Exergen Corporation v. Brooklands Inc.

Filing 81

Judge Richard G. Stearns: ORDER entered Limiting the Scope of the Markman Hearing. "An exploration of the Wands factors is both premature and beyond the limited intended scope of the Markman process. Accordingly, the court will not permit expert testimony on enablement at the claim construction hearing and reserve the issue for either summary judgment or trial."Associated Cases: 1:13-cv-10628-RGS, 1:12-cv-12243-DPW, 1:13-cv-11243-DJC(RGS, int2)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 12-12243-DPW
EXERGEN CORPORATION
v.
BROOKLANDS, INC.
___
CIVIL ACTION NO. 13-10628-RGS
EXERGEN CORPORATION
v.
KAZ USA, INC.
___
CIVIL ACTION NO. 13-11243-DJC
EXERGEN CORPORATION
v.
THERMOMEDICS, INC. and
SANOMEDICS INTERNATIONAL HOLDINGS, INC.
___
ORDER LIMITING THE SCOPE OF THE MARKMAN HEARING
August 1, 2014
STEARNS, D.J.

In its Markman briefs, KAZ raises issues of enablement in the context
of claim construction, suggesting that certain terms should be construed in
accordance with what it argues is the only enabled embodiment of the
invention. The court will not resolve the question of enablement at the
Markman hearing on August 13, 2014.
As the Federal Circuit recently cautioned, courts should “not to allow
claim construction to morph into a mini-trial on validity.” Hill-Rom Servs.,
Inc. v. Stryker Corp., 2014 WL 2898495, at *4 (Fed. Cir. June 27, 2014).
Although enablement is ultimately a question of law, “whether one skilled
in the art could make and use the claimed invention without undue
experimentation is . . . based on underlying findings of fact . . . not a single,
simple factual determination, but rather [] a conclusion reached by
weighing many factual considerations.”

Warner-Lambert Co. v. Teva

Pharm. USA, Inc., 418 F.3d 1326, 1337 (Fed. Cir. 2005) (citations omitted).
Factors to be considered in determining whether a disclosure
would require undue experimentation . . . include (1) the
quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

2

An exploration of the Wands factors is both premature and beyond
the limited intended scope of the Markman process. Accordingly, the court
will not permit expert testimony1 on enablement at the claim construction
hearing and reserve the issue for either summary judgment or trial. 2
SO ORDERED.
/s/ Richard G. Stearns
__________________________
UNITED STATES DISTRICT JUDGE

In any case, Dr. Bowman’s brief declaration does not adequately
discuss and evaluate the Wands factors.
1

Because of “the factual nature of the inquiry in this case,
[enablement] is amenable to resolution by the jury.” BJ Servs. Co. v.
Halliburton Energy Servs., Inc., 338 F.3d 1368, 1371 (Fed. Cir. 2003).
2

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