Error: Bad annotation destination
 United States Court of Appeals for the Federal Circuit

                                         04-1501


                            SPACE SYSTEMS/LORAL, INC.,

                                                       Plaintiff-Appellant,

                                            v.


                        LOCKHEED MARTIN CORPORATION,

                                                       Defendant-Appellee.


        Gregory S. Dovel, Dovel & Luner, LLP, of Santa Monica, California, argued for
plaintiff-appellant. With him on the brief was Sean A. Luner. Of counsel on the brief
was David E. Rosen, Murphy Rosen & Cohen, LLP, of Santa Monica, California.

      Edward V. Filardi, Skadden, Arps, Slate, Meagher & Flom LLP, of New York,
New York, argued for defendant-appellee. With him on the brief were Robert B. Smith
and Douglas R. Nemec. Of counsel was P. Anthony Sammi.

Appealed from: United States District Court for the Northern District of California

Judge Susan Illston
United States Court of Appeals for the Federal Circuit


                                          04-1501



                            SPACE SYSTEMS/LORAL, INC.,

                                                         Plaintiff-Appellant,

                                             v.

                         LOCKHEED MARTIN CORPORATION,

                                                         Defendant-Appellee.



                            __________________________

                            DECIDED: April 20, 2005
                            __________________________




Before MICHEL, Chief Judge, NEWMAN and GAJARSA, Circuit Judges.

NEWMAN, Circuit Judge.




       Space Systems/Loral, Inc. ("Loral") appeals the decision of the United States District

Court for the Northern District of California,1 holding that claim 1 of United States Patent



      1       Space Systems/Loral, Inc. v. Lockheed Martin Corp., No. C-96-3418 SI (N.D.
Cal. Mar. 19, 2003). On remand, see Space Systems/Loral, Inc. v. Lockheed Martin Corp.,
271 F.3d 1076, 1077-78 (Fed. Cir. 2001).



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No. 4,537,375 ("the '375 patent") is invalid for violating the written description requirement

of 35 U.S.C. §112. We reverse the judgment of invalidity.

                                          OPINION

       For the grant of summary judgment of invalidity on written description grounds,

failure of compliance must be shown as a matter of law, or as a question of ultimate fact

even when any disputed facts and factual inferences are resolved against the movant. See

Fed. R. Civ. P. 56(c) ("The judgment shall be rendered forthwith if...there is no genuine

issue of material fact and...the moving party is entitled to judgment as a matter of law.")

       The written description requirement derives from 35 U.S.C. §112 ¶1, which states:

       The specification shall contain a written description of the invention, and of
       the manner and process of making and using it, in such full, clear, concise,
       and exact terms as to enable any person skilled in the art to which it pertains,
       or with which it is most nearly connected, to make and use the same, and
       shall set forth the best mode contemplated by the inventor of carrying out his
       invention.

The written description is the technologic disclosure of the invention. It serves the

fundamental patent purpose of making known what has been invented, including any

variations and alternatives contemplated by the inventor. The descriptive text shows that

the inventor possessed the technologic information for which exclusivity is claimed, and

discloses the invention to the public. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320,

1323 (Fed. Cir. 2000); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).

The written description, although it need not include information that is already known and

available to the experienced public, must be in sufficient detail to satisfy the statutory

requirements, employing "[w]ords, structures, figures, diagrams, formulas, etc., that fully set




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forth the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572

(Fed. Cir. 1997).

       Loral is the owner of the '375 patent for an improved method of maintaining the

orientation and attitude of a satellite in space. Satellites in orbit around the earth tend to be

pulled out of their proper position by the gravitational effects of the sun, earth, and moon.

To maintain the requisite position the satellite conducts "station-keeping maneuvers" by

firing its thrusters, based upon measurements of its position. However, the station-keeping

maneuvers may over-correct or may introduce new errors in position and orientation, and

the general procedure has been to conduct a second firing to correct the errors of the first

firing. These procedures require fuel, the on-board supply of which is limited, and limits the

useful life of the satellite. The '375 patent is directed to a method of reducing the fuel

consumption during station-keeping, by enhancing the efficiency of the corrective

procedure.

       According to the '375 patent, the satellite first estimates the probable correction

based on historical data from prior station-keeping maneuvers, and conducts a first firing of

the thrusters based on the estimated correction. This is called the "prebias" step of the

modulating response. After the prebias firing, the satellite measures the remaining actual

error in its position, adds the actual error to the historical error, and conducts a second

firing. This procedure overall uses less fuel than the prior method whereby a first firing was

calculated to attempt full correction, followed by a second firing. The fuel saving that is

achieved extends the life of the satellite. This two-step maneuver is set forth in claim 1 as

follows:




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       1.      For use in a spacecraft during a change in velocity maneuver, the
       spacecraft employing a plurality of thrusters, at least a first thruster and a
       second thruster being disposed to develop mutually counteractive moment
       arms of thrust relative to at least one axis through a center of mass of the
       spacecraft, said first thruster and said second thruster being capable of
       developing unequal moment arms of force, a method for counteracting
       disturbance transients comprising the steps of:
               storing prior to said maneuver a value representative of an estimated
       disturbance torque; thereafter
               modulating in response to said stored value one of said first and
       second thrusters during said maneuver to counteract an actual disturbance
       torque a sufficient amount to compensate for said actual disturbance torque
       in order to minimize a net position error without initially detecting said net
       position error; thereafter
               detecting said net position error, said net position error being indicative
       of a difference between said estimated disturbance torque and said actual
       disturbance torque with respect to said axis; and thereafter modulating in
       response to a sum of said stored value and said net position error one of said
       first and second thrusters during said maneuver to counteract said actual
       disturbance torque to further minimize said net position error.

       Loral brought suit against Lockheed for infringement of claim 1. Lockheed moved

for summary judgment that the patent is invalid for failure to comply with the written

description requirement of 35 U.S.C. §112, arguing that the specification does not

adequately describe the second step in which the satellite calculates the position after the

first firing and performs the second firing of the thrusters. The district court adopted

Lockheed's position. We conclude that this was error. Indeed, even Lockheed's expert

conceded that the second step was shown in the specification.

       The specification describes that preparatory to correction the satellite first measures

its orientation with a roll earth sensor and a pitch earth sensor. '375 Patent, col. 4, lines 49-

53. The roll and pitch sensors provide position and rate information. Id. This information is

passed through a lowpass filter to minimize noise in the signal. Col. 5, lines 32-36. The




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filtered position and rate information are summed and passed through compensation

networks which compensate for the delay between the sensing of the error

and the correction of the error. Col. 5, lines 45-55. This information is then filtered to

determine if it falls outside of acceptable limits of position error, col. 5, lines 55-58, and then

is amplified. Col. 5, lines 62-65. This is the actual error after it has been filtered. The roll

sensor information is also fed through a roll error detector, Item 108 of Figure 2A, which is

transformed through bias memory into prebias or historical error. Col. 6, lines 4-13, 28-30.

       The actual error information and the prebias or historical error information are both

fed into the summer, Item 96 of Figure 2B, where they are added together or summed.

Col. 5, lines 61-64; col. 6, lines 31-35. These are the two outputs of the error detection

system used to modulate the thrusters; the prebias information is fed directly into the pulse-

width, pulse frequency (PWPF) modulating devices, col. 6, lines 30-35, and the sum of the

actual and historical error from Item 96 is also fed into the PWPF modulating devices. Id.

Thus the thrusters are modulated by both the historical (prebias) information and by the

sum of the actual and historical information.

       It is not disputed that the first modulating step is described. In addition, the experts

for both sides testified that Figure 2B describes the second modulating step. Loral's expert,

Dr. Kaplan, testified that

       the control loop diagrams of Figures 2A and 2B of the '375 Patent would
       make it clear to one of ordinary skill that the disclosed invention incorporates
       two modulating steps, one with the prebias value but without net position
       error as an input, and a second where detected net position error would be
       fed through the feedback network for summing with the prebias value.

Lockheed's expert, Dr. Alfriend, when asked to identify where the second step was

depicted on Figure 2A and 2B, answered over his counsel's objection,


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       Well, its -- I sort of look at it as the whole system, but if you look at summer
       96 . . . that's where the stored value and the position error are being summed
       to go into the PWPF which then sends the commands to the thrusters.

The deposition shows that Dr. Alfriend was referring to Item 96 ("summer 96") of Figure 2B.

Item 96 takes the sum of Item 134, the historical error or pre-bias command, col. 6, lines

31-35, and Item 90, at col. 5, lines 61-64, which represents the actual error of the satellite

position, Item 36, col. 4, lines 49-53, after it has been filtered at Items 48, 72, 78, and 84.

Col. 5, lines 33, 45-60; Figures 2A, 2B (mapping sequence).

       Lockheed criticizes Dr. Kaplan's testimony as "conclusory." However, Dr. Kaplan not

only gave his expert opinion, but also was quite specific in pointing to the "control loop

diagrams of Figures 2A and 2B" as showing two modulating steps. He explained that only

after the firing maneuver starts does net position error exist. Dr. Kaplan explained in

laymen's terms that net position error is summed with the prebias error and then taken into

account in the modulation of the thrusters for firing. He pointed to the control loop

diagrams, and explained that the actual error is added to the historical error for modulation

of thruster firing. See col. 5, lines 61-64; col. 6, lines 31-35; Figure 2B (demonstrating

summation of actual and historical error at item 96).

       Dr. Alfriend in cross-examination had admitted that a person of ordinary skill in this

field of science would locate the second step at Item 96 on Figure 2B. As discussed supra,

Figure 2B graphically shows the summation of actual and historical error at Item 96, as is

described in the patent. Item 96 represents the sum of the historical error or prebias

command of Item 134, col. 6, lines 31-35, and the actual error of Item 36, col. 4, lines 49-

53, upon filtration, col. 5, lines 33, 45-60, into Item 90. Col. 5, lines 61-64; col. 6, lines 31-

35.


04-1501                                         6
       Lockheed objects to Loral's use of Dr. Alfriend's deposition to support Loral's

argument. First, Lockheed points out that it objected to the question that asked Dr. Alfriend

for the location in the specification of the second modulating step. However, Dr. Alfriend in

his answer not only admitted that a second step was shown but identified it as Item 96.

Second, Lockheed objects that Loral did not offer this part of the Alfriend deposition into

evidence on Loral's behalf until Loral's motion for reconsideration, and that it was an

improper new issue. Loral responds that the district court specifically allowed Loral to refer

to the deposition, and that the entire deposition was already before the court. This was a

matter of district court discretion, and cannot be faulted.

       Lockheed further argues that the second modulating step of claim 1 is not "inherent"

in the written description because the specification does not state that the second step is

necessarily used. To the extent that Lockheed is arguing that the second step need not

always be performed, Loral agrees that there may be occasions when the second step

need not be performed because the prebias correction was adequate and no actual error

remained after the first firing. According to the '375 patent the actual error and historical

error are compared after the thrusters have been fired in the prebias correction; it is only

after this comparison that the second modulating step is employed. This does not diminish

the descriptive content of the specification. The evidence established, on undisputed facts,

that the specification describes the two modulating steps of the claim. The holding of

invalidity on this ground is reversed, and the case is remanded for further proceedings.

                              REVERSED AND REMANDED




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