Enplas Display Device Corporation et al v. Seoul Semiconductor Company, Ltd.

Filing 467

ORDER FINDING CLAIM 2 OF '554 PATENT IS NOT INVALID. Signed by Judge Nathanael Cousins on 4/8/2016. (lmh, COURT STAFF) (Filed on 4/8/2016)

Download PDF
1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 NORTHERN DISTRICT OF CALIFORNIA 9 10 11 ENPLAS DISPLAY DEVICE CORPORATION, et al., United States District Court Northern District of California Plaintiffs, 12 v. Case No.13-cv-05038 NC ORDER FINDING CLAIM 2 OF ’554 PATENT IS NOT INVALID 13 14 SEOUL SEMICONDUCTOR COMPANY, LTD., Defendant. 15 Plaintiff Enplas Display Device Corporation (“EDD”) asks this Court to find that 16 17 claim 2 of the ’554 patent is invalid because it is an improper dependent claim. Dkt. No. 18 457. Defendant Seoul Semiconductor Company disagrees. Dkt. No. 460. The Court held 19 a jury trial in this case in March 2016. 20 I. 21 LEGAL STANDARD Generally, a patent is presumed valid. 35 U.S.C. § 282. While this presumption 22 can be rebutted, the party challenging validity must meet the “high burden” of proving 23 invalidity by “clear and convincing evidence.” Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 24 1253, 1260 (Fed. Cir. 2012). 35 U.S.C. § 112 provides, “a claim in dependent form shall 25 contain a reference to a claim previously set forth and then specify a further limitation of 26 the subject matter claimed.” “The statute stresses that a dependent claim must add a 27 limitation to those recited in the independent claim.” Curtiss-Wright Flow Control Corp. 28 v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006). Case No.13-cv-05038 NC 1 2 II. DISCUSSION Claim 1 of the ’554 patent reads: 3 An illumination device, comprising: 4 a waveguide having an illumination coupler embedded in an interior region of said waveguide, 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 said illumination coupler adapted to receive light from a point source within said interior region, and to direct light between generally parallel top and bottom surfaces outside said interior region, said illumination coupler comprising a refractive index interface which is inclined relative to at least one of said top and bottom surfaces said interface being configured to reflect light rays emitted by the point source which propagate along a line that forms less than the critical angle of total internal reflection with respect to a line lying in one of said top and bottom surfaces, such that light rays which would otherwise pass out of said waveguide are captured for propagation between said top and bottom surfaces. Claim 2 of the ’554 patent reads: The illumination device of claim 1, wherein said illumination coupler comprises a surface configured for total internal reflection of light incident therein. At trial, Dr. Pollock testified briefly as to claim 2, as follows: Q: And looking at Claim Number 2, what is added by that dependency? Pollock: Claim Number 2, let me just read it. It says: (reading) “The elimination device of Claim 1,” so it’s a dependent claim, “wherein said illumination coupler comprises a surface configured for total internal reflection of light incident thereon.” In my opinion, it’s redundant. I don’t know what it adds. Q: Does it add anything in your view? 26 Pollock: Not in my view. I’m not a lawyer, so -- but I don’t see the point of that one. 27 Q: From a technical perspective, does it add anything? 28 Pollock: No change. Case No.13-cv-05038 NC 2 1 Tr. 992-993. 2 This is the entirety of testimony and evidence provided by EDD at trial. EDD’s 3 argument for the invalidity of claim 2 is based on EDD’s attorney argument that “The 4 specification makes clear that the refractive index interface of the illumination coupler 5 claimed in claim 1 is a ‘surface configured for total internal reflection of light incident 6 thereon.’” Dkt. No. 457 at 3. According to EDD, since TIR is specified in claim 1 7 through interpretation of the “refractive index interface,” the further limitation of TIR in 8 claim 2 is redundant. 9 SSC responds that the presumption under the doctrine of claim differentiation requires the Court to construe “refractive index interface” in a way that would not make 11 United States District Court Northern District of California 10 claim 2 redundant, i.e., that it does not require TIR. Dkt. No. 460 at 2. 12 The Court finds that EDD has failed to meet its burden to demonstrate that claim 2 13 is an improper claim by clear and convincing evidence. Ultimately, this question is one of 14 claim construction. EDD did not ask the Court to construe “refractive index interface,” nor 15 did it move for summary judgment on this claim. Dr. Pollock’s conclusion that claim 2 is 16 redundant because Dr. Pollock does not know “what it adds” is unpersuasive. Dr. Pollock 17 did not testify to the argument that EDD’s counsel puts forward, that the “refractive index 18 interface” in claim 1 would be interpreted as a person of ordinary skill in the art as 19 requiring TIR, and that a person ordinary skill in the art would find claim 2 redundant. 20 Additionally, Dr. Pollock provides no reasoning for his cursory conclusion, and he did not 21 opine as to whether one of ordinary skill in the art would agree with his conclusion. 22 III. CONCLUSION 23 The Court finds that claim 2 of the ’554 patent is not invalid. 24 25 26 IT IS SO ORDERED. Dated: April 8, 2016 _____________________________________ NATHANAEL M. COUSINS United States Magistrate Judge 27 28 Case No.13-cv-05038 NC 3

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?