Largan Precision Co, LTD v. Genius Electronic Optical Co., Ltd.

Filing 66

ORDER re #64 Statement, filed by Genius Electronic Optical Co., Ltd., #65 Status Conference. Signed by Judge James Donato on 6/12/14. (lrcS, COURT STAFF) (Filed on 6/12/2014)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 LARGAN PRECISION CO, LTD, Case No. 13-cv-02502-JD Plaintiff, 8 ORDER ON SUPPLEMENTAL CLAIM CONSTRUCTION BRIEFING v. 9 GENIUS ELECTRONIC OPTICAL CO., LTD., 11 United States District Court Northern District of California 10 Re: Dkt. Nos. 64, 65 Defendant. 12 On June 4, 2014, Defendant Genius Electronic Optical Co., Ltd. (“Genius”) filed a 13 Statement of Recent Decision Regarding Indefiniteness Under 35 U.S.C. § 112, ¶ 2, attaching the 14 Supreme Court’s June 2, 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 15 2120 (2014). Dkt. No. 64. At the telephonic status conference that was held on June 6, 2014, 16 Genius requested that it be permitted to submit an expert declaration on claim construction in light 17 of the Nautilus decision. Dkt. No. 65. The Court took Genius’s request under submission, and 18 now denies it. 19 Several factors weigh against Genius’s request. As an initial matter, our district has strict 20 rules that require all discovery relating to claim construction, including any depositions of experts, 21 to be completed within 30 days after service and filing of the Joint Claim Construction and 22 Prehearing Statement. See Patent L.R. 4-4. The parties followed this rule and expressly agreed in 23 the Joint Claim Construction and Prehearing Statement that “no expert witnesses will be used for 24 claim construction.” Dkt. No. 35 at 8. 25 The Nautilus decision does not justify allowing Genius to renege on this agreement or 26 depart from the local rules. Genius itself characterized the “change in law” in Nautilus as follows: 27 “In Nautilus, . . . [t]he Court held that definiteness under Section 112, Paragraph 2 requires ‘that a 28 patent’s claims, viewed in light of the specification and prosecution history, inform those skilled 1 in the art about the scope of the invention with reasonable certainty.’” Dkt. No. 64 at 1 (citing 2 Nautilus, No. 13-369, slip op. at 11). But Genius already briefed this same standard in the 3 responsive claim construction brief it filed on April 4, 2014. See Dkt. No. 40 at 6 (arguing that a 4 claim is “invalid for indefiniteness if ‘a person of ordinary skill in the art [can]not determine the 5 bounds of the claims’”) (citing Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 6 (Fed. Cir. 2008)). And Genius had already concluded that reliance on Halliburton did not require 7 expert witness testimony. The fact that Nautilus adopted the Halliburton standard does not 8 suddenly re-arrange the landscape to permit opening expert discovery and testimony. In addition, 9 the parties are well down the road in this case and the extra time required to allow for experts 10 United States District Court Northern District of California 11 would unnecessarily delay progress toward resolution. As stated at the June 6, 2014 status conference, the Court will permit both sides to submit 12 supplemental claim construction briefs of 10 pages or less (per side), applying Nautilus to the facts 13 of this case. Both parties are directed to file their supplemental briefs on or before June 19, 2014. 14 No expert testimony is permitted. 15 16 17 18 IT IS SO ORDERED. Dated: June 12, 2014 ______________________________________ JAMES DONATO United States District Judge 19 20 21 22 23 24 25 26 27 28 2

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