convolve v. compaq computer

7/28/2019 Convolve v. Compaq Computer

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N OTE : This disposition is nonprecedential.

United States Court of Appealsfor the Federal Circuit

______________________

CONVOLVE, INC. AND MASSACHUSETTSINSTITUTE OF TECHNOLOGY,

Plaintiffs-Appellants,

v.

COMPAQ COMPUTER CORPORATION, Defendant-Appellee,

AND

SEAGATE TECHNOLOGY, LLC AND SEAGATETECHNOLOGY, INC.,

Defendant-Appellee. ______________________

2012-1074 ______________________

Appeal from the United States District Court forthe Southern District of New York in No. 00-CV-5141,Judge George B. Daniels.

______________________

Decided: July 1, 2013 ______________________

DONALD R. DUNNER , Finnegan, Henderso, Farabow,Garrett & Dunner LLP, of Washington, DC, argued for


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CONVOLVE v. COMPAQ COMPUTER 2

plaintiffs-appellants. With him on the brief were A LLENM. S OKAL and G ARTH D. B AER . Of counsel on the brief were G REGORY A. M ARKEL , J AMES T. B AILEY , M ICHAEL P. DOUGHERTY and K EVIN J. MCN AMEE , Cadwalader, Wick-ersham & Taft LLP, of New York, New York. Of counselwas D EBRA B. STEINBERG .

CHRISTOPHER D. L ANDGRAFF , Bartlit Beck HermanPalenchar & Scott LLP, of Chicago, Illinois, argued fordefendants-appellees. With him on the brief was M ARK E. F ERGUSON . Of counsel was V INCENT BUCCOLA , BartlitBeck Herman Palenchar & Scott LLP, of Chicago, Illinois;

C ARTER

G.

PHILLIPS

and ROBERT

N.

HOCHMAN

, Sidley Austin LLP, of Washington, DC; and N ATALIA V. BLINKOVA and BLAIR M. J ACOBS , McDermott, Will &Emery LLP, of Washington, DC.

______________________

Before R ADER , Chief Judge , D YK , and OM ALLEY , CircuitJudges.

OM ALLEY , Circuit Judge .

Convolve, Inc. (Convolve) and Massachusetts Insti-

tute of Technology (MIT) appeal the decision of theUnited States District Court for the Southern District of New York granting summary judgment in favor of Com-paq Computer Corp. (Compaq), Seagate Technology,LLC, and Seagate Technology, Inc. (collectivelySeagate). The district court found that Compaq andSeagate did not misappropriate eleven (11) of the fifteen(15) Convolve trade secrets that remained at issue in thesuit. The court also held that Compaq and Seagate didnot infringe claims 1, 3, 4, and 715 of U.S. Patent No.6,314,473 (the 473 patent) and that claims 14, 7, 11,


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21, and 24 1 of U.S. Patent No. 4,916,635 (the 635 pa-tent) are invalid. After the district courts summary

judgment order, all remaining claims were dismissedwithout prejudice. Convolves appeal is timely and wehave jurisdiction under 28 U.S.C. 1295(a)(1). For thereasons below, we affirm the district courts rulings on thetrade secret claims and validity of the asserted claims of the 635 patent, but vacate the courts judgment of non-infringement with respect to the 473 patent. We remandfor further proceedings on the 473 patent.

I. B ACKGROUND

In July 2000, Convolve and MIT sued Compaq andSeagate for, among other things, trade secret misappro-priation and patent infringement. Convolve was con-ceived and is owned by Dr. Neil Singer. While a graduatestudent at MIT, Dr. Singer set out to solve the generalproblem of moving equipment quickly while minimizingthe resultant vibrations. The 635 and 473 patents grewout of that research. MIT owns the 635 patent whileConvolve owns the 473 patent and all alleged tradesecrets in this suit. Convolve contends that Seagatemanufactured drives and tools that infringe the 473 and635 patents and misappropriated Convolves trade se-crets. Convolve also asserts that Compaq incorporatedthe Seagate drives into its computers and provided tools,such as the F10 BIOS, that together infringe certainclaims of the 473 patent. Convolve further claims thatCompaq misappropriated multiple trade secrets relatingto the Quick and Quiet User Interface.

1 Claims 11, 21, and 24 were cancelled as indicatedby the 635 patent ex parte reexamination certificate. See Joint Appendix (J.A.) at 19394. While the districtcourt stated at note 15 of its opinion that claims 7, 21, and24 were cancelled, rather than 11, 21, and 24, that state-ment appears to have been a typo.


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Convolve is MITs exclusive licensee for use of a soft-ware motion control technology called Input Shaping.

According to Convolve, Input Shaping technology is amethod for commanding equipment to move as quickly aspossible without excitation or vibration. Convolve ex-plains that, from 1997 to 1998, it developed an applicationfor its Input Shaping technology in hard disk drives.Convolve asserts that this technology is covered by thetrade secrets and patents involved in this case.

The technology at issue relates to improving seeksin computer hard drives. The figure below depicts ageneric hard drive:


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473 patent, Figure 10A.Hard drives store data in small magnetized spots on a

magnetic coating on the surface of platters (77) inside thedrive. Data is arranged in concentric tracks on eachplatter. Disk drives have multiple platters, each contain-ing thousands of tracks. Data can be stored randomly onthe surface of the platters such that a single file may bestored in non-contiguous blocks, sometimes far apart onthe disk. To retrieve data, the drive uses an inductor todetect the magnetic polarization of each bit. To storedata, electromagnets change a bits magnetic polarization.The inductor and electromagnet are located on a head(76) which itself is located on an arm (74).


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The hard drive employs two motors to read and writedata: (1) the spindle motor that spins the platters, allow-ing the head to cover the platters area while traversingover a line or arc; and (2) the voice coil motor (VCM),that moves the arm across the spinning platters. The

VCM is controlled by a microcontroller or processor usingfeedback from the arms position. When the microcontrol-ler receives instructions, it directs the VCM to move thehead toward the target track. The process of moving fromtrack-to-track is called seeking, and the amount of timeit takes for the head to arrive at the correct track is calledseek time. Because data is stored on disparate parts of the platter, the arm must be able to move both betweentracks that are far apart, called long seeks, and tracksthat are close together, called short seeks.

A component of seek time is settle time, which is thetime it takes for the arm to settle from any residualvibrations caused by the arms movement. Quickly stop-ping the arm will cause it to vibrate, and the vibrationsmust stop before reading or writing. If the arm does notproperly settle over the desired track, the data will not beretrieved or written accurately. Naturally, fast seeks arepreferable because they allow for faster reading or writing

of data and, in turn, faster computer performance.Historically, fast seeks were noisy. Quickly moving

and stopping the head caused vibrations that createdseek acoustics, or a distinct clicking noise that canirritate users. As such, there is a direct correlation be-tween fast seeks and increased seek acoustics. In otherwords, the faster the seek, the more noise, the slower theseek, the less noise. Convolves technology attempted tominimize seek acoustics resulting from fast seeks.

A. P ATENTS

The 635 patent is entitled Shaping Command Inputsto Minimize Unwanted Dynamics and was filed on Sep-tember 12, 1988. The 635 patent discloses a method[,


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called shaping,]. . . for generating an input to a system tominimize unwanted dynamics in the system response andto reduce energy consumed by the system during moves.635 patent, col. 3, ll. 6265. The 635 patent also disclos-es an apparatus for shaping commands to a system toreduce endpoint vibration. Id. at col. 12, ll. 3637.Claim 1 is representative:

A method for generating an input to a physicalsystem to minimize unwanted dynamics in thephysical system response comprising:

establishing expressions quantifying theunwanted dynamics of the physical sys-tem;

establishing first constraints bounding theavailable input to the physical system;

establishing second constraints on varia-tion in system response with variations inthe physical system characteristics; find-ing a solution which is used to generatethe input which minimizes the value of the expressions while satisfying the firstand second constraints; and

controlling the physical system based onthe input to the physical system wherebyunwanted dynamics are minimized.

635 patent, col. 10, ll. 4056.

The 473 patent is entitled System For Removing Se-lected Unwanted Frequencies In Accordance With AlteredSettings In A User Interface Of A Data Storage Device,and was filed on March 4, 1999. The 473 patent disclosesa method for application of input shaping to computer

disk drives and embodies a user interface that allowscustomization of disk drive speed and acoustics. A usercan choose to make a drive run faster and noisier, or


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slower and quieter. Claim 10 of the patent is representa-tive:

Method of controlling operation of a data storagedevice, comprising:

providing a user interface for controllingone of a seek time of the data storage de-vice and an acoustic noise level of the datastorage device;

operating the user interface so as to altersettings of one of the seek time and theacoustic noise level of the data storage de-

vice in inverse relation; andoutputting commands to the data storagedevice causing the data storage device toalter seek trajectory shape by shaping in-put signals to the data storage device toreduce selected unwanted frequenciesfrom a plurality of frequencies in accord-ance with the altered settings.

473 patent, col. 44, ll. 3346.

B. CONVOLVE S CLAIMS

In 1998, Convolve and Compaq began licensing nego-tiations regarding Convolves technology. To facilitate thediscussions, Convolve and Compaq signed a non-disclosure Agreement (NDA) and agreed to share theirrespective confidential information for furthering abusiness relationship. J.A. at 820. The confidentialinformation to be disclosed was described as storageperipheral market information and technology infor-mation from Compaq and algorithms and processes forenhancing positioning systems from Convolve. Id. The

NDA states that, to trigger either partys obligations, thedisclosed information must be: (1) marked as confidentialat the time of disclosure; or (2) unmarked, but treated as


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disclosures between October 14, 1998 and December 31,2000.

With the NDAs in place, Compaq, Seagate, and Con-volve had a meeting on October 15 and 16, 1998, duringwhich Convolve gave a presentation regarding its inputshaping technology and its application to computer diskdrives. After the meeting, the parties acknowledged inwriting that any oral disclosure of confidential infor-mation during that meeting was covered by the NDAs. Convolve gave two other presentations to Compaq andSeagate, on February 10 and April 7, 1999. AlthoughConvolve sent Seagate copies of the slides from the Feb-

ruary presentation and a letter discussing the Aprildemonstration, Convolve did not state in writing that anyof the disclosures during or in connection with those latermeetings were confidential. Despite these meetings andcontinued communications, Convolve never consummateda deal with Compaq and Seagate regarding the technolo-gy.

Convolve filed suit against Seagate and Compaq onJuly 13, 2000. On January 16, 2002, Convolve amendedits complaint alleging against both Seagate and Compaq:(1) breach of contract; (2) tortious interference with con-tract; (3) fraud; (4) misappropriation of trade secrets; (5)patent infringement of the 473 patent, 635 patent andU.S. Patent No. 5,638,267 (the 267 patent); 2 (6) viola-tion of California Business and Professions Code 17200(California Unfair Competition); (7) breach of confi-

2 The parties, and the district court, do not clearlyindicate which claims were originally at issue in this case.The district courts claim construction order reveals thatConvolve originally asserted claim 14, 7, 11, 21, and 24of the 635 patent, claims 19, 29, 39, and 55 of the 267patent, and claims 1, 3, 4, and 715 of the 473 patent.J.A. at 89.189.2.


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dence; and (8) breach of good faith and fair dealing. InMarch 2006, the district court granted summary judg-ment in favor of Seagate and disposed of Convolvesclaims of fraud, tortious interference with contract,breach of confidence, and violation of Californias UnfairCompetition statute. Later, in March 2010, the districtcourt dismissed Convolves 267 patent from the case. In

August 2011, the district court issued its order fromwhich this appeal derives, dismissing Convolves claims of breach of contract, infringement of the asserted claims of the 473 and 635 patents, and misappropriation of asubset of the trade secrets asserted against Compaq andSeagate.

C. TRADE S ECRETS

As the litigation progressed, the district court foundthat California Civil Procedure 2019(d) compelledConvolve to provide an Amended Trade Secret Identifica-tion (ATSI) identifying the trade secrets at issue withreasonable specificity. 3 At the time of the district courtssummary judgment ruling, fifteen trade secrets remainedat issue. 4 They were enumerated in Convolves ATSI astrade secrets (relevant subparts designated in parenthe-

3 California Code of Civil Procedure 2019.210reads, [i]n any action alleging the misappropriation of atrade secret under the Uniform Trade Secrets Act (Title 5(commencing with Section 3426) of Part 1 of Division 4 of the Civil Code), before commencing discovery relating tothe trade secret, the party alleging the misappropriationshall identify the trade secret with reasonable particulari-ty subject to any orders that may be appropriate underSection 3426.5 of the Civil Code.

4 In December 2005, the parties agreed that Con-volve would be precluded from bringing any litigationagainst Seagate based on past activities for misappropria-tion of trade secrets 1A, 2D, 4AE, 7BD. J.A. at 445.


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sis): 1(B), 2(AC), 2(EF), 3(AD), 6(AC), and 7(A andE). Convolve accused Seagate of misappropriating allfifteen trade secrets and accused Compaq of misappropri-ating trade secrets six and seven.

Convolves first claimed trade secret is directed to itsdisk drive instrumentation techniques useful for diskdrive research and development. J.A. at 904. That tradesecret includes Convolves Laser Doppler VibrometerFeedback Technique (LDVFT) and Acoustic MicrophoneTechnique (AMT). AMT is used for making time-basedacoustic measurements outside of an anechoic chamber.Id. The second asserted group of trade secrets is a compi-

lation of Convolves seek trajectory design (STD) data,methods, techniques, and applications useful for diskdrive seek trajectory research, development, and produc-tion. Id. It includes the use of higher order models fortrajectory designs, which Convolve explains is the con-cept that it is important to move to a higher order dynam-ic model of a disk drive for the purpose of designingtrajectories to produce faster and acoustically quieter diskdrives. Id. at 91011. These trade secrets include theconcept that abrupt current and voltage saturationshould be avoided to optimize vibration reduction. J.A.

91213. The third class of trade secrets relates to Con-volves Model Reference (MREF) controller techniquesand related data. The sixth category is Convolves mar-keting trade secrets relating to its Quick and Quiet userinterface for disk drives, among other things. The sev-enth group of trade secrets cover information from Con-volves Patent Cooperation Treaty (PCT) Application.They include the Quick and Quiet user interface, amongother things.

D. D ISTRICT COURT RULINGS

1. TRADE S ECRETS Seagate and Compaq moved for summary judgment

on the remaining trade secret and patent infringement


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claims. While there was no dispute that California lawapplied to Convolves state law claims against Seagate,Convolve and Compaq squabbled over whether Texas orNew York law should apply to their claims. The districtcourt applied New York law to Compaqs claims becauseno party identified an actual conflict between the relevantNew York and Texas law. The district court then meticu-lously analyzed each of the trade secrets at issue. We nowsummarize those rulings as to each defendant in turn.

A . S EAGATE

Regarding ATSI 1B, which Convolve alleged included AMT, the district court rejected Convolves contentionthat the complete trade secret was disclosed at the Febru-ary 2, 2009 presentation to Seagate. The district courtadditionally found that, even if it was disclosed at themeeting, Convolve did not send any confirmatory memo-randum following the February 2009 presentation asrequired by the NDA. On these alternative grounds, thedistrict court granted Seagates motion for summary

judgment.

ATSI 2A, which Convolve alleged included the Use of Higher Order Models for Trajectory Design, the district

court found that the substance of the trade secret wasgenerally and publically known via Dr. Evert Coopers1993 dissertation titled Minimum Time Control withMinimum Vibration and with Power Limiting, with

Application to the Magnetic Disk File. J.A. at 4950. The district court also found that the use of third ordermodels was publicly disclosed in the masters thesis of William Ray titled, The Reduction of Acoustic NoiseEmissions from a Hard Disk Drive. Id. The districtcourt further found that, even if ATSI 2A was entitled totrade secret protection, there was insufficient evidence

that Convolve properly preserved the trade secret accord-ing to the procedures of the NDA. Again, the district


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court granted Seagates summary judgment motion onthese alternative grounds.

The district court also granted Seagate judgment as amatter of law on those claims premised on ATSIs 2C, 2E,and 2F. The court found that 2C was independentlyknown to Seagate, and that Convolve did not disclose thesubstance of the trade secret in any confidential writingsor properly designate it as confidential following any oraldisclosure. The district court similarly found that 2E wasnot disclosed in a confidential writing or properly protect-ed after an oral or visual disclosure. And, the districtcourt found that Seagate did not misappropriate 2F

because it never used the trade secret, regardless of howit was obtained. The district court, however, deniedSeagates motion regarding 2B, titled Seek TrajectoriesNeed Not Be Smooth. The district court found thatgenuine issues of material fact remained regardingwhether the trade secret was disclosed at the February1999 meeting between Convolve and Seagate and whetherSeagate used the trade secret thereafter.

The district court also denied Seagates summary judgment motion regarding trade secret 3A, but grantedthe motion as to trade secrets 3B through 3D. The dis-trict court concluded that, under California law, a tradesecret may have independent economic value, even if aparticular defendant finds no value in it. The court,accordingly, rejected Seagates argument that there wasno value to Seagate in the information Convolve providedit regarding Convolves MREF Control Demonstrationand Test Result Data. J.A. at 61. Because the districtcourt found, however, that Convolve failed to provide apost-disclosure confirmatory memorandum with respect tothose disclosures related to ATSIs 3B and 3D, the courtgranted Seagates motion as to those, but denied it as to

ATSI 3A.


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ATSIs 6A6C all relate to marketing research, strate-gies, and plans regarding Convolves Quick and Quietuser interface. The district court denied Seagates motionrelated to 6A, finding that fact issues remained whetherthe relevant market research may be a trade secret. Thedistrict court also denied Seagates motion regarding 6C,finding that it may have independent economic value toSeagate. The district court granted Seagates summary

judgment motion as to 6B because it was commonknowledge in the industry that quiet operation of diskdrives had market appeal.

The district court granted Seagates motion for sum-

mary judgment regarding ATSIs 7A and 7E. ATSI 7A allegedly included Convolves Quick and Quiet userinterface, which, according to Convolve, enables the userof the drive to choose quicker, but noisier operation orslower, but quieter operation. The district court foundthat the record evidence demonstrated that Seagate andothers contemplated having different seek modes as earlyas 1990, and that U.S Patent No. 5,982,570 disclosed theQuick and Quiet concept in 1997. As such, the districtcourt found that the substance of 7A was generally knownin the industry. Regarding 7E, titled Shape on Transi-

ent, the district court found no evidence that Seagateused Convolves information in any of its disk drives and,therefore, dismissed Convolves misappropriation claim.

After the district courts order resolving the foregoingtrade secrets, the parties stipulated to the dismissal of theremaining four trade secrets asserted against Seagateand entry of final judgment.

B. COMPAQ

The district court found that Convolve only assertedtrade secrets 6 and 7 against Compaq (discussed further

below). Because ATSIs 6A6C all related to marketingresearch, strategies, and plans, and because New Yorklaw does not extend trade secret protection to marketing


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concepts, the district court granted Compaqs motion forsummary judgment on all three. The district court alsogranted summary judgment in favor of Compaq on Con-volves ATSIs 7A and 7E on the same rationale as thecourts grant in favor of Seagate. Additionally, Compaqsought summary judgment on Convolves breach of con-tract claims which were predicated on the unlawfuldisclosure and use of ATSI 7A in violation of the NDA. Because the district court found that ATSI 7A was gener-ally known prior to any purported disclosures, the courtfound that Compaq did not breach the NDA and grantedits summary judgment motion.

2. P ATENT CLAIMS The district court next turned to Convolves claims of

patent infringement. By the time of the district courts August 2011 summary judgment order, Convolve assertedthat Seagate and Compaq infringed, both directly andindirectly, claims 1, 3, 4, and 715 of the 473 patent.Convolve accused Seagates ATA III, ATA IV, SCSI, andU5 drives of infringement. Convolve also asserted thatCompaq infringed claims 1, 3, 4, and 715 of the 473patent when it sold computers with the F10 Bios andcertain Seagate drives. Seagate and Compaq counteredthat the accused drives did not directly infringe theasserted claims of the 473 patent because they did nothave a user interface or target selected unwantedfrequencies, as required by the patent claims. Thedistrict courts analysis both focused and turned on itsconstruction of the selected unwanted frequencieslanguage.

The district court construed selected unwanted fre-quencies to mean at least the chosen unwanted frequen-cies. The court explained that the prosecution history of

the 473 patent compelled the courts construction becausethe patentee distinguished prior art by disclosing a meth-od that targets specific frequencies, rather than reduc-


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ing all frequencies indiscriminately. The court furthernoted that the parties did not dispute that, to practice the473 patent, someone would first have to discover un-wanted frequencies and then target them for reduction.The district court concluded that, for the accused devicesto directly infringe the asserted claims of 473 patent, thedrives must not only reduce unwanted frequencies, but doso by using the discover and target method.

The district court then analyzed each of the accuseddrives to determine whether they were developed usingthis method. The district court first turned to the ATA IVdrive and determined that the record evidence demon-

strated that Seagate targeted a single frequency to re-duce; namely, 2.6 kilohertz (KHz). Since Seagatetargeted that specific frequency, the district court found itirrelevant that other frequencies might happen to bereduced, because those frequencies were not targeted forreduction. And, because the claim language is directed atreducing multiple frequencies , the district court held thatthe ATA IV did not infringe the asserted claims of the473 patent because it only targeted a single frequency.

The district court next turned to the Seagate SCSIdrives. It found that the evidence demonstrated thatSeagate engineers did not identify frequencies causingunwanted acoustics and then target them for reduction.The district court found that Seagate engineers insteadtried a variety of filters to find the one that gave the bestperformance, and chose a low-pass filter which indis-criminately reduced all frequencies above the knee.Because the filter was not chosen to target the specificknee frequency, but was chosen to reduce all frequenciesindiscriminately, the court concluded that the SCSI drivesdid not target selected unwanted frequencies and thusdid not infringe claims 1, 3, 4, and 715 of the 473 patent.

The district court last turned to the Seagate ATA IIIand U5 drives. For those drives, the district court found


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that the evidence revealed that Seagate engineers did notidentify and target specific frequencies for reduction, butmade improvements to create quieter seeks withoutregard to specific frequencies. The district court furtherfound that Convolves contrary evidence was mostlydirected at the ATA IV drive, not the ATA III and U5drives. As such, the district court granted summary

judgment of noninfringement in favor of Seagate on thosedrives. Given that Convolves claims of infringementagainst Compaq were predicated on Seagates underlyinginfringement, the district court also granted summary

judgment in favor of Compaq with respect to all of Con-volves direct infringement claims relating to the 473patent.

The district court also granted summary judgment of noninfringement in favor of both Seagate and Compaq onConvolves inducement claims under 35 U.S.C. 271(b).The court reasoned that, because Seagates drives did notdirectly infringe the asserted claims of the 473 patent,Convolves inducement claims must fail for lack of a directinfringer. The district court also held that, even if use of the drives would directly infringe the asserted claims of the 473 patent, Convolve failed to present any evidence of

instances of direct infringement by a user. Though Con-volve had proffered evidence that Seagate and Compaqprovided end-users instructions on how to select betweenquick and quiet modes, the district court found thatinsufficient to demonstrate actual direct infringement byanother.

The district court next turned to the asserted claimsof the 635 patent. Seagate sought summary judgment onvarious grounds, but the district court focused onSeagates claim that the asserted claims of the 635 patentwere not enabled and, therefore, were invalid. The dis-trict court found that, for the written description of the635 patent to be enabling as to the asserted claims, itmust teach a person of ordinary skill in the art to gener-


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ate an input to all physical systems to minimize unwant-ed dynamics, or vibrations, subject to the other limita-tions in the claims. Relying on testimony from Dr. Singerthat he was unable to implement the asserted claims forlong seeks in disk drives in 1992, the district courtfound the patent invalid. Thus, the district court grantedsummary judgment in favor of Seagate on all claims of infringement relating to the asserted claims of the 635patent as well as on its affirmative invalidity claim. 5

II. DISCUSSION

A. TRADE S ECRET AND CONTRACT CLAIMS

Convolve asserts three grounds for its belief that thedistrict court improperly granted summary judgment onits trade secret claims: (1) that it presented sufficientevidence to create material issues of fact regardingSeagate and Compaqs claims of prior knowledge and non-use of the trade secrets, as well as enough evidence thatthe trade secrets were disclosed in accordance with theNDA marking provisions; (2) that it presented evidencethat would support a verdict that the parties, throughtheir course of conduct, adopted a broad construction of the NDAs or waived their specific requirements for desig-

nating matters as confidential; and (3) that the Convolve-Seagate NDA did not govern the entire confidentialrelationship between the parties because trade secretmisappropriation claims may also be analyzed as tortclaims under California law. Each of Convolves argu-ments will be addressed in turn.

5 Convolve asserted claims of indirect infringementagainst Compaq on the asserted claims of the 635 patent.While the district courts decision only referred toSeagates motion for summary judgment on the assertedclaims of the 635 patent, because the district court foundthe asserted claims of the 635 patent invalid, the indirectinfringement claims against Compaq must also fail.


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Trade secret misappropriation is a matter of statelaw. See Atlantic Research Mktg. Sys., Inc. v. Troy , 659F.3d 1345, 1356 (Fed. Cir. 2011) (citing Ultimax CementMfg. Corp. v. CTS Cement Mfg. Corp. , 587 F.3d 1339,1355 (Fed. Cir. 2009)). The parties agree that Californialaw applies to Convolves trade secret claims againstSeagate. The district court concluded that New York lawapplies to the claims against Compaq. We apply our ownlaw to substantive and procedural issues pertaining topatent law. Finjan, Inc. v. Secure Computer Corp. , 626F.3d 1197, 1207 (Fed. Cir. 2010) (quoting Aero Prods.Intl, Inc. v. Intex Recreation Corp. , 466 F.3d 1000, 1016(Fed. Cir. 2006)). We review the district courts grant of summary judgment under the law of the regional circuit.See IGT v. Alliance Gaming Corp. , 702 F.3d 1338, 1343(Fed. Cir. 2012) (citing MicroStrategy Inc. v. Bus. Objects,S.A. , 4229 F.3d 1344, 1349 (Fed. Cir. 2005)). The SecondCircuit reviews a grant of summary judgment de novo ,and will affirm only where, construing all the evidence inthe light most favorable to the non-movant and drawingall reasonable inferences in that partys favor, there is nogenuine [dispute] as to any material fact and the movantis entitled to judgment as a matter of law. Bacolitsas v.86th & 3rd Owner, LLC , 702 F.3d 673, 678 (2d Cir. 2012)(quoting McBride v. BIC Consumer Prods. Mfg. Co. , 583F.3d 92, 96 (2d Cir. 2009)) (alteration in original).

1. N O GENUINE ISSUES OF F ACT

We have reviewed the district courts opinion regard-ing the trade secrets and the evidence that Convolvecontends precluded judgment as a matter of law. Aftersuch review, we perceive no error in the district courtsconclusions that Seagate and Compaq are entitled tosummary judgment on Convolves contract and misappro-priation claims.

First, we find that the district court was correct whenit concluded that, to the extent they would otherwise be


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trade secrets and were disclosed to either defendant, ATSIs 1B, 2A, 2C, 2E, and 3BD were disclosed in theabsence of the written confidentiality follow-up memoran-dum mandated by the NDAs. For this reason, barringwaiver of the NDAs marking requirements (discussedbelow) we conclude that Seagate did not breach the NDA to the extent it may have appropriated the informationdisclosed. Because the disclosure of the information wasnot subject to the confidentiality obligations of the NDAs,moreover, barring some other basis upon which to predi-cate a promise of confidentiality (which we also discussbelow) information relating to those ATSIs lost any tradesecret status it might have had upon disclosure.

We also find that the trial court was correct to con-clude that the information disclosed regarding ATSIs 2A,2C, 2F, 6B, 7A, and 7EATSIs as to which the confiden-tiality obligations of the NDAs did applywere eithergenerally known before disclosure (and, thus, were nottrade secrets worthy of protection under the agreementor otherwise), or were not used by Seagate followingdisclosure. While Convolve contends it presented suffi-cient evidence to create genuine issues of material fact onthese findings, for the reasons explained by the district

court, we are not persuaded.Finally, we agree with the district court that New

York law applies to Convolves claims against Compaqand that New York law does not extend trade secretprotection to the information designated as ASTIs 6A6C.For those reasons, subject to our discussion below of Convolves assertions that its trade secret and contractclaims survive despite these careful findings by the trialcourt, we find no error in the trial courts trade secretrulings and find no need to discuss those rulings in detail.

2. BROAD C ONSTRUCTION OR W AIVER Convolve contends the district court erred when it

found that Compaq failed to protect the confidentiality of


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certain information because it failed to designate it assuch pursuant to its obligations under the NDAs. Con-volve asserts that the parties understood that all of theirmutual disclosures were confidential, notwithstanding themarking requirements in the NDAs. In other words,Convolve argues that fact issues remain as to whetherthose trade secrets were confidentially disclosed, despiteConvolves failure to follow the NDA confidentialityprocedures, because the right to enforce those procedureswas waived. The district court found that Convolve didnot send a confirmatory letter designating the allegeddisclosure of the information relating to ATSIs 1B, 2A,2C, 2E, and 3BD as confidential. While Convolve doesnot dispute this finding, it contends that the partiescourse of conduct did not require a follow-up letter. Toaddress this argument, we look to the relevant languageof the NDAs.

Convolve alleged that only Seagate misappropriatedthese particular trade secrets; therefore, we apply the lawof the state that controls that NDAas noted, that isCalifornia law. When interpreting a contract, Californialaw requires courts to give effect to the mutual intentionof the contracting parties at the time the contract was

formed. Windsor Pacific LLC v. Samwood Co., Inc. , 152Cal. Rptr. 3d 518, 527 (Cal. Ct. App. 2013) (citing Cal.Civ. Code 1636). Such intent is ascertained solely fromthe written contract if possible, and also the circum-stances under which the contract was made and thematter to which it relates. Id. (citing Cal. Civ. Code. 1639, 1647). The contracts terms and provisions are to beinterpreted according to their ordinary meaning. SeeCanaan Taiwanese Christian Church v. All World MissionMinistries , 150 Cal. Rptr. 3d 415, 422 (Cal. Ct. App.2012). Contract interpretation is a question of law that

we review de novo . Wash. State Republican Party v.Wash. State Grange , 676 F.3d 784, 796 (9th Cir. 2012)


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(citing Doe I v. Wal-Mart Stores, Inc. , 572 F.3d 677, 681(9th Cir. 2009)).

The plain language of the Convolve-Seagate NDA un-ambiguously requires that, for any oral or visual disclo-sures, Convolve was required to confirm in writing, withintwenty (20) days of the disclosure, that the informationwas confidential. Paragraph 7 of the Convolve-SeagateNDA provides that, for any oral or visual disclosures,the disclosing party must (1) designate the information asconfidential at the time of disclosure and (2) confirm in awriting delivered within twenty (20) days to the Recipientwhich provides clear notice of the claim of confidentiality

and describes the specific information disclosed. J.A. at293. The intent of the parties, based on this language, isclear: for an oral or visual disclosure of information to beprotected under the NDA, the disclosing party mustprovide a follow-up memorandum. And, we see no errorin the district courts conclusion that Convolve failed toprovide this written follow-up memorandum with respectto each of these ASTIs.

Convolve argues that, regardless of whether the con-fidentiality of the trade secrets was confirmed in writing,it presented evidence that the parties understood theirmutual disclosures were confidential, notwithstanding theNDA strictures. In other words, Convolve argues that itpresented evidence that the parties waived the writtenconfidentiality requirement through their course of con-duct. And, Convolve argues that the district court disre-garded such evidence in contravention of controllingCalifornia law. Even assuming Convolve is correct thatthe district court was required to provisionally considerthe evidence of the parties conduct, we still find thecourts conclusion to be correct.

As previously stated, the NDAs do not appear reason-ably susceptible to the interpretation Convolve urges.Convolves assertion that the parties understood that all


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oral and visual disclosures were under the purview of theNDAs absent a written follow-up memorandum so statingis contrary to the terms of the NDAs. Thus, Convolvesinterpretation is unreasonable and would render para-graph 7 of the NDA a dead letter.

In California, where the subsequent conduct of par-ties is inconsistent with and clearly contrary to provisionsof the written agreement, the parties modification settingaside the written provisions will be implied. AlvaradoOrthopedic Research, L.P. v. Linvatech Corp. , 2013 WL2351814, at *4 (S.D. Cal. May 24, 2013) (quoting DiamondWoodworks, Inc. v. Argonaut Ins. Co. , 135 Cal. Rprt. 2d

736, 747 (Cal. Ct. App. 2003)); see also Biren v. EqualityEmergency Med. Grp. , 125 Cal. Rptr. 325, 335 (Cal. Ct. App. 2002) ([T]he parties may, by their conduct, waivesuch a provision where the evidence shows that was theirintent.) (quoting Frank T. Hickey, Inc. v. L.A. JewishCmty. Council , 128 Cal. App. 2d 676, 68283 (Cal. Ct.

App. 1954)). Before a contract modifying a writtencontract can be implied, [however,] the conduct of theparties according to the findings of the trial court must beinconsistent with the written contract so as to warrantthe conclusion that the parties intended to modify the

written contract. Garrison v. Edward Brown & Sons , 25Cal. 2d 473, 479 (1944)). The operative question, there-fore, is whether Convolve presented enough evidence tocreate a genuine issue of material fact that the parties,through their conduct, intended to waive or modify theNDA marking provision.

Convolves evidence consists of the testimony of a sin-gle Seagate employee that he believed that all disclosureswere confidential. But, the subjective intent of one of theparties is not indicative of the mutual intent of bothparties. Founding Members of the Newport Beach Coun-try Club v. Newport Beach Country Club, Inc. , 135 Cal.Rptr. 2d 505, 514 (Cal. Ct. App. 2003) (The partiesundisclosed intent or understanding is irrelevant to


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contract interpretation.) (citations omitted). Convolvealso argues that, because Seagate and Compaq acknowl-edged that the oral and visual disclosures at the October1998 meeting were covered under the NDAs, this demon-strates that the parties understood that all subsequentdisclosures were also covered under the NDA. Thisevidence, however, leads to precisely the opposite conclu-sion. By acknowledging that the disclosures at the Octo-ber 1998 meeting were confidential, the parties conductdemonstrates they understood that oral and visual disclo-sures indeed required such written follow-up. As such, weperceive no error in the district courts conclusion that theparties did not waive or modify the marking provisions of the NDAs.

3. TRADE S ECRET M ISAPPROPRIATION CLAIM

Convolve next argues that, even if it failed to discloseor confirm its trade secrets in writing, such failure onlywarranted dismissal of its contract claims. Convolve alsopled a separate claim for trade secret misappropriation;Convolve argues that its failure to comply with the NDA is irrelevant to that tort claim. Instead, Convolve con-tends that the California Uniform Trade Secrets Act(CUTSA) controls its misappropriation claims againstSeagate. And, because CUTSA does not require tradesecrets to be disclosed in writing, the NDA does not definethe entirety of the parties relationship. According toConvolve, CUTSA provides that confidential relationshipscan be express or implied, and can depend on whether thedefendant knew or should have known that disclosureswere made under circumstances that compelled thereceiving party to maintain confidentiality. As such,Convolve argues that it presented enough evidence tosupport a finding that the confidential relationship be-tween it and Seagate was either not governed by, or notfully governed by, the NDA.


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Under CUTSA, misappropriation means, among otherthings, disclosure or use of a trade secret of anotherwithout express or implied consent by a person who, atthe time of disclosure, knew or should have known thatknowledge of the trade secret was acquired under circum-stances giving rise to a duty to maintain its secrecy. Cal.Civ. Code 3426.1(b). While true that an implied dutymay arise under certain circumstances, the parties havenot provided any citation, and we have found no Califor-nia case law that discuss[es] the relationship between[NDAs] and implied duties of confidentiality. MarketelIntl, Inc. v. Priceline.com, Inc. , 36 F. Appx. 423, 425 (Fed.Cir. 2002).

As another panel from this court found, the most rele-vant authority is from the Ninth Circuit (applying Oregonlaw), that a written non-disclosure agreement supplantsany implied duty of confidentiality that may have existedbetween the parties. Id. (citing Union Pacific R.R. Co. v.Mower , 219 F.3d 1069, 1076 (9th Cir. 2000)). This conclu-sion is fully consistent with general principles of Califor-nia contract law. See Faigan v. Signature Grp. Holdings,Inc. , 150 Cal. Rptr. 3d 123, 134 (Cal. Ct. App. 2012)(There cannot be a valid express contract and an implied

contract, each embracing the same subject, but requiringdifferent results.) (citing Shapiro v. Wells Fargo Realty Advisors , 199 Cal. Rptr. 613 (Cal. Ct. App. 1984)); see alsoHill v. State Farm Mut. Auto Ins. Co. , 83 Cal. Rptr. 3d651, 663 (Cal. Ct. App. 2008) (Express covenants abro-gate the operation of implied covenants so courts will notpermit implied agreements to overrule or modify theexpress contract of the parties.); Wagner v. Glendale

Adventist Med. Ctr. , 265 Cal. Rptr. 412 (Cal. Ct. App.1989) (holding that there can be no implied contractualterm at variance with an express term of a contract).

The reason for the rule is simply that where the partieshave freely, fairly and voluntarily bargained for certainbenefits in exchange for undertaking certain obligations,


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it would be inequitable to imply a different liability.Wal-Noon Corp. v. Hill , 119 Cal. Rptr. 646, 65051 (Cal.Ct. App. 1975). Common sense leads to the same conclu-sion. If the parties have contracted the limits of theirconfidential relationship regarding a particular subjectmatter, one party should not be able to circumvent itscontractual obligations or impose new ones over the othervia some implied duty of confidentiality.

Indeed, the CUTSA itself compels such a result. TheCUTSA states that misappropriation occurs when a tradesecret is acquired under circumstances giving rise to aduty to maintain its secrecy. Cal. Civ. Code 3426.1(b).

Convolve disclosed its alleged trade secrets to Seagatepursuant to the provisions of the NDA. Therefore, thecircumstances giving rise to a duty to maintain thesecrecy of the disclosed information is dictated by theterms of the NDA. Convolve did not follow the proceduresset forth in the NDA to protect the shared information, sono duty ever arose to maintain secrecy of that infor-mation. As such, Convolves argument must fail.

Convolve cites AT&T Commcns of Cal., Inc. v. Pacific Bell , 238 F.3d 427, 2000 WL 1277937, at *3 (9th Cir.2000), for the proposition that the NDAs marking provi-sions do not foreclose its CUTSA claims as a matter of law. In AT&T , the court found that electronic data wasnot within the scope of the parties agreement; therefore,no duty of confidentiality as to [the] electronic data [was]established by contract. Id. Because the record was notsufficient to indisputably determine whether a confiden-tial relationship existed outside the confines of the con-tractual relationship regarding the electronic data, thecourt remanded to the district court for further proceed-ings. Id.

AT&T , at most, allows for an implied confidential re-lationship regarding subject matter not covered by the parties contract . Convolve does not dispute, however,


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that its NDA with Seagate covers the substance of theinformation disclosed. And, since the subject mattercovered under the NDA and that as to which Convolvealleges an implied duty of confidentiality are the same,the NDA controls the entirety of the parties relationshipregarding those disclosures. AT&T is inapplicable onthese facts, and does not undermine the parties NDA.Convolves argument that the district court erred indismissing its tort-based trade secret misappropriationclaims fails.

4. CLAIMS AGAINST C OMPAQ

Convolve finally argues that the district court erredby granting Compaq summary judgment on all tradesecrets-in-suit even though ATSI 2B and 3A survivedSeagates motion for summary judgment. The districtcourt found that Convolve only accused Compaq of misap-propriating ATSIs 6 and 7 and that Convolves breach of contract claim against Compaq was predicated solely onthe unlawful disclosure and use of ATSI 7A. The districtcourt thus granted summary judgment in favor of Com-paq based on its earlier noted findings as to ATSI 6 and7A. Convolve now contends that it had always accusedCompaq of misappropriating all of Convolves tradesecrets, and that the district courts judgment for Compaqmust be vacated. We are unconvinced.

During discovery, Compaq asked Convolve to identifyeach and every alleged trade secret Convolve contendedCompaq disclosed to Seagate. In response, Convolve onlyidentified ATSI 6 and 7A. That response made sense;Compaq is not in the disk drive business and all tradesecrets other than ATSI 6 and 7A involve the develop-ment of such drives. ATSIs 6 and 7, on the other hand,are directed to the Quick and Quiet graphical user inter-

face and marketing secrets, which are apropos to Com-paqs business. As such, we find that the district courtproperly found that Convolves allegations against Com-


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paq for trade secret misappropriation and breach of contract were predicated only on ATSI 6 and 7, and thatsummary judgment in favor of Compaq was proper.

B. P ATENTS

Convolve accuses Seagate and Compaq of infringingclaims 1, 3, 4, and 715 of the 473 patent and claims 14,7, 11, 21, and 24 6 of the 635 patent. The district courtentered summary judgment in favor of both Seagate andCompaq on all asserted claims of both patents, findingthat neither party infringed the claims of the 473 patent,directly or indirectly, and that the asserted claims in the635 patent were invalid for a lack of enablement. Wereverse the district courts findings regarding the 473patent, but affirm the invalidity finding regarding theasserted claims of the 635 patent.

1. THE 473 P ATENT

We first turn to the 473 patent. To prove literal in-fringement, a plaintiff must show that the accused devicecontains each and every limitation of the asserted claims.

Presidio Components, Inc. v. Am. Technical Ceramics,Corp. , 702 F.3d 1351, 1358 (Fed. Cir. 2012) (citing UnilocUSA, Inc. v. Microsoft Corp. , 632 F.3d 1292, 1301 (Fed.Cir. 2011)). When determining whether a patent isinfringed, the court must first construe the disputedclaims and then compare the claims to the allegedlyinfringing devices. See Grober v. Mako Prods., Inc. , 686F.3d 1335, 1344 (Fed. Cir. 2012) (citing Cybor Corp. v.FAS Techs., Inc. , 138 F.3d 1448, 1454 (Fed. Cir. 1998)).

The district court construed the term selected un-wanted frequencies as at least the chosen unwantedfrequencies. No other claim construction is relevant to

6 Claims 11, 21, and 24 were cancelled as indicatedby the 635 patent ex parte reexamination certificate. See J.A. at 19394.


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a review of that source code, that the notch filter Settjeused targeted and reduced a band of frequencies aroundthe 2.6 KHz frequency. And, Convolves expert explainedthat a notch filter, as used by Settje, reduces a range of frequencies, not just a single one.

While the district court did not find Convolves evi-dence sufficient to demonstrate that Settje targetedmultiple frequencies for reduction, Convolve was entitledto have all reasonable inferences drawn in its favor. OlinCorp. v. Am. Home Assur. Co. , 704 F.3d 89, 96 (2d Cir.2012) (in determining whether fact disputes exist, a courtshould draw all reasonable inferences in favor of the

nonmoving party, and it may not make credibility deter-minations or weigh the evidence.) (quoting Reeves v.Sanderson Plumbing Prods., Inc. , 530 U.S. 133, 150(2000)); see also Meyer Intellectual Props. Ltd. v. Bodum,Inc. , 690 F.3d 1354, 1365 (Fed. Cir. 2012). Because wefind ambiguities in Settjes testimony regarding what hetargeted for noise reduction, and because Convolve prof-fered testimony based on relevant evidence opining thatSettje targeted multiple frequencies, we conclude thatSeagate was not entitled to a judgment of noninfringe-ment as a matter of law.

The district court also found that Seagate did notidentify frequencies that were causing unwanted acous-tics and then target those specific frequencies for reduc-tion when creating its SCSI drives. Instead, the districtcourt held that Seagate engaged in a trial-and-errorprocess using different filters and then selected one thatgave the best performance. According to Seagate, thatapproach caused it to choose a low-pass filter that wouldreduce all frequencies above the knee. Because it foundthat Seagate did not target unwanted frequencies at allwhen developing its SCSI drives, the district court foundthat Seagate did not infringe claims 1, 3, 4, and 715 the473 patent. We find that material issues of fact prevent-


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ed the district court from reaching this conclusion as amatter of law.

During development of the Seagate SCSI drives, aSeagate supervisor explained in an email that silent seekswere deemed operational after evaluation of a group of filters. The supervisor explained that the developmentteam looked at various filters at various frequencies, anddetermined which one gave the best inhibited excitationof audio frequencies. A low-pass filter was chosen.Convolves expert opined that low-pass filters do notindiscriminately reduce all frequencies, but discriminatebetween frequencies below and above a selected cutoff

frequency. Convolve also presented evidence that the low-pass filter chosen used a specified cut-off frequency,thereby reducing all unwanted frequencies beyond thecut-off. Convolve proffered evidence that the cut-off frequency was different for different SCSI drives. Basedon this evidence, and drawing all reasonable inferences inConvolves favor, a genuine issue of material fact remainsregarding whether specifying a cut-off frequency, evenwhen using a low-pass filter, amounts to targeting andselecting unwanted frequencies for reduction.

The district court also granted Seagate summary judgment of noninfringement on the ATA III and U5drives. Again, the court found that Convolve failed topresent evidence that Seagate engineers identified andtargeted specific frequencies for reduction. The districtcourt disregarded Convolves evidence to the contrarybecause it believed that evidence did not relate to thedevelopment of the ATA III or U5 drives, but instead wasdirected to the ATA IV drive. The district court alsofound that references by Seagate engineers to using theConvolve method were too generic to refer to the inven-tion disclosed in claims 1, 3, 4, and 715 of the 473patent. We disagree.


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Much like with the SCSI drives, when drawing all jus-tifiable inferences in Convolves favor, we find genuinedisputes of material fact remain on this question. Forexample, Convolves expert relied on evidence thatSeagate engineers performed a quantitative analysis toidentify particular frequencies when developing the U5and ATA III drives. Convolves evidence demonstratesthat the quantitative identification of unwanted frequen-cies began during the development of a predecessor to theU5 and ATA III drives, and that the code developed thenwas subsequently used in the U5 and ATA III code base.Convolve also presented a Technology Development Planthat appears to demonstrate systematic identification of unwanted frequencies. Convolves expert also identifiedlog notebooks that indicate that Seagate was conductingroundtable discussions at the U5 and ATA III designcenter regarding the Convolve method, among otherthings. In light of this evidence, and drawing all reasona-ble inferences in the non-movants favor, a reasonable

juror could conclude that Seagate targeted specific fre-quencies when developing these drives. We thereforereverse the district courts non-infringement finding onthese drives as well.

The district court also granted Seagate and Compaqsmotions for summary judgment regarding Convolvesclaim of inducement. Convolve contends that Compaqand Seagate induced infringement of claims 7 and 10 of the 473 patent. Convolve claims that Compaq sold com-puters that incorporated allegedly infringing Seagatedrives and provided instructions to users demonstratinghow to select between performance and quiet modes. Thedistrict court first held that, because Seagates drives donot directly infringe the asserted claims, Convolve cannotprove direct infringement by anyone. Since, as we held

above, Convolve may be able to demonstrate that Seagatedrives directly infringe the asserted claims, judgment onits inducement claims could not be premised on that fact.


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The district court alternatively held, however, thateven if the drives conceivably could infringe, Convolvesinducement claim fails because it proffered no evidence of actual direct infringement by another. Claims 1, 3, 4, and715 of the 473 patent disclose generating a user inter-face that gives a user the ability to choose between seeksthat are slower but quieter, or faster but louder.Convolve alleged that Seagate and Compaq induced usersto infringe the asserted claims of the 473 patent byproviding such an interface, along with instructions onhow to use it. But, the district court found that Convolvefailed to present evidence of a user who actually altereddrive parameters, i.e., who used the user interface in aninfringing way.

Since Convolve did not contend that the drives couldonly be used in an infringing way, the court found thatthe drives can be used in a non-infringing way (by notchanging the acoustic mode of the drives). The courtconcluded that Convolves evidence regarding how to usethe drives in an infringing way was insufficient to defeatsummary judgment on the inducement claims (the in-structions provided by Compaq and Seagate). As such,the court held that Convolves evidence was insufficient to

demonstrate direct infringement by another. A showing of indirect infringement necessarily re-

quires a showing of direct infringement. See LucentTechs., Inc. v. Gateway, Inc. , 580 F.3d 1301, 1317 (Fed.Cir. 2009). Demonstrating direct infringement requiresConvolve either to point to specific instances of directinfringement or show that the accused device necessarilyinfringes. ACCO Brands, Inc. v. ABA Locks, Mfr. Co. , 501F.3d 1307, 1313 (Fed. Cir. 2007). Convolve profferscircumstantial evidence of direct infringement by custom-ers. See Lucent Tech. , 580 F.3d at 1317 ([A] finding of infringement can rest on as little as one instance of theclaimed method being performed during the pertinenttime period.). Convolve presented evidence from Seagate


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and Compaq including: press releases, end-user instruc-tions, and distributed tools that allowed and even encour-aged computer users to select between differentperformance levels of the disk drives, i.e., quiet andslower versus noisy and faster. Convolve also providedexpert analysis of Compaqs F10 Bios feature demonstrat-ing how it allows computer users to select between thedifferent operational speeds of the drive.

As we recently confirmed, when an alleged infringerinstructs users to use a product in an infringing way,there is sufficient evidence for a jury to find direct in-fringement. Toshiba Corp. v. Imation Corp. , 681 F.3d

1358, 1366 (Fed. Cir. 2012) (citing Lucent Tech. , 580 F.3dat 1318). While a very close call, we find that Convolvepresented enough evidence to preclude summary judg-ment on its inducement claims. Convolve did not merelydemonstrate that the drives are capable of infringing, butprovided evidence of specific tools, with attendant instruc-tions, on how to use the drives in an infringing way.Unlike Fujitsu Ltd. v. Netgear, Inc. , 620 F.3d 1321, 1325(Fed. Cir. 2010), upon which the district court relied, theevidence here does not demonstrate that the infringingoption in the Seagate drives was disabled by default. See

Toshiba Corp. , 681 F.3d at 1365 (analyzing the holding inFujitsu ). Accordingly, given the procedural posture inwhich the claim is presented to us, we conclude thatConvolve may proceed with its inducement claims onremand.

2. THE 635 P ATENT

We next turn to the 635 patent. Section 112 of Title35 requires the written description of a patent to enable aperson skilled in the art to make use of the claimed inven-tion. In re Wands , 858 F.2d 731, 735 (Fed. Cir. 1998).

Enablement is a question of law based on underlyingfacts. Callicrate v. Wadsworth Mfg., Inc. , 427 F.3d 1361,1373 (Fed. Cir. 2005). While the factual findings underly-


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ing the legal conclusion of enablement are reviewed forclear error, we review the ultimate question of law denovo . Plant Genetic Sys., N.V. v. DeKalb Genetics, Corp. ,315 F.3d 1335, 1339 (Fed. Cir. 2003). Invalidity based onnonenablement must be proven by clear and convincingevidence. Microsoft Corp. v. i4i Ltd. Pship , __ U.S. __,131 S.Ct. 2238, 2242 (2011).

To be enabling, the [written description] of a patentmust teach those skilled in the art how to make and usethe full scope of the claimed invention without undueexperimentation. Genentech, Inc. v. Novo Nordisk, A/S ,108 F.3d 1361, 1365 (Fed. Cir. 1997) (citations omitted).

Determining whether undue experimentation is necessaryrequires the weighing of many factual considerations.Cephalon, Inc. v. Watson Pharm., Inc. , 707 F.3d 1330,1336 (Fed. Cir. 2013). Enablement is determined as of the effective filing date of the patent, which, here, isSeptember 12, 1988. Plant Genetic Sys., N.V. , 315 F.3d at1339.

The district court found that, for the disclosure of the635 patent to be enabling, the patent must teach one of ordinary skill in the art to generate inputs to minimizeunwanted dynamics for all physical systems. The districtcourt noted that it was undisputed that Dr. Singer wasunable to practice claims 14 and 7, of the 635 patent ondisk drives for long seeks until 1997, long after the filingdate of the patent. Consequently, the district court heldthat, given the breadth of the asserted claims of the 635patent, and because long seeks are a fundamental re-quirement for proper hard drive functionality, the patentfailed to enable long seeks.

Convolve contends that the district court erred in twoways. Convolve first asserts that there is no evidence

that the drive Dr. Singer tested in 1992 was available in1988. As such, Convolve contends that Dr. Singersfailure to implement his method on the drive in 1992 is


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irrelevant to Seagates enablement defense becauseenablement is to be judged as of the date of filing. Con-volve next argues that long seeks are merely a commer-cial requirement and have no bearing on whether thedisclosure in the 635 patent is enabling for disk drives.

Accordingly, Convolve argues that, because the claims of the 635 patent have been implemented in other physicalsystems, and for short seeks on some disk drives, it isenabling for all disk drives. We disagree on both counts.

The asserted claims of the 635 patent broadly claima method for generating an input to a physical system tominimize unwanted dynamics in the physical system

response. 635 patent, col. 10, ll. 4043. As the districtcourt found, the claims purport to cover inputs into anyand all physical systems, including disk drives. And, weperceive no clear error innor does Convolve seriouslycontestthe district courts fact finding regarding Dr.Singers failure to perform long seeks on disk drives until1997. Dr. Singer unequivocally testified that, given hisinability to practice long seeks on disk drives in 1992, hedecided to set aside applying the invention to those sys-tems and did not return to or solve the problem until1997.

Dr. Singers testimony is fatal for the asserted claimsof the 635 patent. Dr. Singer conceded that four yearsafter the filing of the patent application he was unable tofully implement the 635 patents method on disk drives.Dr. Singer further testified that he took up the disk driveissue again in 1997, and that it was only after applyinghis alleged trade secrets that he was able to solve theearlier problems. In other words, Dr. Singer was unableto implement his own method on disk drives until almostnine years after the filing date of the patent. Convolvefails to provide any evidence that would create a genuinedispute of material fact on these points.


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requirements of a client did not mean the patent wasnonenabling. Id. at 1339. The record evidence here,however, as demonstrated by Dr. Singers own testimony,is that the claimed method required functioning longseeks in the disk drives and these seeks were not simply apreference of a single customer. Again, Dr. Singer con-ceded that the failure to implement long seeks caused himto put aside attempts to implement the method in diskdrives for over five years. That testimony is unrebutted.

As such, CMFT does not apply to these facts.

By choosing such broad claim language, Convolve putitself at the peril of losing any claim that cannot be

enabled across its full scope of coverage. Magsil Corp. v.Hitachi Global Storage, Techs., Inc. , 687 F.3d 1377, 1381(Fed. Cir. 2012). Dr. Singers testimony that his lateradvancement allowed him to figure out why the 635patent method was not working for disk drives is a strongindication that the patent was not enabling when it wasfiled. Indeed, [t]he enablement doctrines prevention of over broad claims ensures that the patent system pre-serves necessary incentives for follow-on or improvementinventions. Id. at 1384. Here, the inventor himself concedes that he was unable to fully implement the

claimed method in disk drives for nine (9) years after thefiling date. As such, we affirm the district courts findingof invalidity regarding claims 14 and 7 of the 635 pa-tent.

III. COMPAQ S OTHER A RGUMENTS

Compaq incorporated by reference all of Seagates ar-guments into its own brief. Compaq, nevertheless, alsodiscusses a series of issues, spanning nearly seventypages, two of which were not considered, or even men-tioned, by the district court in its summary judgment

order. Compaq argues that: (1) the district courts nonin-fringement finding regarding the 473 patent should beaffirmed because Convolve failed to demonstrate that the


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relationship between acoustic noise and seeks is inher-ently inversely related; (2) the district courts judgmentthat Compaq did not misappropriate Convolves tradesecrets was correct; and (3) despite the district court notreaching any damages issues, Convolve has waived anyobjection regarding damages for non-Seagate drives ormisappropriation damages accrued after Convolve alleg-edly disclosed its trade secrets.

We agree with Compaq, as explained above, that thedistrict court properly entered judgment on Convolvestrade secret misappropriation claims. Regarding Com-paqs claims on the 473 patent and damages, however, we

decline the opportunity to rule on the new issues it raiseson the current record. While Compaq is correct that wemay rely on any ground supported by the record foraffirmance of the judgment, see Granite Mgmt. Corp. v.United States , 416 F.3d 1373, 1378 (Fed. Cir. 2005), therecord and briefing on these issues are insufficient for usto rule at this time. Compaqs arguments regarding the473 patent and damages are issues the district court didnot reach. As such, if these issues continue to be of rele-vance, the district court, and the parties, should be af-forded the first opportunity to develop the record on

Compaqs assertions before we conduct our review.7

IV. CONCLUSION

For the foregoing reasons, we affirm the districtcourts findings that Seagate and Compaq did not misap-propriate Convolves trade secrets and that the 635patent is non-enabling and, thus, invalid under 35 U.S.C. 112. We reverse and vacate the district courts finding

7 We express no opinion on any defenses asserted asto the 473 patent other than non-infringement. We leavethose questions, which the trial court deemed mooted byits non-infringement finding, to the trial court in the firstinstance.


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convolve v. compaq computer

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