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)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ENPLAS DISPLAY DEVICE
CORPORATION, et al.,

United States District Court
Northern District of California

Plaintiffs,
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v.

Case No.13-cv-05038 NC
ORDER FINDING CLAIM 2 OF ’554
PATENT IS NOT INVALID

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SEOUL SEMICONDUCTOR
COMPANY, LTD.,
Defendant.

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Plaintiff Enplas Display Device Corporation (“EDD”) asks this Court to find that

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claim 2 of the ’554 patent is invalid because it is an improper dependent claim. Dkt. No.

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457. Defendant Seoul Semiconductor Company disagrees. Dkt. No. 460. The Court held

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a jury trial in this case in March 2016.

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I.

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LEGAL STANDARD
Generally, a patent is presumed valid. 35 U.S.C. § 282. While this presumption

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can be rebutted, the party challenging validity must meet the “high burden” of proving

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invalidity by “clear and convincing evidence.” Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d

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1253, 1260 (Fed. Cir. 2012). 35 U.S.C. § 112 provides, “a claim in dependent form shall

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contain a reference to a claim previously set forth and then specify a further limitation of

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the subject matter claimed.” “The statute stresses that a dependent claim must add a

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limitation to those recited in the independent claim.” Curtiss-Wright Flow Control Corp.

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v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006).
Case No.13-cv-05038 NC

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II.

DISCUSSION
Claim 1 of the ’554 patent reads:

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An illumination device, comprising:

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a waveguide having an illumination coupler embedded in an
interior region of said waveguide,

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United States District Court
Northern District of California

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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?

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Pollock: Not in my view. I’m not a lawyer, so -- but I don’t see
the point of that one.

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Q: From a technical perspective, does it add anything?

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Pollock: No change.
Case No.13-cv-05038 NC

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Tr. 992-993.

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This is the entirety of testimony and evidence provided by EDD at trial. EDD’s

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argument for the invalidity of claim 2 is based on EDD’s attorney argument that “The

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specification makes clear that the refractive index interface of the illumination coupler

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claimed in claim 1 is a ‘surface configured for total internal reflection of light incident

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thereon.’” Dkt. No. 457 at 3. According to EDD, since TIR is specified in claim 1

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through interpretation of the “refractive index interface,” the further limitation of TIR in

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claim 2 is redundant.

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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

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United States District Court
Northern District of California

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claim 2 redundant, i.e., that it does not require TIR. Dkt. No. 460 at 2.

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The Court finds that EDD has failed to meet its burden to demonstrate that claim 2

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is an improper claim by clear and convincing evidence. Ultimately, this question is one of

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claim construction. EDD did not ask the Court to construe “refractive index interface,” nor

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did it move for summary judgment on this claim. Dr. Pollock’s conclusion that claim 2 is

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redundant because Dr. Pollock does not know “what it adds” is unpersuasive. Dr. Pollock

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did not testify to the argument that EDD’s counsel puts forward, that the “refractive index

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interface” in claim 1 would be interpreted as a person of ordinary skill in the art as

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requiring TIR, and that a person ordinary skill in the art would find claim 2 redundant.

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Additionally, Dr. Pollock provides no reasoning for his cursory conclusion, and he did not

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opine as to whether one of ordinary skill in the art would agree with his conclusion.

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III. CONCLUSION

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The Court finds that claim 2 of the ’554 patent is not invalid.

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IT IS SO ORDERED.
Dated: April 8, 2016

_____________________________________
NATHANAEL M. COUSINS
United States Magistrate Judge

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Case No.13-cv-05038 NC

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