Industrial Technology Research Institute v. LG Electronics Inc. et al

Filing 148

ORDER Granting 65 Plaintiff Industrial Technology Research Institute's Motion to Strike Defendants from Arguing Invalidity Defenses During Claim Construction Proceedings. Signed by Judge Gonzalo P. Curiel on 12/8/2014. (srm)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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INDUSTRIAL TECHNOLOGY
RESEARCH INSTITUTE
Plaintiff,

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vs.

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LG ELECTRONICS INC., and LG
ELECTRONICS U.S.A., INC.

CASE NO. 3:13-CV-02016-GPC-WVG
ORDER GRANTING PLAINTIFF
INDUSTRIAL TECHNOLOGY
RESEARCH INSTITUTE’S
MOTION TO STRIKE
DEFENDANTS FROM ARGUING
INVALIDITY DURING CLAIM
CONSTRUCTION PROCEEDINGS
(DKT. NO. 65)

Defendants.

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I. INTRODUCTION
Before the Court is plaintiff Industrial Technology Research Institute’s (“ITRI”)

23 Motion to Strike Defendants from Arguing Invalidity Defenses During Claim
24 Construction Proceedings. (Dkt. No. 65, “Motion to Strike”.) Defendants LG
25 Electronics Inc. and LG Electronics U.S.A., Inc. (collectively, “LGE”) filed an
26 opposition to the Motion to Strike, (Dkt. No. 70.), and ITRI filed a reply, (Dkt. No. 94.)
27 Based on a review of the briefs, supporting documentation, and the applicable law, the
28 Court GRANTS ITRI’s Motion to Strike.
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II. BACKGROUND
On August 29, 2013, ITRI filed a lawsuit alleging LGE infringed U.S. Patent No.

3 6,163,355. (Dkt. No. 1 at 2.) When the parties submitted their proposed claim
4 constructions on July 21, 2014, LGE argued that the claim term “sufficiently thinner”
5 was indefinite. (Dkt. No. 42 at 3.) ITRI moved to strike LGE from arguing invalidity
6 defenses during claim construction proceedings on August 11, 2014. (Dkt. No. 65.)
7 LGE filed an opposition to the Motion to Strike on September 4, 2014. (Dkt. No. 70.)
8 ITRI filed a reply to LGE’s opposition brief on October 13, 2014. (Dkt. No. 94.)
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III. LEGAL STANDARD
A patent’s specification must “conclude with one or more claims particularly

11 pointing out and distinctly claiming the subject matter which the applicant regards as
12 his invention.” 35 U.S.C. § 112, ¶ 2. “[T]he purpose of the definiteness requirement
13 is to ensure that the claims delineate the scope of the invention using language that
14 adequately notifies the public of the patentee’s right to exclude.” Datamize LLC v.
15 Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citing Honeywell Int’l,
16 Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1338 (Fed.Cir.2003)). “[A] patent is
17 invalid for indefiniteness if its claims, read in light of the specification delineating the
18 patent, and the prosecution history, fail to inform, with reasonable certainty, those
19 skilled in the art about the scope of the invention.”

Nautilus, Inc. v. Biosig

20 Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). “[I]ndefiniteness is a question of law
21 and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700
22 F.3d 509, 517 (Fed. Cir. 2012). The Federal Circuit Court of Appeals has held that
23 defendants do not waive a defense of invalidity due to indefiniteness for appeal if they
24 raise the argument either during the claim construction hearing or the summary
25 judgment stage. Id.
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IV. DISCUSSION
ITRI seeks to prevent LGE from asserting indefiniteness as to the claim language

28 “sufficiently thinner” at the claim construction hearing. (Dkt. No. 65-1 at 2.) ITRI
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1 argues that the Court should instead address indefiniteness during the summary
2 judgment stage. (Id.) ITRI cites several decisions where courts have deferred
3 indefiniteness until the summary judgment stage. (Id. at 3-4); see, e.g., Presidio
4 Components Inc. v. American Technical Ceramics Corp., No. 07CV893 IEG (NLS),
5 2008 WL 2397488, at *3 (S.D. Cal. June 11, 2008) (declaring that a discussion of
6 indefiniteness “would be more appropriate at the summary judgment stage”); see also
7 Kowalski v. Ocean Duke Corp., No. 04-00055 BMK, 2007 WL 4104259, at *3 (D.
8 Haw. Nov. 19, 2007) (stating that “[i]t would be inappropriate for the Court to address
9 [defendant’s] indefiniteness arguments during the present claims construction process
10 [because] [t]he Court has not been sufficiently briefed.”); Froessl v. Hewlett-Packard
11 Co., No. C-01-20924, 2002 WL 34455177, at *5 (N.D. Cal. Nov. 27, 2002) (stating
12 that “the issue of indefiniteness is one of validity rather than claim construction . . .
13 [and] is more properly presented in a motion for summary judgment than at a Markman
14 hearing”).
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In addition, ITRI asserts that the clear and convincing evidence standard to show

16 indefiniteness bolsters its contention that the summary judgment stage of proceedings
17 is the correct time to determine indefiniteness. (Dkt. No. 65-1 at 4.) “Indefiniteness
18 must be demonstrated by clear and convincing evidence . . . and is not appropriate
19 during claims construction.” Kowalski v. Ocean Duke Corp., 2007 WL 4104259, at
20 *3.
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LGE counters that the claims construction hearing is the proper time to address

22 indefiniteness. (Dkt. No. 70 at 2-6.) LGE also cites several decisions supporting its
23 contention. See, e.g., Eon Corp IP Holdings LLC v. Aruba Networks Inc., No. 12-CV24 01011-JST, 2014 WL 938511, at *3 (N.D. Cal. March 5, 2014) (stating that “it is
25 appropriate for the Court to address indefiniteness issues during the claim construction
26 stage”). LGE also argues that postponing consideration of indefiniteness to the
27 summary judgment stage would be inefficient. (Dkt. No. 70 at 5.)
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To begin with, the Court recognizes the uncertainty that exists as to whether
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1 indefiniteness should be addressed during claim construction proceedings or the
2 summary judgment stage. See ASM America, Inc. v. Genus, Inc., No. C-01-2190-EDL,
3 2002 WL 1892200, at *15 (N. D. Cal. Aug. 15, 2002) (“[t]here is some ambiguity in
4 the case law as to whether a finding of indefiniteness should occur during claim
5 construction, or whether it should occur at a later step”). Indeed, the Federal Circuit
6 has affirmed invalid for indefiniteness orders arising from claim construction
7 proceedings and motions for summary judgment this year. See Interval Licensing LLC,
8 v. AOL, Inc., 766 F.3d 1364, 1366 (Fed. Cir. 2014) (affirming a Western District of
9 Washington claim construction order regarding indefiniteness); H-W Technology L.C.,
10 v. Overstock.com, Inc., 758 F.3d 1329, 1330 (Fed. Cir. 2014) (affirming a Northern
11 District of Texas order arising on summary judgment finding the claim in question
12 indefinite). At one time, the Federal Circuit suggested that issues like indefiniteness
13 were matters of “claim validity” rather than “interpretation or construction.” See
14 Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir.
15 1989). More recently, the Federal Circuit has stated that “[t]he question of whether
16 claims meet the statutory requirements of § 112 ¶ 2 is a matter of construction of the
17 claims, and receives plenary review on appeal,” see S3 Inc. v. Nvidia Corp., 259 F.3d
18 1364, 1367 (Fed. Cir. 2001), and “an analysis under § 112 ¶ 2 is inextricably
19 intertwined with the claim construction,” Atmel Corp. v. Information Storage Devices,
20 Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999). However, both S3 and Atmel addressed
21 the question of indefiniteness during the summary judgment stage. This fact coupled
22 with the Federal Circuit’s consideration of recent appeals regarding invalidity due to
23 indefiniteness based on claim construction orders and summary judgment orders
24 persuades the Court to agree with ASM America “that the Federal Circuit’s statements
25 that indefiniteness is intertwined with claim construction mean only that the Court must
26 attempt to determine what a claim means before it can determine whether the claim is
27 invalid for indefiniteness, and not that the Court must determine indefiniteness during
28 the claim construction proceedings.” 2002 WL 1892200, at *15.
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Additionally, LGE’s reliance on INOVA Diagnostics, Inc. v. Euro-Diagnostica

2 AB is misplaced. (Dkt. No. 70 at 2-3.) In that case, the court “decline[d] to defer
3 construction” of indefiniteness to the summary judgment stage because “reasonable
4 efforts at claim construction prove[d] futile.” INOVA, No. 08-CV-0845 H(JMA), 2009
5 WL 2602608, at *4 (S.D. Cal. Aug. 24, 2009) (quoting Datamize LLC, 417 F.3d at
6 1347). Because the court could not determine what the claim meant via “reasonable
7 efforts at claim construction” before it concluded the claim was indefinite does not
8 require all determinations of indefiniteness to occur during claim construction
9 proceedings. To be sure, the INOVA court followed the path of ASM America to
10 ascertain indefiniteness: “determine what a claim means before it can determine
11 whether the claim is invalid for indefiniteness.” Furthermore, the court in INOVA
12 acknowledged that it could defer the determination of indefiniteness to a later stage of
13 the proceedings. 2009 WL 2602608, at *4. This practice conforms with the Federal
14 Circuit’s authorization to employ both intrinsic and extrinsic evidence when attempting
15 to construe a claim. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005).
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This is not to say that this Court may not determine indefiniteness during claim

17 construction proceedings, such as when a claim fails to disclose a corresponding
18 structure. See Froessl, 2002 WL 34455177, at *5 n.4. The Court only reaffirms that
19 it has discretion as to when to determine indefiniteness during patent case proceedings.
20 LGE admits in its reply brief that the Court possesses such discretion: “It does not hold
21 that a court is not permitted to address indefiniteness at claim construction, only that
22 a court may address indefiniteness at other stages of the case, if the circumstances are
23 appropriate.” (Dkt. No. 70 at 4-5.) Such discretion allows the Court to “follow the
24 requirement that clear and convincing evidence be shown to invalidate a patent.”
25 Datamize, LLC, 417 F.3d at 1348 (citing Budde v. Harley–Davidson, Inc., 250 F.3d
26 1369, 1376 (Fed. Cir. 2001)).
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Here, the parties have agreed to a four-hour claim construction hearing. (Dkt.

28 No. 41 at 2.) Because ITRI and LGE will present arguments about the other disputed
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1 claim terms at the claim construction hearing, they will not have adequate time to fully
2 address the indefiniteness of the claim term “sufficiently thinner” at the hearing. A
3 federal district court’s “duty” when determining indefiniteness demands more than a
4 mere perfunctory inspection. Personalized Media Commc’ns, LLC v. Int’l Trade
5 Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) ( “A determination of claim indefiniteness
6 is a legal conclusion that is drawn from the court’s performance of its duty as the
7 construer of patent claims.”). Accordingly, the Court defers the determination of
8 indefiniteness to a later stage of the proceedings so the parties may thoroughly brief the
9 Court on the matter.
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V. CONCLUSION AND ORDER
Based on the foregoing, IT IS HEREBY ORDERED that ITRI’s Motion to

12 Strike is GRANTED and LGE’s indefiniteness argument is STRICKEN from the
13 claims construction hearing.
14 DATED: December 8, 2014
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HON. GONZALO P. CURIEL
United States District Judge

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