Ateliers De La Haute-Garonne v. Broetje Automation, USA Inc., et al

Filing 368

MEMORANDUM ORDER DENYING 203 Cross MOTION to Strike filed by Ateliers De La Haute-Garonne, F2C2 System SAS; and 176 MOTION for Partial Summary Judgment filed by Ateliers De La Haute-Garonne, F2C2 System SAS. Signed by Judge Leonard P. Stark on 2/4/14. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
ATELIERS DE LA HAUTE-GARONNE
(French Corporation) and F2C2 SYSTEMS
S.A.S. (French Corporation),
Plaintiff,

v.

C.A. No. 09-CV -598-LPS

BROETJE AUTOMATION-USA INC.
(Delaware Corporation) and BROTJEAUTOMATION GMBH (German
Corporation),
Defendant.

MEMORANDUM ORDER
Presently before the Court is Plaintiffs Ateliers de la Haute-Garonne ("AHG") and F2C2
Systems' ("F2C2") (i) Motion for Partial Summary Judgment as to Defendants Broetje
Automation-USA Inc. and Brotje-Automation GMBH's (collectively, "Broetje") Invalidity
Defenses (D.I. 176) and (ii) Plaintiffs' Cross-Motion to Strike Defendants' Late Asserted
Defenses, Late Disclosed Prior Art References and Prior Art Combination Unsupported by
Expert Testimony (D.I. 203). The Court has already addressed Plaintiffs' requests for judgment
of no anticipation, non-obviousness, and no invalidity due to failure to disclose best mode. (See
D.l. 367 ~ 3) The Court reserved judgment on Plaintiffs' motion for judgment of no invalidity
due to indefiniteness. (!d.) Similarly, the Court has already denied Plaintiffs' cross-motion to
strike except for Plaintiffs' request to strike the indefiniteness defense for being untimely. (!d. at
~

5) For the reasons set forth below, the Court will now deny the remaining portion of Plaintiffs'

motions to strike (D.I. 176) as well as Plaintiffs' request for judgment of no invalidity due to

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indefiniteness (D.I. 203).
1.

On May 12, 2009, Plaintiffs filed this lawsuit in the Central District of California

alleging, among other things, that Defendants infringed U.S. Patent Nos. 5,011,339 ("the '339
Patent") and 5,143,216 ("the '216 Patent"). (D.I. 1) The action was transferred to this Court on
August 13, 2009. On August 22, 2011, Plaintiffs filed a motion for partial summary judgment on
issues related to the validity ofthe patents-in-suit. (D.I. 176) On September 1, 2011, Plaintiffs
filed a cross-motion to strike Defendants' defenses related to the validity of the patents-in-suit.
(D.I. 203)

2.

On September 26, 2011, this Court invalidated the asserted claims of the patents-

in-suit for failure to disclose the best mode. (D.I. 335) On appeal, the United States Court of
Appeals for the Federal Circuit reversed that ruling and remanded the case to this Court for
further proceedings. (D.I. 350)
3.

Plaintiffs renewed both the motion to strike as well as the motion for partial

summary judgment. (D.I. 362)
4.

In their motion to strike, Plaintiffs contend that Defendants' invalidity defenses

are untimely because Defendants did not assert or disclose any of the invalidity defenses until
one month after discovery purportedly closed. As the Court ruled with respect to Defendants'
other allegedly untimely invalidity defenses, Defendants' indefiniteness defense was not
untimely when filed. Defendants obtained the basis for asserting their indefiniteness defense
after deposing the named inventors of the patents-in-suit. (D.I. 299 at 4) Defendants presented
their invalidity defenses days after those depositions. (!d. at 4-5) Moreover, since Plaintiffs have
now had notice of the defenses for years, and because trial is still more than two months away,
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any undue prejudice that Plaintiffs may face can be remedied before trial. As such, the Court will
deny Plaintiffs' motion to strike.
5.

In their motion for partial summary judgment, Plaintiffs contend that Defendants

are foreclosed from proving indefiniteness at trial because "[a]s a matter oflaw, 'a claim that is
amenable to construction is not invalid on the ground of indefiniteness."' (D.I. 178 at 16) (citing
Microprocessor Enhancement Corp. v. Tex. Instruments, Inv., 520 F.3d 1367, 1376 (Fed. Cir.
2008)) Defendants counter that "[e]ven if a claim term's definition can be reduced to words, the
claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into
meaningfully precise claim scope." (D.I. 207 at 15) (citing Halliburton Energy Services Inv. v.
MI LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008))
6.

A claim is definite if "one skilled in the art would understand the bounds of the

claim when read in light of the specification." Exxon Research & Eng'g Co. v. United States,
265 F.3d 1371, 1375 (Fed. Cir. 2001). "A claim will be found indefinite only if it is insolubly
ambiguous .... " Praxair, Inc. v. ATML Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008).
7.

Plaintiffs ask the Court to decide on summary judgment that the claim term

"peripherally guiding" is not indefinite as a matter of law. To do so, the Court would have to
find that, viewing the evidence in the light most favorable to the non-moving party and making
all reasonable inferences in that party's favor, there is no genuine issue as to any material fact.
See Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307 (Fed. Cir.
1998). "Because a patent is presumed to be valid, the evidentiary burden to show facts
supporting a conclusion of invalidity is one of clear and convincing evidence." Young v.
Lumenis, Inc., 492 F.3d 1336, 1345 (Fed. Cir. 2007). At the summary judgment stage, "the
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determination ofwhether a given factual dispute requires submission to a jury must be guided by
the substantive evidentiary standards that apply to the case." Anderson v. Liberty Lobby, Inc.,
477 U.S. 242,255 (1986). "Consequently, where the ... 'clear and convincing' evidence
requirement applies, the trial judge's summary judgment inquiry as to whether a genuine issue
exists will be whether the evidence presented is such that a jury applying that evidentiary
standard could reasonably find for either the plaintiff or the defendant." !d.
8.

Determining whether one of ordinary skill in the art can understand what is

claimed by an allegedly indefinite claim term is the central inquiry in making an indefiniteness
determination. See Halliburton, 514 F .3d at 1251. It is, therefore, appropriate for the Court to
consider extrinsic evidence relating to whether one of ordinary skill in the art would be capable
ofunderstanding the claim containing the allegedly indefinite term. See, e.g., Dow Chern. Co. v.
Nova Chern. Corp., 629 F. Supp. 2d 397, 407 (D. Del. 2009) (relying on testimony of named
inventor of patents-in-suit to find that summary judgment of no indefiniteness was inappropriate
because genuine dispute of material fact existed).
9.

Defendants present deposition testimony of Mr. Jean-Marc Auriol, one of the

named inventors ofthe patents-in-suit, wherein he testified that he did not understand what the
term "peripherally guiding" meant. (D.I. 209 Ex. 51) It does not appear that Mr. Auriol took the
Court's construction into account when he made that determination. (/d.) It is also unclear
whether Mr. Auriol -a native French speaker, who was assisted by a translator- fully
understood the question he was being asked. (/d.) (answering several unrelated questions with "I
don't understand") However, at the summary judgment stage, these ambiguities must be
resolved in favor of the non-movant. Therefore, the Court must assume that Mr. Auriol, one of

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at least ordinary skill in the art, understood the question and, given the Court's claim
construction, testified that he was not able to articulate any meaningful understanding of the
"peripherally guiding" term. The Court concludes that, when viewed in the light most favorable
to Defendants, this testimony (and the record as a whole) could permit a reasonable juror to find,
by clear and convincing evidence, that the "peripherally guiding" term cannot be translated by
one of ordinary skill in the art into meaningfully precise claim scope. Accordingly, the Court
will deny Plaintiffs' motion for summary judgment and the issue of indefiniteness will be
presented to the jury at trial.

February 4, 2014
Wilmington, Delaware

UNITED ~hATES DISTRICT JUDGE

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