. 16-538, Doc. 150.) Plaintiff Lambeth Magnetic Structures, LLC
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`1
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 2 of 53
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`(“Lambeth”) moves for partial summary judgment in its favor on several of Seagate’s affirmative
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`defenses: (1) invalidity of the ꞌ988 patent; (2) Seagate’s equitable defenses (equitable estoppel,
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`laches, waiver, and unclean hands); (3) express or implied license, release, exhaustion and
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`double recovery; and (4) standing. (Lambeth’s Motion for Summary Judgment against Seagate,
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`Civil Action No. 16-538, Doc. 157.)
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`In Civil Action 16-541, Western Digital Corporation, Western Digital Technologies, Inc.,
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`Western Digital (Fremont), LLC, Western Digital (Thailand) Company Limited, Western Digital
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`(Malaysia) Sdn.Bhd and HGST, Inc. (collectively, “Western Digital”), move for judgment of
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`(1) non-infringement of the ꞌ988 patent by Western Digital; (2) invalidity of the ꞌ988 patent based
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`on lack of enablement; and (3) lack of pre-suit damages. (Western Digital’s Motion for
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`Summary Judgment, Civil Action 16-541, Doc. 158.) Lambeth moves also for partial summary
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`judgment in its favor on several of Western Digital’s affirmative defenses: (1) failure to comply
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`with the requirements of 35 U.S.C. §§ 102 (novelty), 103 (obviousness), and 116 (omission of
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`joint inventors) such that the ꞌ988 patent is invalid; (2) express or implied license; (3) standing;
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`and (4) Western Digital’s equitable defenses (laches and unclean hands). (Lambeth’s Motion for
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`Summary Judgment against Western Digital, Civil Action No. 16-541, Doc. 159; Lambeth’s
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`Brief in Support of Motion for Summary Judgment against Western Digital, “Lambeth’s MSJ
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`Brief Against Western Digital,” Civil Action No. 16-541, Doc. 173.)
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`2
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 3 of 53
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`BACKGROUND1
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`The ꞌ988 patent2 concerns an atomic structure for creating thin film magnetic materials
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`with desirable properties (specifically, uniaxial magnetic anisotropy, which the Court will define
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`shortly), and devices containing such materials. Thin film magnetic materials with uniaxial
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`magnetic anisotropy are useful in devices such as hard disk drives (“HDDs”) because they
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`facilitate reliably writing and reading data. Lambeth claims that Seagate and Western Digital
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`design and manufacture high performance HDDs that infringe the ꞌ988 patent by containing at
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`least one recording head made from the invented structure.
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`1 As the Court writes for the parties, the Court assumes familiarity with the procedural history of
`this case, and the Court will address only those facts that are material to resolving the instant
`motions. The Court draws facts from the following sources: Seagate’s Concise Statement of
`Material Facts in Support of Summary Judgment (“Seagate’s SOF,” Civil Action No. 16-538,
`Doc. 164) and the exhibits thereto (“Seagate’s SOF Exhibits,” Civil Action No. 16-538, Docs.
`165-171) as well as Lambeth’s Response to Seagate’s SOF (Civil Action No. 16-538, Doc. 218)
`and the exhibits thereto (“Lambeth’s Counter-SOF Exhibits against Seagate,” Civil Action No.
`16-538, Doc. 218); Lambeth’s Concise Statement of Material Facts in Support of its Motion for
`Summary Judgment (“Lambeth’s SOF against Seagate,” Civil Action No. 16-538, Doc. 173) and
`the exhibits thereto (“Lambeth’s SOF Exhibits against Seagate,” Civil Action No. 16-538, Doc.
`173) as well as Seagate’s Response to Lambeth’s SOF (Civil Action No. 16-538, Doc. 202) and
`the exhibits thereto (“Seagate’s Counter-SOF Exhibits,” Civil Action No. 16-538, Docs. 202,
`203); Western Digital’s Statement of Undisputed Facts in Support of Summary Judgment
`(“Western Digital’s SOF,” Civil Action No. 16-541, Doc. 166) and the exhibits thereto
`(“Western Digital’s SOF Exhibits,” Civil Action No. 16-541, Docs. 163, 168-172) as well as
`Lambeth’s Response to Western Digital’s SOF (Civil Action No. 16-541, Doc. 208) and the
`exhibits thereto (“Lambeth’s Counter-SOF Exhibits against Western Digital,” Civil Action No.
`16-541, Doc. 208); and Lambeth’s Concise Statement of Material Facts in Support of its Motion
`for Summary Judgment (“Lambeth’s SOF against Western Digital,” Civil Action 16-541, Doc.
`174) and the exhibits thereto (“Lambeth’s SOF Exhibits against Western Digital,” Civil Action
`16-541, Doc. 174) as well as Western Digital’s Response to Lambeth’s SOF (Civil Action No.
`16-541, Doc. 206) and the exhibits thereto (“Western Digital’s Counter-SOF Exhibits,” Civil
`Action No. 16-541, Doc. 206). Unless otherwise noted, the facts addressed in this section are
`undisputed.
`2 The ꞌ988 patent, titled “Magnetic Material Structures, Devices and Methods,” issued on
`October 31, 2006 and has an effective filing date of August 29, 2001. (Lambeth’s Response to
`Seagate’s SOF at ¶ 1.)
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`3
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 4 of 53
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`I.
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`Crystalline Materials
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`Some background on crystalline materials is necessary to understand the parties’ dispute
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`as well as the specialized terms and notation the Court will use throughout this Memorandum
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`Order. In crystalline materials, “the atoms are arranged in an ordered three-dimensional pattern
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`that extends over a long range atomic scale.” (Lambeth’s Response to Seagate’s SOF at ¶ 3.)3 A
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`“unit cell” is a three-dimensional repeating unit in a crystalline material. (Id. at ¶¶ 3, 5.)
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`Crystalline materials can be “single crystal,” meaning that if one were to follow a fixed
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`direction from one atom in the crystal, there is a constant, repeating distance between subsequent
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`atoms in the crystal, or “polycrystalline,” meaning the material contains multiple crystals that are
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`sometimes called “grains.” (Id. at ¶¶ 6-9.)
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`The three predominant types of unit cells found in nature for metallic crystals are body
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`centered cubic (“bcc”), face centered cubic (“fcc”), and hexagonal close packed (“hcp”), as
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`depicted below:
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`bcc
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`fcc
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`hcp
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`(Lambeth’s Response to Western Digital’s SOF at ¶¶ 20, 21.)
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`3 Lambeth’s Response to Seagate’s SOF and Lambeth’s Response to Western Digital’s SOF both
`contain similar expressions of agreement among the parties as to the background on crystalline
`materials. For brevity, the Court cites Lambeth’s Response to Seagate’s SOF. Unless otherwise
`noted, there are no material differences between Seagate’s and Western Digital’s statements
`concerning the nature of crystalline materials.
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`4
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 5 of 53
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`“For a given crystal, the orientation of crystal planes and crystal directions can be
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`described using a coordinate system called the ‘Miller Index,’” which “uses x, y, z coordinates to
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`denote directions and planes within a cubic crystal.” (Lambeth’s Response to Seagate’s SOF at
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`¶¶ 14-15.) Using the notation of this coordinate system, the “(110)” plane of a bcc crystal, and
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`the “[110]” direction of a bcc crystal, which is perpendicular to that plane, are shown below in
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`blue and red, respectively:
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`(Id. at ¶¶ 19-20.) Also using this notation system, the (111) plane of an fcc crystal and the [111]
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`direction of an fcc crystal, which is perpendicular to that plane, are shown in blue and red
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`respectively:
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`(Id. at ¶¶ 24-25.)
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`When describing the orientation of a crystal, a “bcc (110) crystal” means that the bcc
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`crystal’s (110) plane is parallel to the substrate and its [110] direction is perpendicular to the
`5
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 6 of 53
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`substrate. (Id. at ¶ 17.) Likewise, for an “fcc (111) crystal,” its (111) plane is parallel to the
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`substrate and its [111] direction is perpendicular to the substrate. (Id. at ¶ 22.)
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`For hexagonal crystals, such as hcp crystals, crystallographers use a “Miller Bravais”
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`index consisting of four numbers to describe planes of the crystal. (Lambeth’s Response to
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`Western Digital’s SOF at ¶ 24.)
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`Taking an imaginary slice through a crystal along a particular plane exposes a set of
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`atoms with a repetitive two-dimensional pattern. (Id.) For example, the (111) plane of an fcc
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`crystal and the (0001) plane of an hcp crystal have two-dimensional hexagonal patterns across
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`unit cells, as shown below:
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`hcp (0001)
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`(Id. at ¶ 25.)
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`fcc (111)
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`6
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 7 of 53
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`II.
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`Lambeth’s Claims against Seagate and Western Digital
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`Lambeth asserts claims 1, 3, 6, 7, 9, 17, 19, 27, 28 and 29 of the ꞌ988 patent against
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`Seagate and Western Digital. Specifically, Lambeth asserts that the accused Seagate and
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`Western Digital devices satisfy the elements recited in independent claims 1 and 27, which are
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`incorporated in the remaining dependent claims asserted against Defendants. Claims 1 and 27
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`recite the following elements:4
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`a substrate;
`at least one bcc-d layer which is magnetic, forming a uniaxial symmetry broken structure;
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`at least one layer providing a (111) textured hexagonal atomic template disposed between
`said substrate and said bcc-d layer.
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`ꞌ988 patent at col. 45, ll. 3-8; id. at col. 46, ll. 62-67.
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`The Court construed several of these claim terms in its Claim Construction Order (Civil
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`Action No. 16-538, Doc. 78; Civil Action No. 16-541, Doc. 88) as follows:
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`Undisputed Claim Term
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`“bcc-d”
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`Disputed Claim Term
`“Atomic template”
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`“[Layer] providing a (111) textured
`hexagonal atomic template”
`“Uniaxial”
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`“Symmetry broken structure”
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`“Uniaxial symmetry broken structure”
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`Construction
`Either a body centered cubic or a body
`centered cubic derivative crystal structure.
`Construction
`An atomic pattern upon which material is
`grown and which is used to direct the growth
`of an overlying layer
`Layer that is predominately (111) hexagonal
`and that provides an atomic template
`Having an anisotropy energy density function
`with only a single maximum and a single
`minimum as the magnetization angle is
`rotated by 180 degrees from a physical axis
`A structure consisting of unequal volumes or
`unequal amounts of the bcc-d variants of a six
`variant system
`A structure that is uniaxial as a result of the
`structure being symmetry broken
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`4 Claim 1 begins “A magnetic material structure comprising:,” ꞌ988 patent at col. 45, l. 1, while
`claim 27 begins “A magnetic device having incorporated therein a magnetic material structure
`comprising:,” id. at col. 46, ll. 60-61. Otherwise, the wording of the two claims is identical.
`7
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 8 of 53
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`ANALYSIS5
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`I.
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`Validity of the ꞌ988 Patent
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`Seagate argues that the ꞌ988 patent is invalid due to inadequate written description, while
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`Western Digital argues that the ꞌ988 patent is invalid due to lack of enablement. For the reasons
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`that follow, the Court concludes that there are disputed issues of material fact concerning both
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`written description and enablement, and that summary judgment on those grounds should be
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`denied.
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`A. Legal standards
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`35 U.S.C. § 112(a) requires that a patent’s specification contain:
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`a written description of the invention, and of the manner and process of making and using
`it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to
`which it pertains, or with which it is most nearly connected, to make and use the same,
`and shall set forth the best mode contemplated by the inventor or joint inventor of
`carrying out the invention.
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`This language creates “a written description requirement separate from enablement.” Ariad
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`Pharms. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010).
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`Pursuant to the written description requirement, the specification must “objectively
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`demonstrate that the applicant actually invented—was in possession of—the claimed subject
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`matter.” Id. at 1349. In other words, “the specification must describe the invention in sufficient
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`5 Summary judgment is appropriate if the moving party establishes “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). A dispute is “genuine” only if there is a sufficient evidentiary basis for a
`reasonable jury to find for the non-moving party, and a fact is “material” only if it might affect
`the outcome of the action under the governing law. See Sovereign Bank v. BJ’s Wholesale Club,
`Inc., 533 F.3d 162, 172 (3d Cir. 2008) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
`248 (1986)). In ruling on each of the pending motions for summary judgment, the Court must
`view the facts, and any reasonable inferences arising therefrom, in the light most favorable to the
`non-moving party. See Moody v. Atlantic City Bd. of Educ., 2017 WL 3881957, at *1 n.1 (3d
`Cir. Sept. 6, 2017) (citing Hugh v. Butler Cty. Family YMCA, 418 F.3d 265, 266-67 (3d Cir.
`2005)).
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 9 of 53
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`detail so ‘that one skilled in the art can clearly conclude that the inventor invented the claimed
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`invention as of the filing date sought.’” In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008)
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`(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). The inquiry
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`into whether a patent complies with the written description requirement is a factual inquiry.
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`Ariad, 598 F.3d 1351; Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). So, to decide
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`whether the written description requirement is satisfied, the factfinder must assess whether the
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`patent discloses the invention based on “an objective inquiry into the four corners of the
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`specification from the perspective of a person or ordinary skill in the art.” Ariad, 598 F.3d
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`1351.6
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`Pursuant to the enablement requirement, “the specification of a patent must teach those
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`skilled in the art how to make and use the full scope of the claimed invention without ‘undue
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`experimentation.’” Genetech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997)
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`(quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). “The key word is ‘undue,’ not
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`‘experimentation.’” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (internal citation omitted).
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`Relevant factors for assessing enablement include:
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`(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.
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`
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`6 Of particular relevance to the parties’ dispute, a patent may be invalid due to inadequate written
`description if it claims an entire genus of inventions but describes only one or a few species within
`that genus; this potential for invalidity is heightened when a patent claims a genus defined by
`functional language rather than providing a description of what it takes in practice to achieve a
`certain functional result. Id. at 1349. A sufficient description of an entire genus “requires the
`disclosure of either a representative number of species falling within the scope of the genus or
`structural features common to the members of the genus so that one of skill in the art can ‘visualize
`or recognize’ the members of that genus.” Id. (internal citation omitted).
`9
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 10 of 53
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`Id. (“Wands factors”). The Wands factors are illustrative, not mandatory, and defendants bear
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`the burden of proving by clear and convincing evidence that the patent is invalid for lack of
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`enablement. Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013).
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`While enablement is a question of law, resolving enablement depends on resolving underlying
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`questions of fact regarding undue experimentation. Transocean Offshore Deepwater Drilling,
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`Inc. v. Maersk Contractors. USA, Inc., 617 F.3d 1296, 1305 (Fed. Cir. 2010).
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`B. Whether the ꞌ988 patent is invalid due to inadequate written description
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`Seagate argues that the ꞌ988 patent is invalid due to inadequate written description
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`because the patent claims two categories of atomic templates but describes only one. That is,
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`Seagate argues that the ꞌ988 patent claims uniaxial symmetry broken structures grown on both
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`single-crystal and polycrystalline templates, but describes only structures grown on single-crystal
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`templates. (Seagate’s Brief in Support of Motion for Summary Judgment, “Seagate’s MSJ
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`Brief,” at 4-12, Civil Action No. 16-538, Doc. 163.) It maintains that the patent fails the written
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`description test because it fails to describe the full genus of atomic templates covered by the
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`claims. Lambeth responds that the cases on which Seagate relies involve true genus-species
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`claims, which are not at issue here, and that in any event, the ꞌ988 patent demonstrates that
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`Lambeth had possession of both single and polycrystalline templates. (Lambeth’s Response to
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`Seagate’s MSJ at 2-4, Civil Action 16-538, Doc. 217.)
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`For the reasons that follow, the Court will deny Seagate’s motion for summary judgment
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`of invalidity.
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`Seagate argues that single crystal and polycrystalline atomic templates (for growing the
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`claimed uniaxial symmetry broken structures) comprise a broad “genus” of atomic templates,
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`with single crystal templates serving as a narrow “species” of atomic templates. (Seagate’s MSJ
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`10
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 11 of 53
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`Brief at 5.) As a result, Seagate argues that the ꞌ988 patent’s specification “needs to show that
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`one has truly invented the genus, i.e., that one has conceived and described sufficient
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`representative species encompassing the breadth of the genus.” AbbVie Deutschland GmbH v.
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`Janssen Biotech, Inc., 759 F.3d 1285 (Fed. Cir. 2014). Despite the requirement to fully describe
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`the genus, Seagate asserts that Lambeth has failed to provide even a single example of the
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`invention on a polycrystalline template. (Seagate’s MSJ Brief at 1.)
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`
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`Lambeth responds that the claims at issue are not genus-species claims. (Lambeth’s
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`Response to Seagate’s MSJ Brief at 2.) The patent discloses that each single crystal grain in a
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`polycrystalline template can be treated as a single crystal template for purposes of the invention,
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`negating any significance to the distinction. E.g., ꞌ988 patent at col. 23, ll. 20-23 (“for
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`polycrystalline substrates the epitaxially grown films contain multiple variant sets corresponding
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`to the crystalline orientations of the individual hexagonal template grains”).7 Seagate’s
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`argument that the specification fails to describe the genus is, Lambeth contends, inapt.
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`Moreover, Lambeth responds that even if single crystal and polycrystalline templates are
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`considered separate species, the patent’s specification indicates that polycrystalline templates are
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`within the scope of the invention that Lambeth possessed. The specification both discloses
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`polycrystalline templates as a type of atomic template that can be used to grow the desired
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`magnetic films, e.g., ꞌ988 patent at col. 21, ll. 61-67 (“[t]his concept . . . enables the development
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`of nearly linear magnetic response functions even for polycrystalline (110) textured bcc-d films
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`epitaxially grown on polycrystalline, randomly oriented, (111) hexagonal atomic templates”),
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`7 As implied by the specification’s discussion of the prior art, a polycrystalline template consists
`of “a large number of single crystal grains.” See ꞌ988 patent at col. 11, l. 12. Given this
`relationship between the “genus” and the “species”—the species of polycrystalline templates is,
`by definition, a species of adjoining single crystal grains—the Court agrees that the analogy to
`typical genus-species claims is weak.
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 12 of 53
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`and shows possession by explaining physical attributes and conditions that yield the desired
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`results on either single crystal or polycrystalline atomic templates, e.g., ꞌ988 patent at col. 33, ll.
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`54-59 (“[o]ur findings are that a symmetry broken structure can be obtained even for
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`polycrystalline films provided the (111) hexagonal template is highly textured and the deposition
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`angle with respect to the substrate normal is constrained to be within 15 ≦ Ω ≦ 75 degrees from
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`the normal”).
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`Given the specification’s disclosures concerning polycrystalline templates and their use
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`for creating the desired magnetic structures, the question of whether one skilled in the art would
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`conclude from those disclosures that Lambeth had possession of uniaxial symmetry broken
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`structures grown on polycrystalline templates is a disputed question of material fact with
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`evidence on both sides. (Compare Seagate’s SOF Exhibit 14, “Dr. Ross’s May 2, 2018 Expert
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`Report - Seagate,” at ¶¶ 367-71 (person of skill in the art would conclude that inventor lacked
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`such possession), with Seagate’s SOF Exhibit 21, “Dr. Coffey’s July 16, 2018 Responsive
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`Expert Report - Seagate,” at ¶¶ 197-98 (person of skill in the art would conclude that the patent
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`discloses films grown on polycrystalline atomic templates).) It would be inappropriate for the
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`Court to resolve this question at summary judgment.
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`C. Whether the ꞌ988 patent is invalid due to lack of enablement
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`For similar reasons, the Court will deny Western Digital’s motion for summary judgment
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`of invalidity based on lack of enablement.
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`Western Digital argues that the ꞌ988 patent provides no guidance to a person of ordinary
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`skill in the art as to how to make or use the claimed invention. (Western Digital’s Brief in
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`Support of Motion for Summary Judgement, “Western Digital’s MSJ Brief,” at 24, Civil Action
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`No. 16-541, Doc. 165.) Specifically, considering several of the Wands factors, Western Digital
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`12
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 13 of 53
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`argues that the specification: (1) provides only vague and conclusory statements about the
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`parameters necessary to achieve the desired results, e.g., ꞌ988 patent at col. 22, ll. 54-55 (the
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`processing conditions must be “just right” to achieve a uniaxial symmetry broken structure);
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`(2) discloses no working examples (no material samples that are both uniaxial and symmetry
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`broken); (3) provides no information regarding polycrystalline8 uniaxial symmetry broken
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`structures; (4) leaves instructional voids regarding necessary processing conditions that would
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`require significant and unreasonable experimentation to fill; and (5) covers less terrain than the
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`breadth of the claims would require. (Western Digital’s MSJ Brief at 24-27.)
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`In response, Lambeth argues that Western Digital’s arguments either depend on
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`genuinely disputed facts or lack any factual basis. (Lambeth’s Response to Western Digital’s
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`MSJ Brief at 19.)
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`The dispute concerning the level of guidance in the specification as to how to practice the
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`invention is illustrative. Lambeth argues that the specification teaches a person of ordinary skill
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`in the art how to practice the specific parameters yielding a uniaxial symmetry broken structure.9
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`8 Lambeth asserts the ꞌ988 patent only against Defendants’ devices that allegedly practice the
`invention on polycrystalline templates.
`9 The specification provides, as an example, a roadmap for creating a uniaxial symmetry broken
`structure by sputtering a material for deposition onto a substrate in the presence of two
`“symmetry breaking mechanism[s]” (which are the angle of incidence between the sputtered
`material and the substrate, and the direction of the magnetic field at the surface of the substrate)
`and several surrounding conditions:
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`FIG. 13 illustrates a cross-sectional view of a rod shaped sputtering target [15] composed
`of bcc-d material for deposition on to a disk substrate. A shield [16] and magnets [17] to
`facilitate a sputtering plasma at low Ar gas pressures surround the target. A disk
`substrate [18] is held on axis with the sputtering target, but at a distance to cause the
`sputtered material [27] to arrive at the disk surface along a radial direction and at an angle
`of incidence. Ar gas is introduced into the vacuum chamber via a pathway between the
`target and a water cooled shield. This concentrates the sputtering gas [25] in the vicinity
`of the sputtering target and minimizes it in the vicinity of the disk substrate. . . . A low
`gas pressure is desired to enable a scattering mean free path of the sputtered material to
`13
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 14 of 53
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`(Id. at 20.) Drawing on language in the specification, centering on the lines cited in the
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`preceding footnote, Lambeth’s expert, Dr. Kevin Coffey (“Dr. Coffey”), opines that “the patent
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`provides a [Person of Ordinary Skill in the Art (“POSITA”)] with specific instructions on the
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`geometry of a sputtering set up, specific instructions on which sputtering parameters should be
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`controlled and how, and detailed discussion of how to apply two symmetry breaking mechanisms
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`in tandem to effectively create a uniaxial symmetry broken bcc-d magnetic layer.” (Lambeth’s
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`Counter-SOF Exhibit L against Western Digital, “Dr. Coffey’s July 16, 2018 Rebuttal Expert
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`Report - Western Digital,” at ¶ 108.) Despite Lambeth’s evidence, Western Digital maintains
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`that the directions in the specification are insufficient, and that Dr. Coffey’s opinions are based
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`on “cherry-pick[ed] quotes” from the patent that misconstrue its teachings. (Western Digital’s
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`MSJ Brief at 24-25.) Yet, as Lambeth argues, Western Digital cites no evidence that a person of
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`ordinary skill in the art would be unable to practice the invention—let alone unable to practice
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`the invention without undue experimentation—based on the level of guidance provided in the
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`specification.10 The question of whether the level of guidance provided in the specification is
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`be comparable to, or longer than, the distance from the target to the disk substrate. This
`prevents the randomization of the direction of the sputtered material by avoiding gaseous
`collisions. Sputtering wears the target in a predefined and somewhat conical shape
`causing a deposition path from the target to the disk at the desired range of incident
`angles between 15 and 75 degrees. . . . The magnetic fields from the magnets can be so
`arranged to provide a small, but non-negligible, magnetic field at the disk surface
`directed around the circumference of the disk. This directionally provides, a second
`symmetry breaking mechanism, in addition to the deposition at an angle, an energy
`mechanism of deposition in a magnetic field to help promote bcc-d orientation of the
`magnetic material. For magnetic bcc-d material with K1>0 the promoted easy axis from
`both symmetry breaking mechanism coincides.
`
`
`ꞌ988 patent at col. 34, l. 58 – col. 35, l. 45.
`10 As addressed below, Western Digital argues that the inventor himself was unable to create the
`claimed structure, providing strong evidence that the amount of experimentation would be
`undue—Lambeth disputes this fact and presents evidence to the contrary.
`14
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`

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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 15 of 53
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`sufficient to enable a person of ordinary skill in the art to practice the invention without undue
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`experimentation is, clearly, a disputed question of fact.
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`Likewise, assessing each remaining Wands factor addressed by the parties would require
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`deciding numerous disputed factual issues.
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`Western Digital claims that the patent fails to disclose any working examples of the
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`invention because it fails to disclose a sample of material that is both uniaxial and symmetry
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`broken. But Lambeth cites evidence that “there are two working examples disclosed in the ꞌ988
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`Patent, namely, the samples ‘LS1425_2cx,’ which discloses a Ni atomic template and an Fe
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`magnetic bcc-d layer, see ꞌ988 Patent at [col. 42, l. 44 – col. 44, l. 22], and ‘LS0909-6,’ which
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`discloses a Cu atomic template and an Fe magnetic bcc-d layer, see id. at [col. 41 l. 2 – col. 42, l.
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`26].” (Dr. Coffey’s July 16, 2018 Rebuttal Expert Report - Western Digital at ¶ 161.)11
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`Western Digital claims that the patent fails to address polycrystalline structures. But
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`Lambeth cites the language of the specification itself, which states that “[t]he technique to
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`obtain[] the same easy and hard magnetic axis behavior across an entire polycrystalline sample is
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`to induce the appropriate (110) textured bcc-[d] coupled uniaxial variant set for each of the
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`randomly oriented hexagonal templates,” ꞌ988 patent at col. 22, ll. 11-15, and further states that
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`“[t]he method of achieving this is to provide an energetically driven growth process that
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`11 As to the former sample, the specification states “it was determined to be one of the symmetry
`broken uniaxial sets,” ꞌ988 patent at col. 42, ll. 63-64, and as to the latter sample, the
`specification states “even when a hexagonal template of non-magnetic material was employed it
`was possible to have exchange coupled variants and to obtain the uniaxial symmetry broken
`behavior,” id. at col. 42, ll. 27-30.
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`
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`15
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`Case 2:16-cv-00541-CB Document 209 Filed 06/24/19 Page 16 of 53
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`preferentially selects that the appropriate coupled variant set for each hexagonal template
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`orientation being use[d],” id. at col. 22, ll. 16-19.12
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`Western Digital claims that the level of experimentation needed to make use of the full
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`scope of the claims is high because the inventor himself never succeeded in creating a uniaxial
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`symmetry broken structure. But, as just mentioned, Lambeth provides evidence that the patent
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`discloses two examples of such structures.
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`Finally, Western Digital argues that the patent is not enabled because the claims cover a
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`boundless number of materials and structures of any size, but fail to teach how to make a
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`uniaxial symmetry broken structure from various possible permutations of materials or how to
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`make such a structure of any size. But again, Western Digital fails to provide any evidence to
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`support that conclusion, and Lambeth responds by arguing, correctly, that this lack of evidence
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`cannot meet Western Digital’s burden to show lack of enablement by clear and convincing
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`evidence.
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`As the question of enablement boils down to a series of factual disputes about the
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`inferences a person of skill