Sentius International, LLC v. Microsoft Corporation
Filing
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ORDER GRANTING-IN-PART SENTIUS' MOTION TO COMPEL; SETTING BRIEFING SCHEDULE granting [102-4]. Signed by Judge Paul S. Grewal on July 29, 2014. (psglc2, COURT STAFF) (Filed on 7/29/2014)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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United States District Court
For the Northern District of California
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SAN JOSE DIVISION
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SENTIUS INTERNATIONAL, LLC,
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Plaintiff,
v.
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MICROSOFT CORPORATION,
Defendant.
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Case No. 5:13-cv-00825-PSG
ORDER GRANTING-IN-PART
SENTIUS’ MOTION TO COMPEL;
SETTING BRIEFING SCHEDULE
(Re: Docket Nos. 76 and 102-4)
Before the court in this patent infringement case is Plaintiff Sentius International, LLC’s
motion to compel.1 Defendant Microsoft Corporation opposes. Earlier today, the parties appeared
for a hearing.2 After considering the parties’ arguments, at both the hearing and in their papers, the
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court GRANTS the motion, but only IN-PART, as set forth below:
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As previewed at the hearing, Microsoft shall produce all in-bound licenses within two years
of the hypothetical negotiation date (2007 to 2011) granting rights to no more than ten
patents and with financial terms redacted. The parties shall then meet and confer to discuss
which of these licenses should be produced without redaction. Following this
meet-and-confer, Microsoft shall produce the agreed-upon unredacted licenses. All
production shall be designated AEO. To the extent any dispute remains, the parties shall
contact the court to schedule a further hearing.
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See Docket No. 102-4.
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See Civil L.R. 7-1(b).
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Case No. 5:13-cv-00825-PSG
ORDER GRANTING-IN-PART SENTIUS’ MOTION TO COMPEL; SETTING BRIEFING
SCHEDULE
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After Sentius articulates the particular categories, features or functionalities of interest,
Microsoft shall produce any appropriate usage data from 2007 to 2011 within its
possession, custody or control.
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All production discussed above shall be completed within fourteen days. The parties shall
meet and confer on additional modifications to the case schedule necessary in light of this
production.
To inform the court’s analysis of one of Microsoft’s pending summary judgment motions
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regarding asserted claims from a pair of reissue patents that are alleged to have run afoul of
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35 U.S.C. § 251,3 the court invites additional briefing on the dispute. In particular, the court would
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appreciate the parties’ take on the following questions:
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1. If Section 251 is a question of law based upon underlying questions of fact, what exactly
are the underlying factual questions?4 Does Forest Labs require the court to weigh whether
any changes to the invalidated patent were merely clerical?5 Is that a question of fact that
needs to be informed by a more fulsome record replete with expert opinion? If the changes
to the reissued patent are deemed clerical, does that necessarily mean that the patent has not
been broadened?
United States District Court
For the Northern District of California
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2. Did Judge Armstrong make a determination of what a person having ordinary skill in the art
would understand in reading claim 8 and subsequently decide that a PHOSITA’s
understanding was inconsistent with how the invention had to work – invalidating the claim
under Sections 101 and 112?6 Is Judge Armstrong’s analysis inconsistent with a PHOSITA
understanding what the Section 251 correction must be?
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The parties may file an additional seven pages addressing these questions within seven days.
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See Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1373 (Fed. Cir. 2006).
Determining whether the claims of a reissued patent violate 35 U.S.C. § 251 is a question of
law, which we review de novo. Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1370
(Fed. Cir. 2001). The legal conclusion of whether an applicant has met the statutory
requirements of 35 U.S.C. § 251 is based on underlying findings of fact, which we sustain
unless they are clearly erroneous. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
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See Forest Labs., Inc. v. Ivax Pharm., Inc., 501 F.3d 1263, 1270 (Fed. Cir. 2007).
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See Docket No. 76.
See Docket No. 56-16, Ex. P (Judge Armstrong’s order).
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Case No. 5:13-cv-00825-PSG
ORDER GRANTING-IN-PART SENTIUS’ MOTION TO COMPEL; SETTING BRIEFING
SCHEDULE
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IT IS SO ORDERED.
Dated: July 29, 2014
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United States District Court
For the Northern District of California
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Case No. 5:13-cv-00825-PSG
ORDER GRANTING-IN-PART SENTIUS’ MOTION TO COMPEL; SETTING BRIEFING
SCHEDULE
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