Lotes Co, LTD v. Hon Hai Precision Industry Co, Ltd et al
Filing
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ORDER RE 363 MOTION TO STRIKE PORTIONS OF VIJAY GUPTA'S EXPERT REPORTS by Judge William Alsup. (whalc2S, COURT STAFF) (Filed on 11/11/2017)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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LOTES CO., LTD.,
Plaintiff,
For the Northern District of California
United States District Court
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No. C 11-01036 WHA
v.
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Defendants.
ORDER RE MOTION TO
STRIKE PORTIONS OF VIJAY
GUPTA’S EXPERT REPORTS
HON HAI PRECISION INDUSTRY CO.,
LTD., and FOXCONN ELECTRONICS,
INC.,
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/
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INTRODUCTION
In this action for declaratory judgment of patent noninfringement, the patent owners
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move to strike portions of plaintiff’s expert reports as untimely and in violation of our Patent
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Local Rules. The motion is GRANTED IN PART and DENIED IN PART.
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STATEMENT
The factual and procedural background of this action has been described in prior orders
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(Dkt. Nos. 226, 244) and need not be repeated here. By this motion, patent owners Hon Hai
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Precision Industry Co., Ltd., and Foxconn Electronics, Inc., seek to strike portions of the expert
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reports of Dr. Vijay Gupta opining that (1) U.S. Patent No. 6,135,791 (“the ’791 patent”) is
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invalid due to non-enablement, (2) U.S. Patent No. 6,905,353 (“the ’353 patent”) is invalid due
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to indefiniteness, and (3) plaintiff Lotes Co., Ltd., does not infringe U.S. Patent No. 6,908,316
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(“the ’316 patent). This order summarizes only background relevant to this motion.
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The ’791 patent discloses “[a] method for achieving uniform expansion of a dielectric
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plate made by injection molding” by placing rhombic core pins at specific positions inside the
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mold to guide the flow of plasticized dielectric material during the injection-molding process,
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such that the resulting “properly oriented molecules of the dielectric material and the rhombic
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holes reduce the difference between thermal expansion coefficients in longitudinal and lateral
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directions of the plate.” Claim 1 of the ’791 patent encompasses a pattern of holes in the plate
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that has “been determined empirically to reduce, both by arrangement of said plurality of holes
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in the finished base plate and by promotion of said regular arrangement of molecules during the
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injection molding process, a difference between thermal expansion coefficients of the base plate
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For the Northern District of California
United States District Court
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in first and second directions substantially normal to each other” (Dkt. No. 248-10).
In its invalidity contentions Lotes argued, among other things, that “[a] person of
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ordinary skill in the art would not be able to practice the above claim limitation without undue
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experimentation” because “the specification . . . fails to enable any patterns of holes beyond the
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particular pattern of holes shown in Figures 1 and 2 of the patent,” which “discloses only a
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starting point for further iterative research and is silent as to other patterns of holes that might
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achieve the claimed reduction” of the difference between thermal expansion coefficients (Dkt.
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No. 363-2 at 30–31). In his opening report, Dr. Gupta opined that the ’791 patent is invalid due
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to non-enablement, in part because “the nature of the alleged invention is such that changes in
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the thermal expansion coefficients can be hard to predict, depending upon the mold processing
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parameters and mold geometry” (Dkt. No. 363-4 ¶¶ 311-24). The patent owners protest that
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this part of Dr. Gupta’s opinion constituted a new non-enablement theory never disclosed in
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Lotes’s invalidity contentions (Dkt. No. 363 at 3).
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The ’353 patent — which remains under reexamination before the United States Patent
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and Trademark Office at Lotes’s request (see Dkt. No. 378 at 16) — discloses an electrical
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connector assembly with an attached “pick up cap” that protects, but does not touch, electrical
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contacts protruding from the connector’s insulative housing, and has a smooth top surface for
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vacuum suction placement (Dkt. No. 248-12). In relevant part, claims 16, 33, 35, 46, 68, 70, 81,
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103, 105, and 116 all require that the “undersurface” of the “pick up cap” be spaced from the
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insulative housing with an unspecified “distance which is slightly larger than” the distance by
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which the electrical contacts protrude from the insulative housing. Lotes’s invalidity
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contentions never discussed this “slightly larger” phrase. In his opening report, however, Dr.
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Gupta opined in relevant part that the aforementioned claims of the ’353 patent are invalid due
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to the indefiniteness of the “slightly larger” phrase (Dkt. No. 363-4 ¶¶ 1851–52).
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The ’316 patent, like the ’353 patent, concerns electrical connectors. In relevant part,
support area, the cavity being bounded by a floor and a plurality of peripheral side walls” (Dkt.
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No. 248-9). Pursuant to Patent Local Rule 4, Lotes previously proposed that this limitation
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means “the floor and the side walls form the outer boundary of the cavity” while the patent
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For the Northern District of California
claims 20, 22, and 40 of the ’316 patent all require “a substantially rectangular cavity in the
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United States District Court
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owners previously proposed that it be construed according to its plain and ordinary meaning
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(Dkt. No. 238-2 at 20–21). In his rebuttal report, Dr. Gupta opined that Lotes does not infringe
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the aforementioned claims because the side walls of the accused products are not continuous but
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have “breaks” in them such that the cavities in question are not “bounded” by the side walls
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(Dkt. No. 362-3 ¶¶ 227–29, 246–48, 264–66, 280–82, 298–99, 316–18).
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The patent owners move to strike the three aforementioned opinions of Dr. Gupta (and
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to exclude Lotes’s arguments relating thereto) as supposedly revealing new invalidity
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contentions and a claim construction theory at odds with Lotes’s disclosures under our Patent
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Local Rules. This order follows full briefing and oral argument.
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ANALYSIS
LEGAL STANDARD.
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1.
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Our Patent Local Rules require parties to disclose infringement and invalidity
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contentions early in the litigation and with specificity, and restrict the ability of parties to amend
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those contentions, to balance the right to develop new information in discovery with the need
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for certainty as to legal theories in the case. O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
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467 F.3d 1355, 1359–60, 1366 (Fed. Cir. 2006). A party cannot use its contentions as a
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placeholder to generally assert infringement or invalidity theories and then later clarify the
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exact infringement or invalidity theory through an expert report. See ASUS Comput. Int’l v.
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Round Rock Research, LLC, No. 12–cv–02099 JST (NC), 2014 WL 1463609, at *3 (N.D. Cal.
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Apr. 11, 2014) (Judge Nathanael Cousins) (citation omitted). Similarly, “[w]hile no provision
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of the Patent Local Rules explicitly forbids a party from shifting its claim construction position,
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the rules strongly suggest that a party is not supposed to do so.” Rambus Inc. v. Hynix
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Semiconductor Inc., 569 F. Supp. 2d 946, 980 (N.D. Cal. July 10, 2008) (Judge Ronald Whyte).
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2.
DR. GUPTA’S OPINIONS RE THE ’791 PATENT.
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Dr. Gupta dedicates a section of his opening report to opining that the ’791 patent is
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invalid due to non-enablement. Under this section, the first subsection is titled, “A Person of
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Ordinary Skill Would Have to Conduct Undue Experimentation to Determine Whether a Hole
Pattern Other Than the Figure 2 Hole Pattern Would Achieve the Claimed Reduction” (Dkt. No.
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For the Northern District of California
United States District Court
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378-2 at 98). Most of the analysis thereunder closely tracks and fleshes out the invalidity
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theory Lotes had disclosed in its invalidity contentions (see id. ¶¶ 302–11). For example, Dr.
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Gupta explains that “a person of ordinary skill in the art would have to create many different
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iterations of base plates having different arrangements of holes to see which arrangements
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would reduce thermal expansion coefficient mismatches of the base plates. This would involve
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substantial experimentation,” since “many other parameters of the holes could affect the
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coefficients of thermal expansion of the base plate,” but the ’791 patent provided no guidance
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“as to how these parameters should be set . . . other than what is shown in Figure 2” (id. ¶ 306).
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In the same subsection, however, Dr. Gupta also noted that the hole pattern would not be
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the only factor affecting the thermal expansion coefficients. “A person having ordinary skill in
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the art would have expected that many other injection molding parameters would have at least
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as great of an impact (or greater) on the thermal expansion coefficients,” but “[t]he ’791 patent
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fails to discuss how any of these parameters could be tuned in combination with the selection of
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a particular hole pattern to achieve a reduction in the difference between thermal expansion
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coefficients” (id. ¶ 307). Thus, “for each hole pattern, the person of ordinary skill would have
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to conduct many tests to ascertain whether other injection molding parameters . . . affect the
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difference of thermal expansion coefficients,” thereby exacerbating the need for “undue
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experimentation” to figure out whether a particular hole pattern would work (id. ¶ 308).
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The second subsection to Dr. Gupta’s opinion regarding non-enablement in the ’791
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patent, titled “Significance of Mold Processing Parameters and Geometry,” is a detailed
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explanation of how various injection-molding variables can also affect the thermal expansion
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coefficients in the plate (id. ¶¶ 312–24). The patent owners contend this explanation exceeds
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the non-enablement theory disclosed by Lotes’s invalidity contentions. This order agrees.
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In its invalidity contentions, Lotes had argued that the ’791 patent failed to “enable any
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patterns of holes beyond the particular pattern of holes shown in Figures 1 and 2,” such that “[a]
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person of ordinary skill in the art would need to undertake undue experimentation to determine
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whether any other patterns of holes achieve the claimed reduction of the difference between
thermal expansion coefficients” (Dkt. No. 363-2 at 31). This non-enablement theory focused on
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United States District Court
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the ’791 patent’s lack of guidance specifically as to other hole patterns, not as to any and every
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other variable in the injection-molding process that might affect the thermal expansion
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coefficients of the plate. Tellingly, Dr. Gupta specifically stated that “other injection molding
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parameters would have at least as great of an impact (or greater) on the thermal expansion
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coefficients” as the “particular pattern” of holes (Dkt. No. 378-2 ¶ 307 (emphasis added)).
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Moreover, contrary to Lotes’s invalidity contentions — which suggested that the ’791 patent at
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least enabled its claimed invention with respect to the specific hole pattern described in figures
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1 and 2 — Dr. Gupta indicated that the variability of other “mold processing parameters and
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geometry” remains so significant that “it is impossible to know whether the particular pattern of
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holes shown in Figure 2 even works for the mold geometry shown” (see id. ¶ 317). In short, Dr.
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Gupta’s analysis indicated that both hole patterns and the other “mold processing parameters
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and geometry” can independently affect the thermal expansion coefficients of the plate.
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Dr. Gupta’s analysis regarding “mold processing parameters and geometry” may
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therefore be subsumed within a broader theory that the ’791 patent never actually enabled any
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achievement of its purported benefit of reducing the difference between thermal expansion
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coefficients. This is consistent with his opinion that “the nature of the alleged invention is such
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that changes in the thermal expansion coefficients can be hard to predict, depending upon the
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mold processing parameters and mold geometry.” Indeed, it seems the hole patterns might be
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characterized as a subset of the “mold processing parameters and geometry” that Dr. Gupta
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discussed (see id. ¶¶ 311, 314–16 (emphasis added)). It does not follow, however, that the
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entire array of “mold processing parameters and geometry” can be characterized as a subset of
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hole patterns such that it was fair game in light of Lotes’s invalidity contentions.
patterns, Lotes did not give its adversaries fair notice that its expert would opine about a host of
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other variables that would supposedly foil the ’791 patent’s overall attempt to enable a method
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for reducing the difference in thermal expansion coefficients. Dr. Gupta’s analysis about how
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injection-molding variables other than hole patterns render the ’791 patent invalid due to non-
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enablement is therefore STRICKEN. This ruling is without prejudice to the possibility that the
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For the Northern District of California
By disclosing only a non-enablement theory based on the specific variable of hole
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United States District Court
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patent owners themselves might open the door to this subject at trial, in which case Dr. Gupta’s
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opinion on the same subject would become fair game.
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3.
DR. GUPTA’S OPINIONS RE THE ’353 PATENT.
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As stated, Lotes’s invalidity contentions never disclosed the theory that ten claims of the
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’353 patent are invalid due to the indefiniteness of the “slightly larger” phrase. In its opposition
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to the instant motion, Lotes points out that the patent owners amended those claims during
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reexamination to recite two new limitations. “The new limitations require that the pick up cap
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be ‘layered below a clip engaged on the housing assembly and above a bottom surface of the
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housing assembly,’ and require[] ‘a moveable fastening device attached to the housing assembly
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that is pivotable from an open position to a closed position and defining an opening at a center
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point of the moveable fastening device’” (Dkt. No. 378 at 16–17 (emphasis in original)). Based
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on this, Lotes contends, “Dr. Gupta may . . . reasonably conclude that the ‘layered below’
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amendment changes the claimed spatial relationship between the pick up cap and the electrical
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contacts such that the ‘slightly larger’ claim limitation becomes ambiguous.” Thus, according
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to Lotes, Dr. Gupta’s indefiniteness argument “could not have been disclosed” earlier “because
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[the patent owners] did not make the related ‘layered below’ and ‘center point’ amendments
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until days before Dr. Gupta served his expert report” (Dkt. No. 378 at 18–19).
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Lotes offers no explanation whatsoever for how the new limitations could render the
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“slightly larger” phrase indefinite if it was not indefinite before. Nor did Dr. Gupta. On the
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contrary, Dr. Gupta explicitly opined in his report that the phrase “slightly larger” is simply a
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relative term, and that the ’353 patent is invalid for indefiniteness because it “does not provide
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any standard from which a person having ordinary skill in the art could reasonably determine
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when one distance is ‘slightly larger’ than another distance” (Dkt. No. 378-2 ¶¶ 1851–52).
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According to Dr. Gupta’s own analysis, the supposed indefiniteness, if it exists at all, plainly
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inheres in the “slightly larger” phrase itself and not as a result of any new limitation recently
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added by the patent owners. Lotes’s argument to the contrary is disingenuous.
The new limitations do not excuse Lotes’s attempt to introduce a new invalidity theory
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United States District Court
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in Dr. Gupta’s report despite having never disclosed said theory in its invalidity contentions.
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Dr. Gupta’s analysis regarding how the “slightly larger” phrase renders the ’353 patent invalid
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due to indefiniteness is therefore STRICKEN. Again, this ruling is without prejudice to the
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possibility that the patent owners themselves might open the door to this subject at trial, in
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which case Dr. Gupta’s opinion on the same subject would become fair game.
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4.
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Dr. Gupta opined in his rebuttal report that Lotes does not infringe claims 20, 22, and 40
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of the ’316 patent because those claims require “a substantially rectangular cavity in the support
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area, the cavity being bounded by a floor and a plurality of peripheral side walls,” whereas
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Lotes’s accused products are not continuous but have “breaks” in them (Dkt. No. 362-3 ¶¶
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227–29, 246–48, 264–66, 280–82, 298–99, 316–18). The patent owners protest that this
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argument constitutes “a new construction for this term that differs from the construction Lotes
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has advanced throughout the claim construction proceedings” (Dkt. No. 363 at 10). Since
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Lotes’s proposed construction has been that “the floor and the side walls form the outer
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boundary of the cavity” (Dkt. No. 238-2 at 20–21), the patent owners’ true argument seems to
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be that the word “boundary,” as used in Lotes’s proposed construction, inherently cannot
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indicate a continuity requirement.
DR. GUPTA’S OPINIONS RE THE ’316 PATENT.
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The patent owners’ argument is unpersuasive insofar as they suggest Lotes cannot
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explain why its products do not infringe unless it limits itself to terminology specifically
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invoked in its proposed claim construction (see, e.g., Dkt. Nos. 363 at 14). Penalizing Lotes on
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the basis that its proposed claim construction was “not necessarily [as] narrow” as its
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substantive arguments, as the patent owners suggest, would be particularly unfair here given
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that the patent owners proffered only “plain and ordinary meaning” for their proposed claim
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construction but have not been shy about elaborating on their opinions about what that simple
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phrase actually means in this case (see, e.g., Dkt. No. 385 at 14). It is not up to the patent
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owners to determine the proper meaning of either the disputed term or the parties’ proposed
constructions thereof, and it is not clear that Dr. Gupta’s noninfringement argument is
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For the Northern District of California
United States District Court
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inconsistent in any significant way with Lotes’s proposed claim construction.
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Even if there has been some unexpected narrowing of Lotes’s proposed claim
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construction, the patent owners have not shown that striking is warranted here. Indeed, their
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primary authority for this point, Rambus, is to the contrary. In Rambus, Judge Whyte agreed
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that the defendants had shifted their claim construction position after the parties filed their joint
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claim construction statement but noted that the jurisprudence of our district did not instruct on
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how to remedy that shift. 569 F. Supp. 2d at 979–81. He explicitly disapproved of the
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defendants’ conduct but rejected the plaintiff’s proposed remedy of striking the defendants’
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claim construction brief because it was “too harsh” and he was unwilling to ignore arguments
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that “help the court to construe the claims in dispute.” Id. at 981. In short, contrary to the
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patent owners, Rambus does not support the relief they seek here.
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Insofar as this dispute has strayed into claim construction territory — for example,
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whether a cavity can be “bounded” by discontinuous walls with breaks in them — the parties’
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arguments are better reserved for resolution on the merits. If the patent owners ultimately
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succeed in arguing that the claims in question should be construed to include discontinuous
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walls with breaks in them, then they may prevail on infringement notwithstanding what Dr.
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Gupta has said about the meaning of Lotes’s proposed claim construction. In the meantime,
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their motion to strike Dr. Gupta’s opinion as to this subject is DENIED.
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CONCLUSION
To the extent stated herein, the patent owners’ motion to strike is GRANTED IN PART
and DENIED IN PART.
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IT IS SO ORDERED.
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Dated: November 11, 2017.
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE
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For the Northern District of California
United States District Court
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