Round Rock Research, LLC v. Sandisk Corporation, C.A. No. 12-569-SLR, February 4, 2015.

Robinson, J. Defendant’s motion for partial summary judgment of non-infringement of the ‘719 patent is denied.  Plaintiff’s motion for summary judgment of no anticipation with respect to disputed claims of the ‘719 patent with respect to certain prior art is granted.  Defendant’s motion for summary judgment that disputed claims of the ‘719 patent is anticipated by a patent application is granted.  Plaintiff’s motion for summary judgment that claim 31 of the ‘719 patent is not anticipated is granted.

Of five patents at issue in this case, two are at issue here due to staggered schedules for the other 3 patents. The disputed technology relates to methods and apparatuses for managing data storage in hybrid memory devices.  Summary judgment of non-infringement is inappropriate because the experts dispute whether the accused products use the number of actual or predicted operations to determine where data is stored.  With respect to anticipation, a missing portion of a claim limitation cannot be incorporated by reference without detailed particularity as to what portion is incorporated.  Therefore plaintiff’s motion of no anticipation is granted with respect to certain prior art.  Defendant’s motion for summary judgment of anticipation of five out of 6 disputed claims based on a patent application is granted.  The parties’ dispute centered on whether that reference predated the priority date.  The court found that plaintiff did not adequately disclose its theory of constructive reduction to practice until filing the instant motion.  The declaration with corroborating evidence of diligence is stricken as untimely and the prior art qualifies as a 102(e) reference.