Convolve, Inc. v. Compaq Computer Corp. , 527 F. App'x 910 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CONVOLVE, INC. AND MASSACHUSETTS
INSTITUTE OF TECHNOLOGY,
Plaintiffs-Appellants,
v.
COMPAQ COMPUTER CORPORATION,
Defendant-Appellee,
AND
SEAGATE TECHNOLOGY, LLC AND SEAGATE
TECHNOLOGY, INC.,
Defendant-Appellee.
______________________
2012-1074
______________________
Appeal from the United States District Court for
the 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
2 CONVOLVE v. COMPAQ COMPUTER
plaintiffs-appellants. With him on the brief were ALLEN
M. SOKAL and GARTH D. BAER. Of counsel on the brief
were GREGORY A. MARKEL, JAMES T. BAILEY, MICHAEL P.
DOUGHERTY and KEVIN J. MCNAMEE, Cadwalader, Wick-
ersham & Taft LLP, of New York, New York. Of counsel
was DEBRA B. STEINBERG.
CHRISTOPHER D. LANDGRAFF, Bartlit Beck Herman
Palenchar & Scott LLP, of Chicago, Illinois, argued for
defendants-appellees. With him on the brief was MARK E.
FERGUSON. Of counsel was VINCENT BUCCOLA, Bartlit
Beck Herman Palenchar & Scott LLP, of Chicago, Illinois;
CARTER G. PHILLIPS and ROBERT N. HOCHMAN, Sidley
Austin LLP, of Washington, DC; and NATALIA V.
BLINKOVA and BLAIR M. JACOBS, McDermott, Will &
Emery LLP, of Washington, DC.
______________________
Before RADER, Chief Judge, DYK, and O’MALLEY, Circuit
Judges.
O’MALLEY, Circuit Judge.
Convolve, Inc. (“Convolve”) and Massachusetts Insti-
tute of Technology (“MIT”) appeal the decision of the
United 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. (collectively
“Seagate”). The district court found that Compaq and
Seagate did not misappropriate eleven (11) of the fifteen
(15) Convolve trade secrets that remained at issue in the
suit. The court also held that Compaq and Seagate did
not infringe claims 1, 3, 4, and 7–15 of U.S. Patent No.
6,314,473 (“the ’473 patent”) and that claims 1–4, 7, 11,
CONVOLVE v. COMPAQ COMPUTER 3
21, and 24 1 of U.S. Patent No. 4,916,635 (“the ’635 pa-
tent”) are invalid. After the district court’s summary
judgment order, all remaining claims were dismissed
without prejudice. Convolve’s appeal is timely and we
have jurisdiction under 28 U.S.C. § 1295(a)(1). For the
reasons below, we affirm the district court’s rulings on the
trade secret claims and validity of the asserted claims of
the ’635 patent, but vacate the court’s judgment of non-
infringement with respect to the ’473 patent. We remand
for further proceedings on the ’473 patent.
I. BACKGROUND
In July 2000, Convolve and MIT sued Compaq and
Seagate for, among other things, trade secret misappro-
priation and patent infringement. Convolve was con-
ceived and is owned by Dr. Neil Singer. While a graduate
student at MIT, Dr. Singer set out to solve the general
problem of moving equipment quickly while minimizing
the resultant vibrations. The ’635 and ’473 patents grew
out of that research. MIT owns the ’635 patent while
Convolve owns the ’473 patent and all alleged trade
secrets in this suit. Convolve contends that Seagate
manufactured drives and tools that infringe the ’473 and
’635 patents and misappropriated Convolve’s trade se-
crets. Convolve also asserts that Compaq incorporated
the Seagate drives into its computers and provided tools,
such as the “F10 BIOS,” that together infringe certain
claims of the ’473 patent. Convolve further claims that
Compaq misappropriated multiple trade secrets relating
to the Quick and Quiet User Interface.
1 Claims 11, 21, and 24 were cancelled as indicated
by the ’635 patent ex parte reexamination certificate. See
Joint Appendix (“J.A.”) at 193–94. While the district
court stated at note 15 of its opinion that claims 7, 21, and
24 were cancelled, rather than 11, 21, and 24, that state-
ment appears to have been a typo.
4 CONVOLVE v. COMPAQ COMPUTER
Convolve is MIT’s exclusive licensee for use of a soft-
ware motion control technology called Input Shaping.
According to Convolve, Input Shaping technology is a
method for commanding equipment to move as quickly as
possible without excitation or vibration. Convolve ex-
plains that, from 1997 to 1998, it developed an application
for its Input Shaping technology in hard disk drives.
Convolve asserts that this technology is covered by the
trade secrets and patents involved in this case.
The technology at issue relates to improving “seeks”
in computer hard drives. The figure below depicts a
generic hard drive:
CONVOLVE v. COMPAQ COMPUTER 5
’473 patent, Figure 10A.
Hard drives store data in small magnetized spots on a
magnetic coating on the surface of platters (77) inside the
drive. Data is arranged in concentric “tracks” on each
platter. Disk drives have multiple platters, each contain-
ing thousands of tracks. Data can be stored randomly on
the surface of the platters such that a single file may be
stored in non-contiguous blocks, sometimes far apart on
the disk. To retrieve data, the drive uses an inductor to
detect the magnetic polarization of each “bit.” To store
data, electromagnets change a bit’s magnetic polarization.
The inductor and electromagnet are located on a “head”
(76) which itself is located on an “arm” (74).
6 CONVOLVE v. COMPAQ COMPUTER
The hard drive employs two motors to read and write
data: (1) the spindle motor that spins the platters, allow-
ing the head to cover the platters’ area while traversing
over 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 using
feedback from the arm’s position. When the microcontrol-
ler receives instructions, it directs the VCM to move the
head toward the target track. The process of moving from
track-to-track is called “seeking,” and the amount of time
it takes for the head to arrive at the correct track is called
“seek time.” Because data is stored on disparate parts of
the platter, the arm must be able to move both between
tracks that are far apart, called “long seeks,” and tracks
that are close together, called “short seeks.”
A component of seek time is “settle time,” which is the
time it takes for the arm to settle from any residual
vibrations caused by the arm’s movement. Quickly stop-
ping the arm will cause it to vibrate, and the vibrations
must stop before reading or writing. If the arm does not
properly settle over the desired track, the data will not be
retrieved or written accurately. Naturally, fast seeks are
preferable 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 created
“seek acoustics,” or a distinct clicking noise that can
irritate users. As such, there is a direct correlation be-
tween fast seeks and increased seek acoustics. In other
words, the faster the seek, the more noise, the slower the
seek, the less noise. Convolve’s technology attempted to
minimize seek acoustics resulting from fast seeks.
A. PATENTS
The ’635 patent is entitled “Shaping Command Inputs
to Minimize Unwanted Dynamics” and was filed on Sep-
tember 12, 1988. The ’635 patent discloses a “method[,
CONVOLVE v. COMPAQ COMPUTER 7
called shaping,]. . . for generating an input to a system to
minimize unwanted dynamics in the system response and
to reduce energy consumed by the system during moves.”
’635 patent, col. 3, ll. 62–65. The ’635 patent also disclos-
es an apparatus for shaping commands to a system “to
reduce endpoint vibration.” Id. at col. 12, ll. 36–37.
Claim 1 is representative:
A method for generating an input to a physical
system to minimize unwanted dynamics in the
physical system response comprising:
establishing expressions quantifying the
unwanted dynamics of the physical sys-
tem;
establishing first constraints bounding the
available input to the physical system;
establishing second constraints on varia-
tion in system response with variations in
the physical system characteristics; find-
ing a solution which is used to generate
the input which minimizes the value of
the expressions while satisfying the first
and second constraints; and
controlling the physical system based on
the input to the physical system whereby
unwanted dynamics are minimized.
’635 patent, col. 10, ll. 40–56.
The ’473 patent is entitled “System For Removing Se-
lected Unwanted Frequencies In Accordance With Altered
Settings In A User Interface Of A Data Storage Device,”
and was filed on March 4, 1999. The ’473 patent discloses
a method for application of input shaping to computer
disk drives and embodies a user interface that allows
customization of disk drive speed and acoustics. A user
can choose to make a drive run faster and noisier, or
8 CONVOLVE v. COMPAQ COMPUTER
slower and quieter. Claim 10 of the patent is representa-
tive:
Method of controlling operation of a data storage
device, comprising:
providing a user interface for controlling
one of a seek time of the data storage de-
vice and an acoustic noise level of the data
storage device;
operating the user interface so as to alter
settings of one of the seek time and the
acoustic noise level of the data storage de-
vice in inverse relation; and
outputting commands to the data storage
device causing the data storage device to
alter seek trajectory shape by shaping in-
put signals to the data storage device to
reduce selected unwanted frequencies
from a plurality of frequencies in accord-
ance with the altered settings.
’473 patent, col. 44, ll. 33–46.
B. CONVOLVE’S CLAIMS
In 1998, Convolve and Compaq began licensing nego-
tiations regarding Convolve’s technology. To facilitate the
discussions, Convolve and Compaq signed a non-
disclosure Agreement (“NDA”) and agreed to share their
respective confidential information for “furthering a
business relationship.” J.A. at 820. The confidential
information to be disclosed was described as “storage
peripheral market information and technology infor-
mation” from Compaq and “algorithms and processes for
enhancing positioning systems” from Convolve. Id. The
NDA states that, to trigger either party’s obligations, the
disclosed information must be: (1) marked as confidential
at the time of disclosure; or (2) unmarked, but treated as
CONVOLVE v. COMPAQ COMPUTER 9
confidential at the time of disclosure, and later designated
confidential in a written memorandum summarizing and
identifying the confidential information. The NDA explic-
itly excludes from its scope any information that: (1) the
recipient possessed prior to disclosure; (2) was a matter of
public knowledge; (3) was received from a third party
without a duty of confidentiality attached; (4) was inde-
pendently developed by the recipient; (5) was disclosed
under operation of law; or (6) was disclosed by the recipi-
ent with the discloser’s prior written approval. The NDA
covered any confidential disclosures between August 13,
1998 and October 15, 2000.
Compaq made personal computers, but did not itself
manufacture disk drives. Compaq instead purchased disk
drives from third parties, including Seagate, to incorpo-
rate into its computers. Compaq asked if Seagate could
be involved in evaluating Convolve’s technology. Seagate
designs, manufactures, and sells hard disk drives for
computers. Convolve agreed to share information with
Seagate upon execution of a similar NDA. Seagate was to
share “business and technical information related to servo
systems for disc drives, including: present and future
product plans, specifications, and drawings.” J.A. at 293.
Convolve agreed to share “feed forward and closed loop
techniques for improving disc drive seek and settle per-
formance.” Id. The purpose of sharing the information
was for “evaluation and testing.” Id. All written materi-
als clearly marked “confidential” (or something compara-
ble) were within the scope of the protections of the NDA.
For an oral disclosure to be within the scope of the NDA,
it must have been designated confidential at the time of
disclosure and followed by a written memorandum within
twenty (20) days of disclosure clearly providing notice of
what specific information was confidential. The exclu-
sions are largely the same as the exclusions in the Con-
volve-Compaq NDA. The NDA covered any confidential
10 CONVOLVE v. COMPAQ COMPUTER
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, during
which Convolve gave a presentation regarding its input
shaping technology and its application to computer disk
drives. After the meeting, the parties acknowledged in
writing that any oral disclosure of confidential infor-
mation during that meeting was covered by the NDAs.
Convolve gave two other presentations to Compaq and
Seagate, on February 10 and April 7, 1999. Although
Convolve sent Seagate copies of the slides from the Feb-
ruary presentation and a letter discussing the April
demonstration, Convolve did not state in writing that any
of the disclosures during or in connection with those later
meetings were confidential. Despite these meetings and
continued communications, Convolve never consummated
a deal with Compaq and Seagate regarding the technolo-
gy.
Convolve filed suit against Seagate and Compaq on
July 13, 2000. On January 16, 2002, Convolve amended
its 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 and
U.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 clearly
indicate which claims were originally at issue in this case.
The district court’s claim construction order reveals that
Convolve originally asserted claim 1–4, 7, 11, 21, and 24
of the ’635 patent, claims 19, 29, 39, and 55 of the ’267
patent, and claims 1, 3, 4, and 7–15 of the ’473 patent.
J.A. at 89.1–89.2.
CONVOLVE v. COMPAQ COMPUTER 11
dence; and (8) breach of good faith and fair dealing. In
March 2006, the district court granted summary judg-
ment in favor of Seagate and disposed of Convolve’s
claims of fraud, tortious interference with contract,
breach of confidence, and violation of California’s Unfair
Competition statute. Later, in March 2010, the district
court dismissed Convolve’s ’267 patent from the case. In
August 2011, the district court issued its order from
which this appeal derives, dismissing Convolve’s claims of
breach of contract, infringement of the asserted claims of
the ’473 and ’635 patents, and misappropriation of a
subset of the trade secrets asserted against Compaq and
Seagate.
C. TRADE SECRETS
As the litigation progressed, the district court found
that California Civil Procedure § 2019(d) compelled
Convolve to provide an Amended Trade Secret Identifica-
tion (“ATSI”) identifying the trade secrets at issue with
reasonable specificity. 3 At the time of the district court’s
summary judgment ruling, fifteen trade secrets remained
at issue. 4 They were enumerated in Convolve’s ATSI as
trade secrets (relevant subparts designated in parenthe-
3 California Code of Civil Procedure § 2019.210
reads, “[i]n any action alleging the misappropriation of a
trade 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 to
the trade secret, the party alleging the misappropriation
shall identify the trade secret with reasonable particulari-
ty subject to any orders that may be appropriate under
Section 3426.5 of the Civil Code.”
4 In December 2005, the parties agreed that Con-
volve would be precluded from bringing any litigation
against Seagate based on past activities for misappropria-
tion of trade secrets 1A, 2D, 4A–E, 7B–D. J.A. at 445.
12 CONVOLVE v. COMPAQ COMPUTER
sis): 1(B), 2(A–C), 2(E–F), 3(A–D), 6(A–C), and 7(A and
E). Convolve accused Seagate of misappropriating all
fifteen trade secrets and accused Compaq of misappropri-
ating trade secrets six and seven.
Convolve’s first claimed trade secret is directed to its
“disk drive instrumentation techniques useful for disk
drive research and development.” J.A. at 904. That trade
secret includes Convolve’s Laser Doppler Vibrometer
Feedback Technique (“LDVFT”) and Acoustic Microphone
Technique (“AMT”). AMT is used for making “time-based”
acoustic measurements outside of an anechoic chamber.
Id. The second asserted group of trade secrets is a compi-
lation of Convolve’s “seek trajectory design” (“STD”) data,
methods, techniques, and applications useful for disk
drive seek trajectory research, development, and produc-
tion. Id. It includes the “use of higher order models for
trajectory 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 designing
trajectories to produce faster and acoustically quieter disk
drives. Id. at 910–11. These trade secrets include the
concept that “abrupt current and voltage saturation
should be avoided to optimize vibration reduction.” J.A.
912–13. The third class of trade secrets relates to Con-
volve’s Model Reference (“MREF”) controller techniques
and related data. The sixth category is Convolve’s mar-
keting trade secrets relating to its Quick and Quiet user
interface for disk drives, among other things. The sev-
enth group of trade secrets cover information from Con-
volve’s Patent Cooperation Treaty (“PCT”) Application.
They include the Quick and Quiet user interface, among
other things.
D. DISTRICT COURT RULINGS
1. TRADE SECRETS
Seagate and Compaq moved for summary judgment
on the remaining trade secret and patent infringement
CONVOLVE v. COMPAQ COMPUTER 13
claims. While there was no dispute that California law
applied to Convolve’s state law claims against Seagate,
Convolve and Compaq squabbled over whether Texas or
New York law should apply to their claims. The district
court applied New York law to Compaq’s claims because
no party identified an actual conflict between the relevant
New York and Texas law. The district court then meticu-
lously analyzed each of the trade secrets at issue. We now
summarize those rulings as to each defendant in turn.
A. SEAGATE
Regarding ATSI 1B, which Convolve alleged included
AMT, the district court rejected Convolve’s contention
that the complete trade secret was disclosed at the Febru-
ary 2, 2009 presentation to Seagate. The district court
additionally found that, even if it was disclosed at the
meeting, Convolve did not send any confirmatory memo-
randum following the February 2009 presentation as
required by the NDA. On these alternative grounds, the
district court granted Seagate’s 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 was
generally and publically known via Dr. Evert Cooper’s
1993 dissertation titled “Minimum Time Control with
Minimum Vibration and with Power Limiting, with
Application to the Magnetic Disk File.” J.A. at 49–50.
The district court also found that the use of third order
models was publicly disclosed in the master’s thesis of
William Ray titled, “The Reduction of Acoustic Noise
Emissions from a Hard Disk Drive.” Id. The district
court further found that, even if ATSI 2A was entitled to
trade secret protection, there was insufficient evidence
that Convolve properly preserved the trade secret accord-
ing to the procedures of the NDA. Again, the district
14 CONVOLVE v. COMPAQ COMPUTER
court granted Seagate’s summary judgment motion on
these alternative grounds.
The district court also granted Seagate judgment as a
matter of law on those claims premised on ATSIs 2C, 2E,
and 2F. The court found that 2C was independently
known to Seagate, and that Convolve did not disclose the
substance of the trade secret in any confidential writings
or properly designate it as confidential following any oral
disclosure. The district court similarly found that 2E was
not disclosed in a confidential writing or properly protect-
ed after an oral or visual disclosure. And, the district
court found that Seagate did not misappropriate 2F
because it never used the trade secret, regardless of how
it was obtained. The district court, however, denied
Seagate’s motion regarding 2B, titled “Seek Trajectories
Need Not Be Smooth.” The district court found that
genuine issues of material fact remained regarding
whether the trade secret was disclosed at the February
1999 meeting between Convolve and Seagate and whether
Seagate used the trade secret thereafter.
The district court also denied Seagate’s summary
judgment motion regarding trade secret 3A, but granted
the motion as to trade secrets 3B through 3D. The dis-
trict court concluded that, under California law, a trade
secret may have independent economic value, even if a
particular defendant finds no value in it. The court,
accordingly, rejected Seagate’s argument that there was
no value to Seagate in the information Convolve provided
it regarding “Convolve’s MREF Control Demonstration
and Test Result Data.” J.A. at 61. Because the district
court found, however, that Convolve failed to provide a
post-disclosure confirmatory memorandum with respect to
those disclosures related to ATSIs 3B and 3D, the court
granted Seagate’s motion as to those, but denied it as to
ATSI 3A.
CONVOLVE v. COMPAQ COMPUTER 15
ATSIs 6A–6C all relate to marketing research, strate-
gies, and plans regarding Convolve’s Quick and Quiet
user interface. The district court denied Seagate’s motion
related to 6A, finding that fact issues remained whether
the relevant market research may be a trade secret. The
district court also denied Seagate’s motion regarding 6C,
finding that it may have independent economic value to
Seagate. The district court granted Seagate’s summary
judgment motion as to 6B because it was common
knowledge in the industry that quiet operation of disk
drives had market appeal.
The district court granted Seagate’s motion for sum-
mary judgment regarding ATSIs 7A and 7E. ATSI 7A
allegedly included Convolve’s Quick and Quiet user
interface, which, according to Convolve, enables the user
of the drive to choose quicker, but noisier operation or
slower, but quieter operation. The district court found
that the record evidence demonstrated that Seagate and
others contemplated having different seek modes as early
as 1990, and that U.S Patent No. 5,982,570 disclosed the
Quick and Quiet concept in 1997. As such, the district
court found that the substance of 7A was generally known
in the industry. Regarding 7E, titled “Shape on Transi-
ent,” the district court found no evidence that Seagate
used Convolve’s information in any of its disk drives and,
therefore, dismissed Convolve’s misappropriation claim.
After the district court’s order resolving the foregoing
trade secrets, the parties stipulated to the dismissal of the
remaining four trade secrets asserted against Seagate
and entry of final judgment.
B. COMPAQ
The district court found that Convolve only asserted
trade secrets 6 and 7 against Compaq (discussed further
below). Because ATSIs 6A–6C all related to marketing
research, strategies, and plans, and because New York
law does not extend trade secret protection to marketing
16 CONVOLVE v. COMPAQ COMPUTER
concepts, the district court granted Compaq’s motion for
summary judgment on all three. The district court also
granted summary judgment in favor of Compaq on Con-
volve’s ATSIs 7A and 7E on the same rationale as the
court’s grant in favor of Seagate. Additionally, Compaq
sought summary judgment on Convolve’s breach of con-
tract claims which were predicated on the unlawful
disclosure 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 court
found that Compaq did not breach the NDA and granted
its summary judgment motion.
2. PATENT CLAIMS
The district court next turned to Convolve’s claims of
patent infringement. By the time of the district court’s
August 2011 summary judgment order, Convolve asserted
that Seagate and Compaq infringed, both directly and
indirectly, claims 1, 3, 4, and 7–15 of the ’473 patent.
Convolve accused Seagate’s ATA III, ATA IV, SCSI, and
U5 drives of infringement. Convolve also asserted that
Compaq infringed claims 1, 3, 4, and 7–15 of the ’473
patent when it sold computers with the “F10 Bios” and
certain Seagate drives. Seagate and Compaq countered
that the accused drives did not directly infringe the
asserted claims of the ’473 patent because they did not
have a “user interface” or target “selected unwanted
frequencies,” as required by the patent claims. The
district court’s analysis both focused and turned on its
construction of the “selected unwanted frequencies”
language.
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 court’s construction because
the patentee distinguished prior art by disclosing a meth-
od that “targets” specific frequencies, rather than reduc-
CONVOLVE v. COMPAQ COMPUTER 17
ing all frequencies indiscriminately. The court further
noted that the parties did not dispute that, to practice the
’473 patent, someone would first have to discover un-
wanted frequencies and then target them for reduction.
The district court concluded that, for the accused devices
to directly infringe the asserted claims of ’473 patent, the
drives must not only reduce unwanted frequencies, but do
so by using the “discover” and “target” method.
The district court then analyzed each of the accused
drives to determine whether they were developed using
this method. The district court first turned to the ATA IV
drive and determined that the record evidence demon-
strated that Seagate targeted a single frequency to re-
duce; namely, 2.6 kilohertz (“KHz”). Since Seagate
targeted that specific frequency, the district court found it
irrelevant that other frequencies might happen to be
reduced, because those frequencies were not “targeted” for
reduction. And, because the claim language is directed at
reducing multiple frequencies, the district court held that
the ATA IV did not infringe the asserted claims of the
’473 patent because it only targeted a single frequency.
The district court next turned to the Seagate SCSI
drives. It found that the evidence demonstrated that
Seagate engineers did not identify frequencies causing
unwanted acoustics and then target them for reduction.
The district court found that Seagate engineers instead
tried a variety of filters to find the one that gave the best
performance, and chose a “low-pass filter” which indis-
criminately reduced all frequencies “above the knee.”
Because the filter was not chosen to target the specific
knee frequency, but was chosen to reduce all frequencies
indiscriminately, the court concluded that the SCSI drives
did not target “selected unwanted frequencies” and thus
did not infringe claims 1, 3, 4, and 7–15 of the ’473 patent.
The district court last turned to the Seagate ATA III
and U5 drives. For those drives, the district court found
18 CONVOLVE v. COMPAQ COMPUTER
that the evidence revealed that Seagate engineers did not
identify and target specific frequencies for reduction, but
made improvements to create quieter seeks without
regard to specific frequencies. The district court further
found that Convolve’s contrary evidence was mostly
directed at the ATA IV drive, not the ATA III and U5
drives. As such, the district court granted summary
judgment of noninfringement in favor of Seagate on those
drives. Given that Convolve’s claims of infringement
against Compaq were predicated on Seagate’s underlying
infringement, the district court also granted summary
judgment in favor of Compaq with respect to all of Con-
volve’s direct infringement claims relating to the ’473
patent.
The district court also granted summary judgment of
noninfringement in favor of both Seagate and Compaq on
Convolve’s inducement claims under 35 U.S.C. § 271(b).
The court reasoned that, because Seagate’s drives did not
directly infringe the asserted claims of the ’473 patent,
Convolve’s inducement claims must fail for lack of a direct
infringer. 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 Compaq
provided end-users instructions on how to select between
quick and quiet modes, the district court found that
insufficient to demonstrate actual direct infringement by
another.
The district court next turned to the asserted claims
of the ’635 patent. Seagate sought summary judgment on
various grounds, but the district court focused on
Seagate’s claim that the asserted claims of the ’635 patent
were not enabled and, therefore, were invalid. The dis-
trict court found that, for the written description of the
’635 patent to be enabling as to the asserted claims, it
must teach a person of ordinary skill in the art to gener-
CONVOLVE v. COMPAQ COMPUTER 19
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. Singer
that he was unable to implement the asserted claims for
“long seeks” in disk drives in 1992, the district court
found the patent invalid. Thus, the district court granted
summary judgment in favor of Seagate on all claims of
infringement relating to the asserted claims of the ’635
patent as well as on its affirmative invalidity claim. 5
II. DISCUSSION
A. TRADE SECRET AND CONTRACT CLAIMS
Convolve asserts three grounds for its belief that the
district court improperly granted summary judgment on
its trade secret claims: (1) that it presented sufficient
evidence to create material issues of fact regarding
Seagate and Compaq’s claims of prior knowledge and non-
use of the trade secrets, as well as enough evidence that
the trade secrets were disclosed in accordance with the
NDA marking provisions; (2) that it presented evidence
that would support a verdict that the parties, through
their 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 confidential
relationship between the parties because trade secret
misappropriation claims may also be analyzed as tort
claims under California law. Each of Convolve’s argu-
ments will be addressed in turn.
5 Convolve asserted claims of indirect infringement
against Compaq on the asserted claims of the ’635 patent.
While the district court’s decision only referred to
Seagate’s motion for summary judgment on the asserted
claims of the ’635 patent, because the district court found
the asserted claims of the ’635 patent invalid, the indirect
infringement claims against Compaq must also fail.
20 CONVOLVE v. COMPAQ COMPUTER
Trade secret misappropriation is a matter of state
law. See Atlantic Research Mktg. Sys., Inc. v. Troy, 659
F.3d 1345, 1356 (Fed. Cir. 2011) (citing Ultimax Cement
Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339,
1355 (Fed. Cir. 2009)). The parties agree that California
law applies to Convolve’s trade secret claims against
Seagate. The district court concluded that New York law
applies to the claims against Compaq. We apply our own
law “to substantive and procedural issues ‘pertaining to
patent law.’” Finjan, Inc. v. Secure Computer Corp., 626
F.3d 1197, 1207 (Fed. Cir. 2010) (quoting Aero Prods.
Int’l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1016
(Fed. Cir. 2006)). We review the district court’s 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 Second
Circuit reviews a grant of summary judgment de novo,
and will affirm “only where, construing all the evidence in
the light most favorable to the non-movant and drawing
all reasonable inferences in that party’s favor, there is no
genuine [dispute] as to any material fact and the movant
is 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., 583
F.3d 92, 96 (2d Cir. 2009)) (alteration in original).
1. NO GENUINE ISSUES OF FACT
We have reviewed the district court’s opinion regard-
ing the trade secrets and the evidence that Convolve
contends precluded judgment as a matter of law. After
such review, we perceive no error in the district court’s
conclusions that Seagate and Compaq are entitled to
summary judgment on Convolve’s contract and misappro-
priation claims.
First, we find that the district court was correct when
it concluded that, to the extent they would otherwise be
CONVOLVE v. COMPAQ COMPUTER 21
trade secrets and were disclosed to either defendant,
ATSIs 1B, 2A, 2C, 2E, and 3B–D were disclosed in the
absence of the written confidentiality follow-up memoran-
dum mandated by the NDAs. For this reason, barring
waiver of the NDAs marking requirements (discussed
below) we conclude that Seagate did not breach the NDA
to the extent it may have appropriated the information
disclosed. Because the disclosure of the information was
not 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 discuss
below) information relating to those ATSIs lost any trade
secret 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 7E—ATSI’s as to which the confiden-
tiality obligations of the NDAs did apply—were either
generally known before disclosure (and, thus, were not
“trade secrets” worthy of protection under the agreement
or otherwise), or were not used by Seagate following
disclosure. While Convolve contends it presented suffi-
cient evidence to create genuine issues of material fact on
these 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 Convolve’s claims against Compaq
and that New York law does not extend trade secret
protection to the information designated as ASTIs 6A–6C.
For those reasons, subject to our discussion below of
Convolve’s assertions that its trade secret and contract
claims survive despite these careful findings by the trial
court, we find no error in the trial court’s trade secret
rulings and find no need to discuss those rulings in detail.
2. BROAD CONSTRUCTION OR WAIVER
Convolve contends the district court erred when it
found that Compaq failed to protect the confidentiality of
22 CONVOLVE v. COMPAQ COMPUTER
certain information because it failed to designate it as
such pursuant to its obligations under the NDAs. Con-
volve asserts that the parties understood that all of their
mutual disclosures were confidential, notwithstanding the
marking requirements in the NDAs. In other words,
Convolve argues that fact issues remain as to whether
those trade secrets were confidentially disclosed, despite
Convolve’s failure to follow the NDA confidentiality
procedures, because the right to enforce those procedures
was waived. The district court found that Convolve did
not send a confirmatory letter designating the alleged
disclosure of the information relating to ATSIs 1B, 2A,
2C, 2E, and 3B–D as confidential. While Convolve does
not dispute this finding, it contends that the parties’
course of conduct did not require a follow-up letter. To
address this argument, we look to the relevant language
of the NDAs.
Convolve alleged that only Seagate misappropriated
these particular trade secrets; therefore, we apply the law
of the state that controls that NDA—as noted, that is
California law. When interpreting a contract, California
law requires courts to “give effect to the mutual intention
of the contracting parties at the time the contract was
formed.” Windsor Pacific LLC v. Samwood Co., Inc., 152
Cal. Rptr. 3d 518, 527 (Cal. Ct. App. 2013) (citing Cal.
Civ. Code § 1636). Such intent is ascertained “solely from
the written contract if possible,” and also “the circum-
stances under which the contract was made and the
matter to which it relates.” Id. (citing Cal. Civ. Code. §§
1639, 1647). The contract’s terms and provisions are to be
interpreted according to their ordinary meaning. See
Canaan Taiwanese Christian Church v. All World Mission
Ministries, 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)
CONVOLVE v. COMPAQ COMPUTER 23
(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, within
twenty (20) days of the disclosure, that the information
was confidential. Paragraph 7 of the Convolve-Seagate
NDA provides that, for “any oral or visual disclosures,”
the disclosing party must (1) designate the information as
confidential at the time of disclosure and (2) confirm “in a
writing delivered within twenty (20) days to the Recipient
which provides clear notice of the claim of confidentiality
and describes the specific information disclosed.” J.A. at
293. The intent of the parties, based on this language, is
clear: for an oral or visual disclosure of information to be
protected under the NDA, the disclosing party must
provide a follow-up memorandum. And, we see no error
in the district court’s conclusion that Convolve failed to
provide this written follow-up memorandum with respect
to 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 their
mutual disclosures were confidential, notwithstanding the
NDA strictures. In other words, Convolve argues that it
presented evidence that the parties waived the written
confidentiality requirement through their course of con-
duct. And, Convolve argues that the district court disre-
garded such evidence in contravention of controlling
California law. Even assuming Convolve is correct that
the district court was required to provisionally consider
the evidence of the parties’ conduct, we still find the
court’s conclusion to be correct.
As previously stated, the NDAs do not appear reason-
ably susceptible to the interpretation Convolve urges.
Convolve’s assertion that the parties understood that all
24 CONVOLVE v. COMPAQ COMPUTER
oral and visual disclosures were under the purview of the
NDAs absent a written follow-up memorandum so stating
is contrary to the terms of the NDAs. Thus, Convolve’s
interpretation 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 provisions
of the written agreement, the parties’ modification setting
aside the written provisions will be implied.” Alvarado
Orthopedic Research, L.P. v. Linvatech Corp., 2013 WL
2351814, at *4 (S.D. Cal. May 24, 2013) (quoting Diamond
Woodworks, Inc. v. Argonaut Ins. Co., 135 Cal. Rprt. 2d
736, 747 (Cal. Ct. App. 2003)); see also Biren v. Equality
Emergency Med. Grp., 125 Cal. Rptr. 325, 335 (Cal. Ct.
App. 2002) (“[T]he parties may, by their conduct, waive
such a provision where the evidence shows that was their
intent.”) (quoting Frank T. Hickey, Inc. v. L.A. Jewish
Cmty. Council, 128 Cal. App. 2d 676, 682–83 (Cal. Ct.
App. 1954)). “Before a contract modifying a written
contract can be implied, [however,] the conduct of the
parties according to the findings of the trial court must be
inconsistent with the written contract so as to warrant
the conclusion that the parties intended to modify the
written contract.” Garrison v. Edward Brown & Sons, 25
Cal. 2d 473, 479 (1944)). The operative question, there-
fore, is whether Convolve presented enough evidence to
create a genuine issue of material fact that the parties,
through their conduct, intended to waive or modify the
NDA marking provision.
Convolve’s evidence consists of the testimony of a sin-
gle Seagate employee that he believed that all disclosures
were confidential. But, the subjective intent of one of the
parties is not indicative of the mutual intent of both
parties. 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 parties’
undisclosed intent or understanding is irrelevant to
CONVOLVE v. COMPAQ COMPUTER 25
contract interpretation.”) (citations omitted). Convolve
also argues that, because Seagate and Compaq acknowl-
edged that the oral and visual disclosures at the October
1998 meeting were covered under the NDAs, this demon-
strates that the parties understood that all subsequent
disclosures were also covered under the NDA. This
evidence, however, leads to precisely the opposite conclu-
sion. By acknowledging that the disclosures at the Octo-
ber 1998 meeting were confidential, the parties’ conduct
demonstrates they understood that oral and visual disclo-
sures indeed required such written follow-up. As such, we
perceive no error in the district court’s conclusion that the
parties did not waive or modify the marking provisions of
the NDAs.
3. TRADE SECRET MISAPPROPRIATION CLAIM
Convolve next argues that, even if it failed to disclose
or confirm its trade secrets in writing, such failure only
warranted dismissal of its contract claims. Convolve also
pled 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 against
Seagate. And, because CUTSA does not require trade
secrets to be disclosed in writing, the NDA does not define
the entirety of the parties’ relationship. According to
Convolve, CUTSA provides that confidential relationships
can be express or implied, and can depend on whether the
defendant knew or should have known that disclosures
were made under circumstances that compelled the
receiving party to maintain confidentiality. As such,
Convolve argues that it presented enough evidence to
support a finding that the confidential relationship be-
tween it and Seagate was either not governed by, or not
fully governed by, the NDA.
26 CONVOLVE v. COMPAQ COMPUTER
Under CUTSA, misappropriation means, among other
things, disclosure or use of a trade secret of another
without express or implied consent by a person who, at
the time of disclosure, knew or should have known that
knowledge 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 duty
may arise under certain circumstances, the parties have
not provided any citation, and we have found no Califor-
nia case law that “discuss[es] the relationship between
[NDAs] and implied duties of confidentiality.” Marketel
Int’l, Inc. v. Priceline.com, Inc., 36 F. App’x. 423, 425 (Fed.
Cir. 2002).
As another panel from this court found, the most rele-
vant authority is from the Ninth Circuit (applying Oregon
law), that “a written non-disclosure agreement supplants
any implied duty of confidentiality that may have existed
between 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 requiring
different results.”) (citing Shapiro v. Wells Fargo Realty
Advisors, 199 Cal. Rptr. 613 (Cal. Ct. App. 1984)); see also
Hill v. State Farm Mut. Auto Ins. Co., 83 Cal. Rptr. 3d
651, 663 (Cal. Ct. App. 2008) (“Express covenants abro-
gate the operation of implied covenants so courts will not
permit implied agreements to overrule or modify the
express 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 contractual
term at variance with an express term of a contract).
“The reason for the rule is simply that where the parties
have freely, fairly and voluntarily bargained for certain
benefits in exchange for undertaking certain obligations,
CONVOLVE v. COMPAQ COMPUTER 27
it would be inequitable to imply a different liability.”
Wal-Noon Corp. v. Hill, 119 Cal. Rptr. 646, 650–51 (Cal.
Ct. App. 1975). Common sense leads to the same conclu-
sion. If the parties have contracted the limits of their
confidential relationship regarding a particular subject
matter, one party should not be able to circumvent its
contractual obligations or impose new ones over the other
via some implied duty of confidentiality.
Indeed, the CUTSA itself compels such a result. The
CUTSA states that misappropriation occurs when a trade
secret is acquired under circumstances giving rise to a
duty to maintain its secrecy. Cal. Civ. Code § 3426.1(b).
Convolve disclosed its alleged trade secrets to Seagate
pursuant to the provisions of the NDA. Therefore, the
“circumstances” giving rise to a duty to maintain the
secrecy of the disclosed information is dictated by the
terms of the NDA. Convolve did not follow the procedures
set forth in the NDA to protect the shared information, so
no duty ever arose to maintain secrecy of that infor-
mation. As such, Convolve’s argument must fail.
Convolve cites AT&T Commc’ns of Cal., Inc. v. Pacific
Bell, 238 F.3d 427, 2000 WL 1277937, at *3 (9th Cir.
2000), for the proposition that the NDA’s marking provi-
sions do not foreclose its CUTSA claims as a matter of
law. In AT&T, the court found that “electronic data” was
not 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 not
sufficient to “indisputably” determine whether a confiden-
tial relationship existed outside the confines of the con-
tractual relationship regarding the electronic data, the
court 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,
28 CONVOLVE v. COMPAQ COMPUTER
that its NDA with Seagate covers the substance of the
information disclosed. And, since the subject matter
covered under the NDA and that as to which Convolve
alleges an “implied duty of confidentiality” are the same,
the NDA controls the entirety of the parties’ relationship
regarding those disclosures. AT&T is inapplicable on
these facts, and does not undermine the parties’ NDA.
Convolve’s argument that the district court erred in
dismissing its tort-based trade secret misappropriation
claims fails.
4. CLAIMS AGAINST COMPAQ
Convolve finally argues that the district court erred
by granting Compaq summary judgment on all trade
secrets-in-suit even though ATSI 2B and 3A survived
Seagate’s motion for summary judgment. The district
court found that Convolve only accused Compaq of misap-
propriating ATSIs 6 and 7 and that Convolve’s breach of
contract claim against Compaq was predicated solely on
the unlawful disclosure and use of ATSI 7A. The district
court thus granted summary judgment in favor of Com-
paq based on its earlier noted findings as to ATSI 6 and
7A. Convolve now contends that it had always accused
Compaq of misappropriating all of Convolve’s trade
secrets, and that the district court’s judgment for Compaq
must be vacated. We are unconvinced.
During discovery, Compaq asked Convolve to identify
“each and every” alleged trade secret Convolve contended
Compaq disclosed to Seagate. In response, Convolve only
identified ATSI 6 and 7A. That response made sense;
Compaq is not in the disk drive business and all trade
secrets 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-
paq’s business. As such, we find that the district court
properly found that Convolve’s allegations against Com-
CONVOLVE v. COMPAQ COMPUTER 29
paq for trade secret misappropriation and breach of
contract were predicated only on ATSI 6 and 7, and that
summary judgment in favor of Compaq was proper.
B. PATENTS
Convolve accuses Seagate and Compaq of infringing
claims 1, 3, 4, and 7–15 of the ’473 patent and claims 1–4,
7, 11, 21, and 24 6 of the ’635 patent. The district court
entered summary judgment in favor of both Seagate and
Compaq on all asserted claims of both patents, finding
that neither party infringed the claims of the ’473 patent,
directly or indirectly, and that the asserted claims in the
’635 patent were invalid for a lack of enablement. We
reverse the district court’s findings regarding the ’473
patent, but affirm the invalidity finding regarding the
asserted claims of the ’635 patent.
1. THE ’473 PATENT
We first turn to the ’473 patent. “To prove literal in-
fringement, a plaintiff must show that the accused device
contains 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 Uniloc
USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed.
Cir. 2011)). When determining whether a patent is
infringed, the court must first construe the disputed
claims and then compare the claims to the allegedly
infringing devices. See Grober v. Mako Prods., Inc., 686
F.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 unwanted
frequencies.” No other claim construction is relevant to
6 Claims 11, 21, and 24 were cancelled as indicated
by the ’635 patent ex parte reexamination certificate. See
J.A. at 193–94.
30 CONVOLVE v. COMPAQ COMPUTER
the district court’s ruling on the claims of the ’473 patent.
After examining the written description and prosecution
history of the ’473 patent, the district court found that the
patentee chose the term “selected” to distinguish the
claimed invention from prior art that failed to “target”
specific frequencies. The prior art indiscriminately re-
duced all frequencies without “targeting” specific ones.
No party objects to the district court’s construction of
“selected unwanted frequencies,” or the court’s reasoning
in support of that construction. The parties’ dispute is
over whether Seagate practiced Convolve’s asserted
method when it created the accused disk drives. See J.A.
at 74.
Convolve accused four different categories of Seagate
drives of infringement: ATA IV, SCSI, ATA III, and U5.
The district court began it analysis with Seagate’s ATA IV
drive, which the parties agree reduces the 2.6 KHz fre-
quency. Because claims 1, 3, 4, and 7–15 of the ’473
patent require the reduction of more than one frequency,
the district court found that the ATA IV did not infringe
those claims. We find that the district court erred be-
cause it failed to consider evidence that calls into question
whether Seagate’s disk engineer actually only targeted a
single frequency when developing the ATA IV.
Chris Settje—a disk drive engineer working on the
ATA IV—testified that, during development of the drive,
he identified the 2.6 KHz resonance and was surprised
that so much sound power was focused in a narrow fre-
quency band. Settje set out to develop a filter to reduce
that frequency band and recorded his results in a graph
that demonstrates multiple peaks in the area around the
2.6 KHz frequency, not only the 2.6 KHz frequency in
isolation.
Convolve also presented other evidence that Settje did
not solely target the 2.6 KHz frequency, including source
code from the ATA IV. Convolve’s expert opined, based on
CONVOLVE v. COMPAQ COMPUTER 31
a review of that source code, that the notch filter Settje
used targeted and reduced a band of frequencies around
the 2.6 KHz frequency. And, Convolve’s expert explained
that a notch filter, as used by Settje, reduces a range of
frequencies, not just a single one.
While the district court did not find Convolve’s evi-
dence sufficient to demonstrate that Settje targeted
multiple frequencies for reduction, Convolve was entitled
to have all reasonable inferences drawn in its favor. Olin
Corp. v. Am. Home Assur. Co., 704 F.3d 89, 96 (2d Cir.
2012) (in determining whether fact disputes exist, “a court
should ‘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 we
find ambiguities in Settje’s testimony regarding what he
targeted for noise reduction, and because Convolve prof-
fered testimony based on relevant evidence opining that
Settje targeted multiple frequencies, we conclude that
Seagate was not entitled to a judgment of noninfringe-
ment as a matter of law.
The district court also found that Seagate did not
identify frequencies that were causing unwanted acous-
tics and then target those specific frequencies for reduc-
tion when creating its SCSI drives. Instead, the district
court held that Seagate engaged in a trial-and-error
process using different filters and then selected one that
gave the best performance. According to Seagate, that
approach caused it to choose a low-pass filter that would
reduce all frequencies above the “knee.” Because it found
that Seagate did not “target” unwanted frequencies at all
when developing its SCSI drives, the district court found
that Seagate did not infringe claims 1, 3, 4, and 7–15 the
’473 patent. We find that material issues of fact prevent-
32 CONVOLVE v. COMPAQ COMPUTER
ed the district court from reaching this conclusion as a
matter of law.
During development of the Seagate SCSI drives, a
Seagate supervisor explained in an email that silent seeks
were deemed operational after evaluation of a group of
filters. The supervisor explained that the development
team looked at various filters at various frequencies, and
determined which one gave the best inhibited excitation
of audio frequencies. A “low-pass” filter was chosen.
Convolve’s expert opined that low-pass filters do not
“indiscriminately” reduce all frequencies, but discriminate
between 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 the
cut-off. Convolve proffered evidence that the cut-off
frequency was different for different SCSI drives. Based
on this evidence, and drawing all reasonable inferences in
Convolve’s favor, a genuine issue of material fact remains
regarding whether specifying a cut-off frequency, even
when using a low-pass filter, amounts to targeting and
selecting unwanted frequencies for reduction.
The district court also granted Seagate summary
judgment of noninfringement on the ATA III and U5
drives. Again, the court found that Convolve failed to
present evidence that Seagate engineers identified and
targeted specific frequencies for reduction. The district
court disregarded Convolve’s evidence to the contrary
because it believed that evidence did not relate to the
development of the ATA III or U5 drives, but instead was
directed to the ATA IV drive. The district court also
found that references by Seagate engineers to using the
“Convolve method” were too generic to refer to the inven-
tion disclosed in claims 1, 3, 4, and 7–15 of the ’473
patent. We disagree.
CONVOLVE v. COMPAQ COMPUTER 33
Much like with the SCSI drives, when drawing all jus-
tifiable inferences in Convolve’s favor, we find genuine
disputes of material fact remain on this question. For
example, Convolve’s expert relied on evidence that
Seagate engineers performed a quantitative analysis to
identify particular frequencies when developing the U5
and ATA III drives. Convolve’s evidence demonstrates
that the quantitative identification of unwanted frequen-
cies began during the development of a predecessor to the
U5 and ATA III drives, and that the code developed then
was subsequently used in the U5 and ATA III code base.
Convolve also presented a Technology Development Plan
that appears to demonstrate systematic identification of
unwanted frequencies. Convolve’s expert also identified
log notebooks that indicate that Seagate was conducting
roundtable discussions at the U5 and ATA III design
center regarding the “Convolve method,” among other
things. In light of this evidence, and drawing all reasona-
ble inferences in the non-movant’s favor, a reasonable
juror could conclude that Seagate targeted specific fre-
quencies when developing these drives. We therefore
reverse the district court’s non-infringement finding on
these drives as well.
The district court also granted Seagate and Compaq’s
motions for summary judgment regarding Convolve’s
claim of inducement. Convolve contends that Compaq
and Seagate induced infringement of claims 7 and 10 of
the ’473 patent. Convolve claims that Compaq sold com-
puters that incorporated allegedly infringing Seagate
drives and provided instructions to users demonstrating
how to select between performance and quiet modes. The
district court first held that, because Seagate’s drives do
not directly infringe the asserted claims, Convolve cannot
prove direct infringement by anyone. Since, as we held
above, Convolve may be able to demonstrate that Seagate
drives directly infringe the asserted claims, judgment on
its inducement claims could not be premised on that fact.
34 CONVOLVE v. COMPAQ COMPUTER
The district court alternatively held, however, that
even if the drives conceivably could infringe, Convolve’s
inducement claim fails because it proffered no evidence of
actual direct infringement by another. Claims 1, 3, 4, and
7–15 of the ’473 patent disclose generating a user inter-
face that gives a user the ability to choose between seeks
that are “slower” but quieter, or “faster” but louder.
Convolve alleged that Seagate and Compaq induced users
to infringe the asserted claims of the ’473 patent by
providing such an interface, along with instructions on
how to use it. But, the district court found that Convolve
failed to present evidence of a user who actually altered
drive parameters, i.e., who used the user interface in an
infringing way.
Since Convolve did not contend that the drives could
only be used in an infringing way, the court found that
the drives can be used in a non-infringing way (by not
changing the acoustic mode of the drives). The court
concluded that Convolve’s evidence regarding how to use
the drives in an infringing way was insufficient to defeat
summary judgment on the inducement claims (the in-
structions provided by Compaq and Seagate). As such,
the court held that Convolve’s evidence was insufficient to
demonstrate direct infringement by another.
A showing of indirect infringement necessarily re-
quires a showing of direct infringement. See Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed.
Cir. 2009). Demonstrating direct infringement requires
Convolve either to point to specific instances of direct
infringement or show that the accused device necessarily
infringes. ACCO Brands, Inc. v. ABA Locks, Mfr. Co., 501
F.3d 1307, 1313 (Fed. Cir. 2007). Convolve proffers
circumstantial 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 the
claimed method being performed during the pertinent
time period.”). Convolve presented evidence from Seagate
CONVOLVE v. COMPAQ COMPUTER 35
and Compaq including: press releases, end-user instruc-
tions, and distributed tools that allowed and even encour-
aged computer users to select between different
performance levels of the disk drives, i.e., quiet and
slower versus noisy and faster. Convolve also provided
expert analysis of Compaq’s F10 Bios feature demonstrat-
ing how it allows computer users to select between the
different operational speeds of the drive.
As we recently confirmed, when an alleged infringer
“instructs 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.3d
at 1318). While a very close call, we find that Convolve
presented enough evidence to preclude summary judg-
ment on its inducement claims. Convolve did not merely
demonstrate that the drives are capable of infringing, but
provided 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, the
evidence here does not demonstrate that the infringing
option in the Seagate drives was disabled by default. See
Toshiba Corp., 681 F.3d at 1365 (analyzing the holding in
Fujitsu). Accordingly, given the procedural posture in
which the claim is presented to us, we conclude that
Convolve may proceed with its inducement claims on
remand.
2. THE ’635 PATENT
We next turn to the ’635 patent. Section 112 of Title
35 requires the written description of a patent to enable a
person 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 underlying
facts. Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361,
1373 (Fed. Cir. 2005). While the factual findings underly-
36 CONVOLVE v. COMPAQ COMPUTER
ing the legal conclusion of enablement are reviewed for
clear error, we review the ultimate question of law de
novo. Plant Genetic Sys., N.V. v. DeKalb Genetics, Corp.,
315 F.3d 1335, 1339 (Fed. Cir. 2003). Invalidity based on
nonenablement must be proven by clear and convincing
evidence. Microsoft Corp. v. i4i Ltd. P’ship, __ U.S. __,
131 S.Ct. 2238, 2242 (2011).
“To be enabling, the [written description] of a patent
must teach those skilled in the art how to make and use
the full scope of the claimed invention without undue
experimentation.” Genentech, Inc. v. Novo Nordisk, A/S,
108 F.3d 1361, 1365 (Fed. Cir. 1997) (citations omitted).
Determining whether undue experimentation is necessary
requires 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, is
September 12, 1988. Plant Genetic Sys., N.V., 315 F.3d at
1339.
The district court found that, for the disclosure of the
’635 patent to be enabling, the patent must teach one of
ordinary skill in the art to generate inputs to minimize
unwanted dynamics for all physical systems. The district
court noted that it was undisputed that Dr. Singer was
unable to practice claims 1–4 and 7, of the ’635 patent on
disk drives for long seeks until 1997, long after the filing
date of the patent. Consequently, the district court held
that, given the breadth of the asserted claims of the ’635
patent, and because long seeks are a fundamental re-
quirement for proper hard drive functionality, the patent
failed to enable long seeks.
Convolve contends that the district court erred in two
ways. Convolve first asserts that there is no evidence
that the drive Dr. Singer tested in 1992 was available in
1988. As such, Convolve contends that Dr. Singer’s
failure to implement his method on the drive in 1992 is
CONVOLVE v. COMPAQ COMPUTER 37
irrelevant to Seagate’s enablement defense because
enablement 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 the
disclosure 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 physical
systems, and for short seeks on some disk drives, it is
enabling for all disk drives. We disagree on both counts.
The asserted claims of the ’635 patent broadly claim
a method for “generating an input to a physical system to
minimize unwanted dynamics in the physical system
response.” ’635 patent, col. 10, ll. 40–43. As the district
court found, the claims purport to cover inputs into any
and all physical systems, including disk drives. And, we
perceive no clear error in—nor does Convolve seriously
contest—the district court’s fact finding regarding Dr.
Singer’s failure to perform long seeks on disk drives until
1997. Dr. Singer unequivocally testified that, given his
inability to practice long seeks on disk drives in 1992, he
decided to set aside applying the invention to those sys-
tems and did not return to or solve the problem until
1997.
Dr. Singer’s testimony is fatal for the asserted claims
of the ’635 patent. Dr. Singer conceded that four years
after the filing of the patent application he was unable to
fully implement the ’635 patent’s method on disk drives.
Dr. Singer further testified that he took up the disk drive
issue again in 1997, and that it was only after applying
his alleged trade secrets that he was able to solve the
earlier problems. In other words, Dr. Singer was unable
to implement his own method on disk drives until almost
nine years after the filing date of the patent. Convolve
fails to provide any evidence that would create a genuine
dispute of material fact on these points.
38 CONVOLVE v. COMPAQ COMPUTER
Convolve also fails to provide any evidence that caus-
es us to question the district court’s fact finding that long
seeks were, and are, necessary for hard drive functionali-
ty. Convolve, for example, contends that Seagate’s expert,
Dr. Gene Franklin “admitted” that it was possible to
implement the method of the asserted claims of the ’635
patent on “many disk drives.” As the district court found,
however, Dr. Franklin testified that the method might be
implemented “to the extent that you have a simplified
model of the dynamic motion of the disk drive.” J.A. at
3597, Tr. 217:21–218:5. We agree. The district court did
not err in finding that long seeks are critical to the fun-
damental workings of these particular physical systems,
i.e., disk drives.
Convolve’s argument that the record evidence from
1992 does not establish that the ’635 patent was not
enabling for disk drives in 1988 is illogical. First, if the
inventor himself was unable to implement the method in
disk drives in 1992, it necessarily means that he would
not have been able to implement the method four years
earlier. Also, Convolve’s bald assertion that long seeks
were not a necessary component of functional disk drives
in 1988 is undercut by Dr. Singer’s own attempts to
perform long seeks on disk drives. If long seeks were not
relevant, it is unlikely Dr. Singer would have testified
that his drives were a failure or to set aside the project
involving those drives until 1997. Convolve provides no
more than attorney argument that long seeks were a
mere commercial requirement. Attorney argument alone
cannot preclude summary judgment on this issue.
Convolve’s reliance on CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333 (Fed. Cir. 2003) is misplaced. Con-
volve contends that CFMT compels us to reverse the
district court’s finding because long seeks are a commer-
cial embodiment for certain drives, and thus irrelevant to
enablement. In CMFT, we found that the fact that a
claimed method failed to meet the specific commercial
CONVOLVE v. COMPAQ COMPUTER 39
requirements of a client did not mean the patent was
nonenabling. Id. at 1339. The record evidence here,
however, as demonstrated by Dr. Singer’s own testimony,
is that the claimed method required functioning long
seeks in the disk drives and these seeks were not simply a
preference of a single customer. Again, Dr. Singer con-
ceded that the failure to implement long seeks caused him
to put aside attempts to implement the method in disk
drives for over five years. That testimony is unrebutted.
As such, CMFT does not apply to these facts.
By choosing such broad claim language, Convolve put
itself “at the peril of losing any claim that cannot be
enabled across its full scope of coverage.” Magsil Corp. v.
Hitachi Global Storage, Techs., Inc., 687 F.3d 1377, 1381
(Fed. Cir. 2012). Dr. Singer’s testimony that his later
advancement allowed him to figure out why the ’635
patent method was not working for disk drives is a strong
indication that the patent was not enabling when it was
filed. Indeed, “[t]he enablement doctrine’s prevention of
over broad claims ensures that the patent system pre-
serves necessary incentives for follow-on or improvement
inventions.” 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 the
filing date. As such, we affirm the district court’s finding
of invalidity regarding claims 1–4 and 7 of the ’635 pa-
tent.
III. COMPAQ’S OTHER ARGUMENTS
Compaq incorporated by reference all of Seagate’s ar-
guments into its own brief. Compaq, nevertheless, also
discusses a series of issues, spanning nearly seventy
pages, 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 court’s nonin-
fringement finding regarding the ’473 patent should be
affirmed because Convolve failed to demonstrate that the
40 CONVOLVE v. COMPAQ COMPUTER
relationship between acoustic noise and seeks is “inher-
ently” inversely related; (2) the district court’s judgment
that Compaq did not misappropriate Convolve’s trade
secrets was correct; and (3) despite the district court not
reaching any damages issues, Convolve has waived any
objection regarding damages for non-Seagate drives or
misappropriation damages accrued after Convolve alleg-
edly disclosed its trade secrets.
We agree with Compaq, as explained above, that the
district court properly entered judgment on Convolve’s
trade secret misappropriation claims. Regarding Com-
paq’s claims on the ’473 patent and damages, however, we
decline the opportunity to rule on the new issues it raises
on the current record. While Compaq is correct that we
may rely on “any ground supported by the record for
affirmance of the judgment,” see Granite Mgmt. Corp. v.
United States, 416 F.3d 1373, 1378 (Fed. Cir. 2005), the
record and briefing on these issues are insufficient for us
to rule at this time. Compaq’s arguments regarding the
’473 patent and damages are issues the district court did
not 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
Compaq’s assertions before we conduct our review. 7
IV. CONCLUSION
For the foregoing reasons, we affirm the district
court’s findings that Seagate and Compaq did not misap-
propriate Convolve’s trade secrets and that the ’635
patent is non-enabling and, thus, invalid under 35 U.S.C.
§ 112. We reverse and vacate the district court’s finding
7 We express no opinion on any defenses asserted as
to the ’473 patent other than non-infringement. We leave
those questions, which the trial court deemed mooted by
its non-infringement finding, to the trial court in the first
instance.
CONVOLVE v. COMPAQ COMPUTER 41
that Seagate and Compaq do not infringe the ’473 patent
and remand for further proceedings.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
No Costs.