Ruckus Wireless, Inc. v. Netgear, Inc. et al

Filing 134

ORDER by Judge Hamilton denying 122 Motion to Strike (pjhlc2, COURT STAFF) (Filed on 12/16/2013)

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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RUCKUS WIRELESS, INC.,
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Plaintiff,

No. C 08-2310 PJH

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v.
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ORDER DENYING MOTION FOR
STRIKE

NETGEAR, INC.,
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For the Northern District of California

United States District Court

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Defendant.
_______________________________/

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Before the court is plaintiff’s motion to strike, filed on July 19, 2013. Having read the

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papers filed in conjunction with the motion and carefully considered the arguments and the

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relevant legal authority, and good cause appearing, the court hereby DENIES plaintiff’s

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motion as follows.

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Plaintiff requests that the court strike section II of defendant’s amended invalidity

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contentions, arguing that defendant “has attempted to contravene pre-[America Invents

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Act] § 315 by asserting patents and publications that it raised or could have raised during

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its previous attempt to invalidate the patents-in-suit through inter partes reexamination of

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the ’562 patent.”

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Here, the court finds it useful to clarify the exact scope of the reexamination

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proceedings relating to the ’562 patent. Defendant originally requested that the PTO

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reexamine all 36 claims of the ’562 patent, but the PTO granted the reexamination request

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only as to claims 11-17. In so doing, the PTO made clear that the reexamination petition

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did “not present a substantial new question of patentability with respect to claims 1-10 and

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18-36,” and thus it was “outside [the] Examiner’s jurisdiction to determine patentability of

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claims 1-10 and 18-36.” Dkt. 123, Ex. B at 3. Defendant asked the PTO to reconsider its

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decision not to reexamine claims 1-10 and 18-36, but the PTO denied the request. Dkt.

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123, Ex. C. Thus, claims 1-10 and 18-36 were never reexamined. As to the other patent-

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in-suit (the ’486 patent), defendant never sought reexamination, and thus no claims of the

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’486 patent were ever reexamined.

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The applicable (pre-America Invents Act) version of section 315(c) reads as follows:

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A third-party requester whose request for an inter partes reexamination

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results in an order under section 313 is estopped from asserting at a later

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time, in any civil action arising in whole or in part under section 1338 of title

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28, United States Code, the invalidity of any claim finally determined to be
valid and patentable on any ground which the third-party requester raised or

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For the Northern District of California

United States District Court

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could have raised during the inter partes reexamination proceeding.

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Thus, the estoppel provision only applies to requests which result in “an order under

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section 313,” and applies only to the assertion of “the invalidity of any claim finally

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determined to be valid and patentable on any ground which the third-party requester raised

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or could have raised during the inter partes reexamination proceeding.” Section 313, in

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turn, provides that:

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If, in a determination made under section 312(a), the director finds that a

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substantial new question of patentability affecting a claim of a patent is raised,

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the determination shall include an order for inter partes reexamination of the

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patent for resolution of the question.

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Thus, an “order under section 313” is issued only if the PTO finds a substantial new

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question of patentability. As explained above, the PTO found no substantial new question

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of patentability as to claims 1-10 and 18-36 of the ’562 patent, which means that no “order

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under section 313” could have issued, and thus, the estoppel provision of section 315(c)

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does not apply. Plaintiff’s argument with respect to the ’486 patent is even weaker,

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because not only did the PTO not find a substantial new question of patentability as to the

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claims of the ’486 patent, but no reexamination petition was ever filed by defendant. Thus,

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plaintiff’s motion to strike is DENIED.
IT IS SO ORDERED.

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Dated: December 16, 2013
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______________________________
PHYLLIS J. HAMILTON
United States District Judge

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For the Northern District of California

United States District Court

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