Supreme Court's Decision on Indefiniteness Constitutes Basis to Reconsider Prior Claim Construction Order But Does Not Result in Change of the Claim Construction

by Jeffer Mangels Butler & Mitchell LLP
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In this patent infringement action, Defendant Lighthouse Photonics Corporation's ("Lighthouse") moved to reconsider the Court's Claim Construction Order. Lighthouse argued three reasons for reconsideration: "first, Newport withheld discovery regarding its relevant prior art patents; second, a recent Supreme Court decision constitutes an intervening change in the law; and third, the Court adopted a construction that had not been advanced by either party until the reply briefing."

The district court, turning to the first basis for the motion to reconsider, stated: "There has been no shortage of sniping and finger-pointing in this case, and the briefing on this Motion is no exception. The parties vigorously dispute whether Newport withheld discovery regarding its prior art patents: No. 4,756,003 ("'003 Patent") and No. 5,410,559 ("'559 Patent"). The Court finds no need to wade into the quagmire over who withheld what, because it exercises its "inherent jurisdiction to modify, alter, or revoke" interlocutory decisions. See Martin, 226 F.3d at 1048-49. Specifically, the Court finds that the presentation of two related patents, which were allegedly withheld by Newport, constitutes good cause to reconsider the May 7, 2014 claim construction order."

The district court also found that the recent Supreme Court decision in Nautilus was a basis for reconsideration. "The Court also finds that the Supreme Court's recent decision in Nautilus, Inc. v. Biosig Instruments, Inc., --- U.S. ---, 134 S. Ct. 2120 (2014) is a basis for reconsideration. Although the case was about invalidity, not claim construction, it bears on the May 7, 2014 order insofar as claims should be construed, if possible, to avoid invalidity. See Tate Access Floors v. Interface Architectural Res., 279 F.3d 1357, 1367 (Fed. Cir. 2002)."

The district court disagreed with the third basis for the request for reconsideration, stating that there was no support for such a position. "The Court disagrees, however, that its partial adoption of Newport's claim construction is even arguably a basis for reconsideration. First, the Court is unaware of-- and the parties have not pointed to--any authority that commands courts to employ an all-or-nothing approach to adopting proposed claim constructions. Rather, the Court applied the principles of claim construction to adopt Newport's arguments in part and Lighthouse's arguments in part. Second, as Lighthouse admits, Newport actually proposed the adopted claim construction in its final reply brief. See Pl.'s Reply (Dkt. 510) at 14. Third, at the April 29, 2014 hearing, the Court distributed a tentative ruling. See Minutes, April 29, 2014 (Dkt. 520) ("Tentative Ruling issued and distributed to counsel."). The relevant portion of the tentative ruling is almost exactly the same as the Court's final ruling. Tentative ruling at 7 ("[T]he Court construes the claim term 'plurality of axial modes,' contained in the '749 and '720 Patents, as meaning: 'five or more axial modes (longitudinal modes which satisfy the standing wave boundary conditions of the laser cavity).'"). In other words, Lighthouse cannot now argue that it is entitled to reconsideration merely because it failed to present its arguments earlier."

The district court then concluded that the two withheld patents had not impacted the court's decision on claim construction because the constituted extrinsic evidence. "Like Andersen, the '559 and '298 Patents were filed by the same inventor on the same day. However, unlike Andersen, the Court cannot rely on the prosecution history and the relevant portions of the specifications are not "identical." See id. In light of the disanalogy between this case and Andersen, along with the well-established guidance that extrinsic evidence has only limited utility in claim construction, Phillips v. AWH Corp., 415 F.3d 1303, 1317-19 (Fed. Cir. 2005) (en banc), the Court finds that the '559 Patent's definition of "pump beam diameter in the crystal" does not alter the '298 Patent's definition of the same term."

Turning to the issue raised by the Nautilus decision, the district court noted that "Lighthouse argues that Newport's claim is deliberately vague because it 'us[ed] words like 'on the order of' to avoid providing a clear numerical boundary.' Mot. at 17. In other words, Lighthouse appears to argue that Nautilus overruled prior Federal Circuit precedent that the use of 'descriptive terms commonly used in patent claims to avoid strict numerical boundar[ies]' does not render claims 'so unclear such that there is no means by which to ascertain the claim scope.' Ecolab, Inc. v. Environchem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001). Based on the arguments thus far presented, the Court is not convinced that Nautilus had the effect that Lighthouse proposes."

But the district court found that this assertion was insufficient. "Aside from this assertion, Lighthouse presents very little evidence that, as construed, the patent's claims would not 'inform those skilled in the art about the scope of the invention with reasonable certainty.' See Nautilus, 134 S. Ct. at 2129. Surely, such arguments will be fully briefed and presented at summary judgment. But, for now, the Court finds that intervening Supreme Court authority does not alter the Court's May 7, 2014 claim construction order."

Accordingly, the district court reconsidered its claim construction order but ultimately found neither the new evidence nor the Supreme Court's intervening decision changed the outcome of the claim construction order.

Newport Corporation v. Lighthouse Photonics, Inc., Case No. SACV 12-0719-DOC (JPRx) (C.D. Cal. July 2, 2014)

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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