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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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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LARGAN PRECISION CO, LTD,

Case No. 13-cv-02502-JD

Plaintiff,
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ORDER ON SUPPLEMENTAL CLAIM
CONSTRUCTION BRIEFING

v.
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GENIUS ELECTRONIC OPTICAL CO.,
LTD.,

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United States District Court
Northern District of California

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Re: Dkt. Nos. 64, 65

Defendant.

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On June 4, 2014, Defendant Genius Electronic Optical Co., Ltd. (“Genius”) filed a

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Statement of Recent Decision Regarding Indefiniteness Under 35 U.S.C. § 112, ¶ 2, attaching the

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Supreme Court’s June 2, 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.

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2120 (2014). Dkt. No. 64. At the telephonic status conference that was held on June 6, 2014,

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Genius requested that it be permitted to submit an expert declaration on claim construction in light

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of the Nautilus decision. Dkt. No. 65. The Court took Genius’s request under submission, and

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now denies it.

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Several factors weigh against Genius’s request. As an initial matter, our district has strict

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rules that require all discovery relating to claim construction, including any depositions of experts,

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to be completed within 30 days after service and filing of the Joint Claim Construction and

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Prehearing Statement. See Patent L.R. 4-4. The parties followed this rule and expressly agreed in

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the Joint Claim Construction and Prehearing Statement that “no expert witnesses will be used for

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claim construction.” Dkt. No. 35 at 8.

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The Nautilus decision does not justify allowing Genius to renege on this agreement or

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depart from the local rules. Genius itself characterized the “change in law” in Nautilus as follows:

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“In Nautilus, . . . [t]he Court held that definiteness under Section 112, Paragraph 2 requires ‘that a

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patent’s claims, viewed in light of the specification and prosecution history, inform those skilled

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in the art about the scope of the invention with reasonable certainty.’” Dkt. No. 64 at 1 (citing

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Nautilus, No. 13-369, slip op. at 11). But Genius already briefed this same standard in the

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responsive claim construction brief it filed on April 4, 2014. See Dkt. No. 40 at 6 (arguing that a

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claim is “invalid for indefiniteness if ‘a person of ordinary skill in the art [can]not determine the

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bounds of the claims’”) (citing Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249

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(Fed. Cir. 2008)). And Genius had already concluded that reliance on Halliburton did not require

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expert witness testimony. The fact that Nautilus adopted the Halliburton standard does not

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suddenly re-arrange the landscape to permit opening expert discovery and testimony. In addition,

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the parties are well down the road in this case and the extra time required to allow for experts

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United States District Court
Northern District of California

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would unnecessarily delay progress toward resolution.
As stated at the June 6, 2014 status conference, the Court will permit both sides to submit

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supplemental claim construction briefs of 10 pages or less (per side), applying Nautilus to the facts

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of this case. Both parties are directed to file their supplemental briefs on or before June 19, 2014.

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No expert testimony is permitted.

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IT IS SO ORDERED.
Dated: June 12, 2014
______________________________________
JAMES DONATO
United States District Judge

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