  United States Court of Appeals
      for the Federal Circuit
                     ______________________

             VASUDEVAN SOFTWARE, INC.,
                  Plaintiff-Appellant

                                    v.

                  MICROSTRATEGY, INC.,
                     Defendant-Appellee

                  TIBCO SOFTWARE, INC.,
                    Third Party Defendant
                    ______________________

                           2014-1094
                     ______________________

   Appeal from the United States District Court for the
Northern District of California in No. 3:11-cv-06637-RS,
Judge Richard Seeborg.

   --------------------------------------------------------------------

             VASUDEVAN SOFTWARE, INC.,
                  Plaintiff-Appellant

                                    v.

                  TIBCO SOFTWARE, INC.,
                     Defendant-Appellee

MICROSTRATEGY, INC., ORACLE CORPORATION,
           Third Party Defendants
          _______________________
2         VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.




                       2014-1096
                 ______________________

   Appeal from the United States District Court for the
Northern District of California in No. 3:11-cv-06638-RS,
Judge Richard Seeborg.
                 _____________________

                 Decided: April 3, 2015
                 ______________________

    LESLIE V. PAYNE, Heim, Payne & Chorush, LLP, Hou-
ston, TX, argued for plaintiff-appellant in 2014-1094 and
2014-1096. Also represented by ERIC J. ENGER, MICHAEL
F. HEIM; BROOKE ASHLEY MAY TAYLOR, JORDAN CONNORS,
Susman Godfrey L.L.P., Seattle, WA.

   SEAN S. PAK, Quinn Emanuel Urquhart & Sullivan,
LLP, San Francisco, CA, argued for defendant-appellee
MicroStrategy, Inc. in 2014-1094. Also represented by
KEVIN ALEXANDER SMITH, JENNIFER A. KASH.

   ROBERT ALAN APPLEBY, Kirkland & Ellis LLP, New
York, NY, argued for defendant-appellee TIBCO Soft-
ware, Inc. in 2014-1096. Also represented by JOSEPH
ALLEN LOY; JOHN C. O’QUINN, Washington, DC.
               ______________________

    Before CHEN, LINN, and HUGHES, Circuit Judges.
LINN, Circuit Judge.
    Vasudevan Software, Inc. (“VSi”) appeals the district
court’s clarification order, Vasudevan Software, Inc. v.
MicroStrategy Inc., No. 11-cv-06637 RS and No. 11-cv-
06638 RS, available at 2013 WL 5288267 (N.D. Cal. Sept.
19, 2013) (“Clarification Order”), of its prior claim con-
struction order, Vasudevan, No. 11-cv-06637 RS and No.
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.         3



11-cv-06638 RS, available at 2012 WL 4120501 (N.D. Cal.
Sept. 19, 2012) (“Initial Order”), pursuant to which VSi
stipulated that MicroStrategy, Inc. (“MicroStrategy”) and
TIBCO Software, Inc. (“TIBCO”) (collectively “defend-
ants”) did not infringe any of the asserted claims of VSi’s
U.S. Patents No. 6,877,006 (the “’006 patent”), No.
7,167,864 (the “’864 patent”), No. 7,720,861 (the “’861
patent”) and No. 8,082,268 (the “’268 patent”) (collective-
ly, the “patents-in-suit”). VSi also appeals the district
court’s grant of summary judgment that all claims of the
patents-in-suit asserted against MicroStrategy are invalid
for lack of enablement. Vasudevan Software, Inc. v.
MicroStrategy Inc., No. 11-cv-06637 RS (N.D. Cal. Oct. 17,
2013) (the “MicroStrategy” suit). Finally, VSi appeals the
district court’s grant of summary judgment that all claims
of the patents-in-suit asserted against TIBCO are invalid
for lack of enablement and written description. Vasude-
van Software, Inc. v. TIBCO Software, Inc., No. 11-cv-
06638 RS (N.D. Cal. Oct. 17, 2013) (the “TIBCO” suit).
    We affirm the district court’s claim construction and,
accordingly, the judgment of non-infringement predicated
thereon. However, because there are genuine issues of
material fact regarding whether the asserted claims are
enabled and have sufficient written description support,
we reverse the district court’s grants of summary judg-
ment of invalidity and remand.
                     I. BACKGROUND
                 A. The Patents-In-Suit
    The patents-in-suit 1 are directed to different features
of an online analytical processing (“OLAP”) cube capable
of collecting and processing “live” data from multiple


   1    The patents-in-suit share a common specification.
References to the specifications of the patents-in-suit will
be based on the specification of the ’006 patent.
4          VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



incompatible databases. According to the patents-in-suit,
prior to the invention, data from different databases had
to be converted into a compatible format and stored in a
data warehouse before the data could be analyzed. Prior
art systems were thus analyzing “stale” data. The inven-
tions of the patents-in-suit sought to overcome that prob-
lem by creating an OLAP cube capable of collecting and
processing information from incompatible databases at
run-time without going through an intermediate ware-
house repository of “stale” data.          The claims of
the ’006, ’864 and ’861 patents all recite a system that
accesses “disparate . . . databases.” 2    The claims of
the ’268 patent use the expression “incompatible data-
bases of different types,” rather than the term “disparate
databases.”
              B. History of the Proceedings
    VSi sued MicroStrategy for infringing claim 2 of
the ’006 patent; claims 26, 33, 36, 41, 43, 45, 46, 48 and 50
of the ’864 patent; claims 3 and 4 of the ’861 patent; and
claims 1, 2, 6–10, 14 and 15 of the ’268 patent. In a
separate suit, VSi sued TIBCO for infringing claims 26,
33, 36, 39, 41, 45, 46, 48 and 50 of the ’864 patent.
     The district court did not consolidate the MicroStrate-
gy and TIBCO suits, but nonetheless considered the claim
construction issues together. A key dispute in both suits
was over the proper construction of the expression “dis-
parate databases.” While there was little debate over the
fact that “disparate” means incompatible, the parties
differed over how extensive that incompatibility must be.
VSi claimed that “disparate databases” meant “incompat-
ible databases having different schemas,” while defend-
ants contended it meant “databases having an absence of



    2   For the remainder of this opinion, the ellipsis be-
tween “disparate” and “databases” is omitted for clarity.
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.         5



compatible keys or record identifier (ID) columns of
similar value or format in the schemas or structures of
the database that would otherwise enable linking data
within the constituent databases.” Initial Order at *3.
    The district court agreed with defendants. It ruled
that the applicant defined “disparate databases” when he
stated during prosecution:
   “The disparate nature of the above databases re-
   fers to [an] absence of compatible keys or record
   identifier (ID) columns of similar value or format
   in the schemas or structures of the database that
   would otherwise enable linking data within the
   constituent databases.”
Id. at *4 (quoting ’006 patent Prosecution History, Appli-
cant’s Amendments and Remarks of Oct. 30, 2003) (em-
phasis omitted). The district court ruled that the above-
quoted statement was “clear” and “unmistakable.” Id. at
*5. Accordingly, it construed “disparate databases” to
mean: “databases having an absence of compatible keys or
record identifier columns of similar value or format in the
schemas or structures that would otherwise enable link-
ing data.” Id. The district court noted that in a prior
litigation IBM and Oracle stipulated to VSi’s proposed
claim construction, but ruled that “[w]hile perhaps of
some import,” VSi “conceded” that the earlier stipulation
could not bind defendants “without violating their due
process rights.” Id. at *3 n.6.
    In its Clarification Order, the district court explained
that a database would only be disparate if it had: (1) an
absence of compatible keys; and (2) an absence of record
ID columns of similar value; and (3) an absence of record
ID columns of similar format in the schemas or structures
that would otherwise enable linking data. See Clarifica-
tion Order at *5.
6         VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



    The district court further held that because VSi had
previously prevailed in its argument that “incompatible
databases of different types” should be equated with
“disparate databases,” VSi was now “estopped” from
claiming that the two phrases had different meanings.
Id. at *1 n.3. In view of the Clarification Order, the
parties stipulated to non-infringement.
    The district court, finding no genuine issue of materi-
al fact, next granted a motion filed by TIBCO for sum-
mary judgment of invalidity of all the claims VSi asserted
against it, contending that the specification lacked writ-
ten description support of and failed to enable the “dis-
parate databases” limitation. See TIBCO at 25–31. The
district court likewise granted a similar motion filed by
MicroStrategy for summary judgment of invalidity of all
the claims VSi asserted against it for lack of enablement.
See MicroStrategy at 15–19.
    VSi appeals the district court’s claim construction and
invalidity determinations. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1) (2012).
                      II. DISCUSSION
                 A. Standards of Review
     We review de novo the ultimate question of the proper
construction of patent claims and the evidence intrinsic to
the patent. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.
Ct. 831, 841 (2015). On the other hand, in considering
extrinsic evidence, we review the subsidiary factual
findings underlying the district court’s claim construction
for clear error. Id. at 840. Here, the district court essen-
tially limited its review to intrinsic evidence, although it
noted that IBM and Oracle in another litigation involving
the ’006, ’864 and ’861 patents stipulated to VSi’s pro-
posed construction of “disparate databases.” The fact of
the existence of that stipulation is undisputed, but we
evaluate its import de novo. See id. at 841 (“The district
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.         7



judge, after deciding the factual dispute, will then inter-
pret the patent claim in light of the facts as he has found
them. This ultimate interpretation is a legal conclusion.
The appellate court can still review the district court’s
ultimate construction of the claim de novo.”).
    We review summary judgment decisions according to
the law of the regional circuit, here the Ninth Circuit,
which reviews them de novo. Halo Elecs., Inc. v. Pulse
Elecs., Inc., 769 F.3d 1371, 1377 (Fed. Cir. 2014) (citing
Humane Soc’y of U.S. v. Locke, 626 F.3d 1040, 1047 (9th
Cir. 2010)). Accordingly, we reapply the standard applied
by the district court. See Bos. Scientific Corp. v. Johnson
& Johnson, 647 F.3d 1353, 1361 (Fed. Cir. 2011). In the
Ninth Circuit, summary judgment is appropriate when,
even “draw[ing] all reasonable inferences in favor of the
non-moving party,” there is no “genuine issue of material
fact.” Comite de Jornaleros de Redondo Beach v. City of
Redondo Beach, 657 F.3d 936, 942 (9th Cir. 2011) (citing
Fed. R. Civ. P. 56(a) and Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 250, 255 (1986)).
                  B. Claim Construction
     “Claim terms are generally given their plain and or-
dinary meanings to one of skill in the art when read in
the context of the specification and prosecution history.”
Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362,
1365 (Fed. Cir. 2014) (citing Phillips v. AWH Corp., 415
F.3d 1303, 1315–17 (Fed. Cir. 2005) (en banc)). However,
patentees can act as their own lexicographers if they
“‘clearly set forth a definition of the disputed claim term’
other than its plain and ordinary meaning.” Thorner v.
Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
8          VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



                 1. “Disparate Databases”
     All of the asserted claims of the ’006, ’861 and ’864 pa-
tents contain a limitation calling for “disparate data-
bases.” The district court examined the intrinsic record
and, finding the prosecution history compelling, construed
the phrase to mean databases having: (1) an absence of
compatible keys; and (2) an absence of record ID columns
of similar value; and (3) an absence of record ID columns
of similar format in the schemas or structures that would
otherwise enable linking data. Clarification Order at *5.
     VSi argues that the plain and ordinary meaning of
“disparate databases” is simply “incompatible databases
having different schemas.” It claims that both intrinsic
and extrinsic evidence equates “disparate databases” with
“incompatible databases.” VSi then relies on its expert’s
testimony to show that incompatible databases are simply
those with different schemas. VSi also contends that its
position is consistent with and fully supported by a stipu-
lation it entered into with IBM and Oracle in a prior
litigation involving these same patents, in which the
parties agreed that “disparate databases” meant “incom-
patible databases having different schemas.” VSi addi-
tionally claims that defendants’ own internal marketing
documents support VSi’s proposed construction. Finally,
VSi contends that nothing in the prosecution history
amounts to such a clear disavowal or definition as to
warrant the more narrow construction made by the dis-
trict court.
    The defendants counter with the argument that the
phrase “disparate databases” is of indeterminate scope,
and, thus, has no plain and ordinary meaning. Defend-
ants also take issue with VSi’s argument that defendants’
own internal documents reflect VSi’s proposed construc-
tion and further contend that whatever their internal
documents say, both they and the prior stipulation should
carry little weight. Additionally, defendants argue that
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.         9



the prosecution history evinces a clear intent to define
“disparate databases” in the way the district court con-
strued the term. Finally, TIBCO denies that the phrase
“incompatible databases” is equivalent to “disparate
databases.” TIBCO Resp. Br. at 33.
    Addressing first VSi’s argument that the plain and
ordinary meaning of “disparate databases” is “incompati-
ble databases having different schemas,” we conclude that
while “disparate databases” may be considered “incompat-
ible databases,” the plain and ordinary meaning leaves
open the question of how “disparate” or “incompatible” the
databases may be. VSi points to the Summary of the
Invention, which describes the invention in terms of its
ability to access “a plurality of incompatible source data-
bases.” ’006 patent col.2 ll.38–42 (emphases added). VSi
continues by citing passages of the specification that refer
to incompatible databases as being of different types and
having different data. Id. col.3 ll.1–3, ll.11–16. But
nowhere in the specification is there any description of
what is meant by “disparate databases” in terms of how
disparate or incompatible the databases must be.
    VSi argues in this appeal that its expert, Dr. McLeod,
stated that databases may be incompatible if they merely
have different schemas. The district court did not rely on
this testimony. But, more importantly, Dr. McLeod did
not claim that this was the only way databases could be
disparate. Indeed, at deposition, he conceded that the
meaning of “disparate databases” depends on the “con-
text” and does not have a “consistent use.” J.A. 5655; J.A.
5581; see also Gemalto S.A. v. HTC Corp., 754 F.3d 1364,
1371 (Fed. Cir. 2014) (confirming that a claim term has no
plain and ordinary meaning from the testimony of people
skilled in the art).
    VSi also argues that its construction is supported by
its stipulation with IBM and Oracle, but the fact that a
claim construction was agreed to in the context of a differ-
10         VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



ent litigation is of little relevance or probative value here.
IBM and Oracle’s accused products may have functioned
in a manner for which the precise scope of the “disparate
databases” limitation was immaterial. Moreover, because
defendants “were not parties” to the IBM and Oracle
stipulation, “they are not bound by it.” Fuji Photo Film
Co. v. Int’l Trade Comm’n, 386 F.3d 1095, 1101 (Fed. Cir.
2004).
    Finally, VSi looks to defendants’ marketing materials
as informing the plain and ordinary meaning of the term
“disparate databases.” But that evidence, which again
was not relied on by the district court, is of scant import.
Language used in marketing materials directed to poten-
tial customers can mean something quite different from
the language used in a patent directed to persons skilled
in the art. See Scantibodies Lab., Inc. v. Immutopics, Inc.,
374 F. App’x 968, 971 (Fed. Cir. 2010). Moreover, the
marketing materials referenced by VSi are not contempo-
raneous with the patents-in-suit.
    Because the specification, the stipulation and the ref-
erenced marketing materials leave uncertain the full
scope and meaning of the term “disparate databases,” we
turn next to the prosecution history, which was central to
the district court’s claim construction.
   In responding to a rejection during prosecution, appli-
cant made the following statement:
     The disparate nature of the above databases re-
     fers to an absence of compatible keys or record
     identifier (ID) columns of similar value or format
     in the schemas or structures of the database that
     would otherwise enable linking data within the
     constituent databases. An example of such a
     common key value is a social security number that
     would enable linking or relational databases “join
     operations” on an individual’s personnel data with
     his or her insurance plan. In embodiments of Ap-
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.           11



   plicant’s invention, such a common key value is
   not necessary. This disparate nature extends, for
   example, to the type of database (e.g. Oracle, IBM
   DB2, Microsoft SQL Server or Object Databases)
   and the structure, schema, and nature of the da-
   tabases (i.e. type of data fields in various tables of
   the constituent databases).
’006 patent Prosecution History, Applicant’s Amendments
and Remarks of Oct. 30, 2003, at 19 (emphasis in origi-
nal).
    The district court determined that this statement was
a “clear” and “unmistakable” definition of “disparate
databases.” Initial Order at *5. In its Clarification Or-
der, the district court ruled that this statement limits
disparate databases to ones that have an absence of
compatible keys; and an absence of record ID columns of
similar value; and an absence of record ID columns of
similar format in the schemas.
    On appeal, VSi asserts that the applicant in this
statement was not defining “disparate databases,” and
was instead listing examples of “disparate databases.”
Additionally, VSi claims that the applicant did not rely on
the statement in the prosecution history to distinguish
the prior art. VSi further argues that even were this
statement definitional, the district court misconstrued it:
the prosecution history only meant that two databases
were disparate if they had an absence of compatible keys;
or an absence of record ID columns of similar value; or an
absence of record ID columns of similar format. Finally,
VSi argues that it certainly is not “clear” that the appli-
cant intended to define “disparate databases” in the way
the district court construed it.
    Defendants respond that the above statement was
definitional and the applicant relied on this definition in
distinguishing the prior art. They further argue that the
interpretation of the prosecution history adopted in the
12         VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



district court’s Clarification Order is, in the context of the
prosecution history, the only reasonable one. Finally,
defendants argue that, because “disparate databases” has
no plain and ordinary meaning, the prosecution history
does not need to be clear in order to be limiting.
    We are not persuaded by VSi’s argument. First, we
disagree with VSi’s position that the statement in the
prosecution history was not definitional. There, applicant
stated that the disparate nature “refers to” an absence of
common keys or record ID columns of similar value or
format. An applicant’s use of the phrase “refers to” gen-
erally indicates an intention to define a term. See, e.g., In
re Imes, 778 F.3d 1250, 1252–53 (Fed. Cir. 2015); Mi-
crosoft Corp. v. Int’l Trade Comm’n, 731 F.3d 1354, 1360
(Fed. Cir. 2013); Linear Tech. Corp. v. Int’l Trade
Comm’n, 566 F.3d 1049, 1054 (Fed. Cir. 2009). Abbott
Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1354–
55 (Fed. Cir. 2003), cited by VSi, is the exception that
proves the rule. In Abbott, the specification provided “two
alternative definitions” for a claim term, both of which
were introduced by the word “refers.” 334 F.3d at 1354.
This court thus found that the specification could not have
meant for both to be binding and, therefore, lacked the
clarity necessary to overcome the plain and ordinary
meaning of the term. See id. Here, by contrast, the
prosecution history only provides one definition and this
meaning does not conflict with the plain and ordinary
meaning of the term.
    Additionally, the prosecution history confirms that
the applicant was defining “disparate databases” when he
said “[t]he disparate nature of the above databases refers
to an absence of compatible keys or record identifier (ID)
columns of similar value or format . . .” as he later relied
on this definition in distinguishing the prior art. The
Examiner originally rejected the pending claims over U.S.
Patent No. 6,516,324 (“Jones”). In response, the applicant
amended all the independent claims to recite “disparate
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.        13



databases.” ’006 patent Prosecution History, Amend-
ments and Remarks of Oct. 30, 2003, at 2–17. In the
associated remarks, the applicant set out three sections:
“A. Applicant’s Invention”; “B. Jones et al.”; and “C.
Applicant’s Claimed Invention Is Not Obvious Over Jones
et al.” Id. at 19–21. In section A, the applicant noted that
the “disparate nature” of the claimed invention “refers to
an absence of compatible keys” etc. Id. at 19. He further
noted that “[i]n embodiments of Applicant’s invention,
such a common key value is not necessary.” Id. (emphasis
in original). Then, in section B, he explained that Jones
“rel[ied] on common keys.” Id. at 20. Finally, in section
C, the applicant explained that Jones “does not disclose,
teach, or suggest embodiments of Applicant’s invention”
because Jones does not disclose “accessing a plurality of
disparate digital databases (see A and B above).” Id. at
21. Taken in its entirety, the prosecution history is clear
that the applicant was relying on the provided definition
of “disparate databases,” which required an absence of,
inter alia, common keys, and distinguished his invention
over Jones based on Jones’s reliance on common keys.
Though it is true that the applicant distinguished Jones
on other grounds as well, this does not prevent us from
using this particular distinction over Jones to construe
the phrase “disparate databases.” See Andersen Corp. v.
Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir.
2007). Thus, we conclude that the district court properly
found that the statement in the prosecution history was
definitional.
    We also reject VSi’s claim that the district court mis-
construed the prosecution history. The statement in the
prosecution history that “disparate databases” refers to
an absence of compatible keys or record ID columns of
similar value or format can, theoretically, be interpreted
in two ways: that the absence of any one of these charac-
teristics makes databases disparate (the “disjunctive
interpretation”) or that only the absence of all of these
14        VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



characteristics makes them disparate (the “conjunctive
interpretation”). We conclude that the manner in which
the applicant distinguished Jones dictates the conjunctive
interpretation. After noting that “[i]n embodiments of
Applicant’s invention . . . a common key value is not
necessary,” the applicant explained that the databases
accessed by Jones relied on common keys. The applicant
said nothing about the databases in Jones lacking record
ID columns of similar value or format. The context indi-
cates that the applicant was distinguishing Jones based
on the fact that Jones utilized common keys, whereas the
claimed invention does not. This indicates that the pres-
ence of common keys, alone, sufficed to make the data-
bases in Jones distinguishable from the claimed
“disparate databases.” This is only consistent with the
conjunctive interpretation. According to the disjunctive
interpretation, the presence of common keys, alone, would
not necessarily preclude two databases from being dis-
parate: they could still be disparate so long as they lacked
record ID columns of similar value or format.
    The conjunctive interpretation is also consistent with
proper grammar, where the phrase “‘not A, B, or C’ means
‘not A, not B, and not c.’” A. Scalia &. B. Garner, Reading
Law: The Interpretation of Legal Texts 119 (2012) (citing
DeMorgan’s theorem). Thus, proper grammar supports
the district court’s conclusion that disparate databases—
which, as explained in the prosecution history, means an
“absence of [A] compatible keys or [B] record identifier
(ID) columns of similar value or [C] format”—should be
understood as [A] an absence of compatible keys; and [B]
an absence of record ID columns of similar value; and [C]
an absence of record ID columns of similar format.
     Taken on its own, the applicant’s statement that
“[t]his disparate nature extends, for example, to the type
of database (e.g. Oracle, IBM DB2, Microsoft SQL Server
or Object Databases) and the structure, schema, and
nature of the database . . . ” might be read to suggest that
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.         15



two databases can be disparate based solely on the vendor
of the database. But those are only cited as examples and
follow the preceding sentences, which make abundantly
clear that it is the absence of compatible keys etc., not any
particular difference among the databases of different
manufacturers, that is essential. Such a reading also
conflicts with the applicant’s statement during reexami-
nation that “the type of protocol used to connect to one or
more databases does not imply anything about the dis-
parateness of those databases.” Reexam Control No.
95/000,698, Patent Owner’s Response of Feb. 11, 2013, at
32. Finally, it conflicts with the testimony of Dr. Cárde-
nas, VSi’s expert, that the “key point” of the invention is
joining disparate databases that are not only disparate
“because the manufacturers are different,” but also be-
cause the data values and data type are different. J.A.
2970.
    For these reasons, we affirm the district court’s con-
struction of “disparate databases” and its entry of the
stipulated judgment of non-infringement predicated
thereon.
     2. “Incompatible Databases of Different Types”
     The term “incompatible databases of different types”
is found only in the claims of the ’268 patent, which were
asserted only against MicroStrategy. The district court
ruled that VSi was estopped from arguing that “incompat-
ible databases of different types” should be construed
differently than “disparate databases” because it had
prevailed in the Initial Order in its argument that the two
terms should be construed to be the same. Clarification
Order at *1 n.3.
    VSi argues that the requirements for judicial estoppel
are not met here. MicroStrategy disputes this, but argues
that, in any event, the intrinsic evidence shows that
“disparate databases” has the same meaning as “incom-
patible databases.” MicroStrategy further claims that VSi
16        VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



waived any argument that “incompatible databases” is
not synonymous with “disparate databases” because VSi
never articulated a proposed construction of “incompatible
databases” that might differ from any construction of
“disparate databases.”
    We find no basis to disturb the district court’s ruling.
At the district court, VSi consistently argued that “dis-
parate databases” meant “incompatible databases.” It
never offered an independent construction of “incompati-
ble” and it contended that “incompatible databases”
needed no construction, despite the fact that it left unre-
solved the same question presented by the disparate
database limitation: how incompatible? The record is
devoid of any suggestion by VSi that if the district court
ruled that the “disparate database” term was limited by
the prosecution history’s definition, the term “incompati-
ble databases” is not similarly limited. Even on appeal,
VSi admits that “the specification, at times, uses ‘incom-
patible’ as a substitute for ‘disparate.’” Reply Br. at 23;
see also id. at 21 n.6 (noting that its evidence “applies
equally to all parties’ constructions” of “disparate data-
bases”). Accordingly, while more properly characterized
as waiver, we affirm the district court’s treatment of
“incompatible databases” as being subject to the same
construction as “disparate databases.”
           C. Summary Judgment of Invalidity
                  1. Written Description
    The district court granted summary judgment that
the claims of the ’864 patent that VSi asserted against
TIBCO were invalid for lack of written description sup-
port. TIBCO at 27. It held that there was no question of
material fact that the written description would not
convey to one of skill in the art that VSi had possession of
a means of accessing “disparate databases” at the time of
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.          17



filing. 3 Though VSi’s expert, Dr. Cárdenas, opined that
the specification contains written description support, the
district court dismissed his opinion as “conclusory.” Id. at
26.
    VSi contends that a genuine issue of material fact
does exist. It notes that both the specification and origi-
nally filed claim 11 describe accessing “incompatible
databases,” which, VSi claims, is equivalent to disparate
databases. Relying on its expert, Dr. Cárdenas, VSi
further claims that the specification teaches how to im-
plement a system that can access disparate databases.
TIBCO responds that the specification describes a result,
but does not show how to achieve the result. Accordingly,
TIBCO claims, the specification does not show that the
inventor had possession of the ability to access “disparate
databases.” TIBCO further claims that Figures 1–22 in
the ’006 patent are screenshots from software that the
inventor admitted could not access data from disparate
databases. Finally, TIBCO claims that the district court




    3    VSi also notes that, in the district court’s separate
discussion of enablement, it stated that “VSi has raised at
least a material question of fact as to whether the written
description of the ‘disparate databases’ limitations are
sufficient.” TIBCO at 27 (internal brackets omitted). We
do not ascribe any weight to this statement and consider
it a scrivener’s error. It is inconsistent with the thrust of
the district court’s discussion of written description. See
id. at 25–27; id. at 25 (“There is no question of material
fact as to whether the written description of the databases
features would reasonably convey to those skilled in the
art that [the applicant] had possession of that aspect as of
the filing date of the provisional application. TIBCO’s
motion for summary judgment on this issue must, there-
fore, be granted.”).
18        VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



properly dismissed the testimony of Dr. Cárdenas as
conclusory.
    A specification must “contain a written description of
the invention.” 35 U.S.C. § 112 ¶1 (2006). 4 The test for
the sufficiency of the written description “is whether the
disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing
date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). The written de-
scription requirement is not met if the specification mere-
ly describes a “desired result.” Id. at 1349. “Whether a
patent claim is supported by an adequate written descrip-
tion is a question of fact.” AbbVie Deutschland GmbH &
Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1297
(Fed. Cir. 2014) (citing Ariad, 598 F.3d at 1355). A party
must prove invalidity for lack of written description by
clear and convincing evidence. See Laryngeal Mask Co.
Ltd. v. Ambu, 618 F.3d 1367, 1373–74 (Fed. Cir. 2010).
     We conclude that, drawing all reasonable inferences
in favor of VSi as the non-movant, there are genuine
issues of material fact regarding whether the specification
shows possession of the claimed invention. The specifica-
tion of the patents-in-suit describes dynamically “access-
ing a plurality of incompatible source databases,” ’006
patent col.2 ll.40–42 (emphasis added), and in originally
filed claim 11 recited accessing “databases [that] are
incompatible.” The fact that these portions of the specifi-
cation do not speak in haec verba of accessing “disparate


     4   Paragraph 1 of 35 U.S.C. § 112 was replaced with
newly designated § 112(a) when § 4(c) of the America
Invents Act, Pub. L. No. 112-29 (“AIA”), took effect on
September 16, 2012. Because the applications resulting
in the ’864 patent were filed before that date, this opinion
refers to the pre-AIA version of § 112.
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.        19



databases” does not eliminate as a genuine issue of mate-
rial fact the existence of at least some discussion, and,
therefore, possession, of the accessing of disparate data-
bases, as claimed. See Koito Mfg. Co., Ltd. v. Turn-Key-
Tech, LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004).
    The more telling question is whether the specification
shows possession by the inventor of how accessing dispar-
ate databases is achieved. The fact that the inventor
admitted that the screenshots shown in Figures 1–22 of
the ’006 patent were screenshots from software that could
not access “disparate databases simultaneously” does not
answer the question because the asserted claims do not
require that the databases be accessed simultaneously.
Contrary to the district court, however, we do find the
testimony of Dr. Cárdenas to at least raise a genuine
issue of material fact on whether the specification shows
how to achieve the functionality of accessing disparate
databases. Dr. Cárdenas opined that the specification
explains that serialized files can be used to correlate
parameters from two databases. See J.A. 4246–56 (dis-
cussing ’006 patent col.7 l.41–col.8 l.25). He further
opined that those correlation parameters can be used to
identify data in one database that is correlated to data in
another. See id. According to Dr. Cárdenas, the correlat-
ed data could be displayed together. Id. He thus conclud-
ed that the specification shows that the patentee had
possession of the claimed inventions. See id. While both
the district court and TIBCO question the sufficiency of
Dr. Cárdenas’s opinion, we find that his opinion is more
than merely conclusory, as it points to specific portions of
the ’006 patent as showing how to access disparate data-
bases. Dr. Cárdenas’s opinion, which was not challenged
by any contrary expert testimony, at least raises a genu-
ine issue of material fact regarding whether the patents-
in-suit disclose how to access disparate databases. Cf.
Provenz v. Miller, 102 F.3d 1478, 1490 (9th Cir. 1996)
(“‘As a general rule, summary judgment is inappropriate
20         VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



where an expert’s testimony supports the non-moving
party’s case.’” (quoting cases)). Accordingly, we reverse
the district court’s determination of summary judgment
that the claims asserted against TIBCO are invalid for
lack of written description support.
                      2. Enablement
     The district court ruled that the patents-in-suit do not
enable accessing “disparate databases.” MicroStrategy at
19. 5 The district court relied on the following facts: at the
time of filing the inventor did not have a working example
of the “disparate databases” feature; it took the inventor
three calendar years from the time of filing to build a
functioning embodiment of the invention; the specification
shows screenshots from the Jasmine software, and the
inventor was unable to practice the claimed invention on
that software; the specification lacks a working example;
the problem solved by the patent had confounded inven-
tors for 20 years; others had failed to practice the alleged
invention; and the claim scope was broad. Id. at 15–19.
Of all the factors, the district court focused most on the
time it took the inventor to reduce the invention to prac-
tice. See, e.g., id. at 16 (“This extended period of experi-
mentation weighs heavily in favor of a finding of
invalidity.”). The district court did acknowledge that the
relative skill in the art and the predictability of the art
were high, id. at 18, but found that other factors provided
clear and convincing evidence that the claims were not
enabled.
    VSi argues that many of the district court’s factual
findings are genuinely disputed. Defendants, on the other
hand, contend that the district court’s findings were
either conceded or are beyond reasonable dispute.



     5 For the sake of brevity, parallel citations to the
TIBCO opinion are omitted.
VASUDEVAN SOFTWARE, INC.     v. MICROSTRATEGY, INC.           21



    A specification must “enable” a person of skill in the
art to make and use the claimed invention. 35 U.S.C.
§ 112 ¶1 (2006). Enablement is a legal question based on
underlying factual determinations.            See Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA,
Inc., 699 F.3d 1340, 1355 (Fed. Cir. 2012). A claim is
sufficiently enabled even if “a considerable amount of
experimentation” is necessary, so long as the experimen-
tation “is merely routine, or if the specification in question
provides a reasonable amount of guidance with respect to
the direction in which the experimentation should pro-
ceed.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
On the other hand, if “undue experimentation” is needed,
the claims are invalid. Id. In determining whether
experimentation is undue, Wands lists a number of fac-
tors to consider: “They include (1) the quantity of experi-
mentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of work-
ing examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7)
the predictability or unpredictability of the art, and (8)
the breadth of the claims.” Id. (citing Ex parte Forman,
230 U.S.P.Q. 546, 547 (B.P.A.I. 1986)). A party must
prove invalidity for lack of enablement by clear and
convincing evidence. See MagSil Corp. v. Hitachi Global
Storage Techs., Inc., 687 F.3d 1377, 1380 (Fed. Cir. 2012).
     We conclude that there are genuine issues of material
fact relating to several of the Wands factors, which, taken
together, preclude summary judgment of non-enablement.
First, we find that the effort it took the inventor to reduce
the invention to practice does not conclusively show a lack
of enablement. The inventor testified that he developed a
“commercial-grade software product.” J.A. 2559. “Title
35 does not require that a patent disclosure enable one of
ordinary skill in the art to make and use a perfected,
commercially viable embodiment,” CFMT, Inc. v. YieldUp
Int’l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003), so the
22        VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.



time it took to make a commercial-grade embodiment is
not, itself, determinative of non-enablement. VSi claims
that the inventor could have developed a functional
prototype with far less experimentation. This is but-
tressed by Dr. Cárdenas’ opinion that the inventor’s one
man-year experimentation was not undue. And, as with
written description, neither defendant provided contrary
expert testimony.
    Second, drawing all reasonable inferences in favor of
VSi, we find that there is a genuine issue of material fact
whether the ’006 patent specification provides a reasona-
ble amount of guidance. Crediting Dr. Cárdenas’ testi-
mony, discussed above at 19–20, the ’006 specification
shows how to access disparate databases using correlation
parameters. Nonetheless, the district court found that
the ’006 patent “teaches away” from a working embodi-
ment because the specification describes a preferred
database as “an object database, such as Jasmine,” ’006
patent col.6 l.32, but the inventor “could not implement
the invention using that particular database.”           Mi-
croStrategy at 17. The inventor, however, explained that
his problems getting the claimed functionality to work
stemmed from a different product, Jasmine ii, which is
never mentioned in the specification. Drawing all rea-
sonable inferences in favor of VSi, there is a genuine issue
of material fact whether the Jasmine software could be
used to make a working embodiment.
    The district court addressed other Wands factors as
well, finding some in favor of enablement and some
against, but concluding that overall the Wands factors
weigh heavily in favor of invalidity. While the question
may be close, the existence of at least the above-noted
genuine issues of material facts is sufficient to defeat
summary judgment of invalidity. Accordingly, we reverse
the district court’s grants of summary judgment that the
asserted claims are invalid for lack of enablement.
VASUDEVAN SOFTWARE, INC.   v. MICROSTRATEGY, INC.   23



                    III. CONCLUSION
    For the foregoing reasons, we affirm the district
court’s claim construction and judgment of non-
infringement but reverse the district court’s grants of
summary judgments of invalidity and remand.
 AFFIRMED-IN-PART, REVERSED-IN-PART AND
               REMANDED
                       IV. COSTS
   Each party shall bear its own costs.
