Composite Resources Inc v. Recon Medical LLC

Filing 159

ORDER - The Court makes clear for the record that Defendant Recon's Indefiniteness Motion for Summary Judgment (ECF No. 91 ) is denied. Signed by Judge Miranda M. Du on 7/22/2019. (Copies have been distributed pursuant to the NEF - DRM)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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***

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COMPOSITE RESOURCES INC.,

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Plaintiff/Counter Defendant,

Case No. 2:17-cv-01755-MMD-VCF
ORDER

v.
RECON MEDICAL LLC,

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Defendant/Counter Claimant.

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This is a patent, trademark, and unfair competition case about tourniquets used to

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stop the flow of blood to a body part when that body part is severely injured. Before the

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Court is Defendant/Counter Claimant Recon Medical LLC’s (“Recon”) letter (“Letter”),

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inquiring as to the status of the Court’s ruling on Recon’s earlier-filed motion for summary

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judgment on invalidity of two of the patents-in-suit based on an indefiniteness argument

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(“Indefiniteness MSJ”). (ECF Nos. 156 (Letter), 91 (Indefiniteness MSJ).) To start, the

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Court expresses its appreciation to Recon for using the LR IA 7-1 procedure and filing the

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Letter. As further explained below, the circumstances here show the LR IA 7-1 procedure

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is working as intended. However, as also explained below, the Indefiniteness MSJ was

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and is denied.

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The Court denied the Indefiniteness MSJ as moot when Plaintiff/Counter Defendant

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Composite Resources Inc. (“CRI”) was permitted to file its second amended complaint

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(“SAC”) (ECF No. 106), and marked the Indefiniteness MSJ as resolved in its internal

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recordkeeping system, but omitted any mention of this decision in the corresponding

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minute order (ECF No. 105 (denying other pending motions as moot and without prejudice

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in light of CRI being permitted to file the SAC)). This was a clerical oversight on the Court’s

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part, which was discovered upon further investigation after Recon submitted the Letter.

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The Court thus did not address the Indefiniteness MSJ in subsequent orders. But

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despite the clerical oversight, the Court made the right decision when it denied the

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Indefiniteness MSJ as moot. The SAC mooted the earlier-filed Indefiniteness MSJ

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because the SAC superseded the prior version of CRI’s complaint. See, e.g., Hal Roach

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Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1546 (9th Cir. 1989) (“an amended

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pleading supersedes the original.”).

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Further, the Indefiniteness MSJ was premature. Recon filed the Indefiniteness MSJ

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after the Court held the claim construction hearing (ECF No. 78), but before the Court

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issued its claim construction order in this case (ECF No. 103). It was premature to file a

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motion explicitly based on terms in the asserted claims, without any evidence beyond

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Recon’s view of the claims’ meaning, before the Court issued its claim construction order.

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In addition, the Court reiterates (see ECF No. 152 at 13) that it is unpersuaded by

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Recon’s argument at the heart of the Indefiniteness MSJ (ECF No. 91 at 9-14). As the

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Court stated in its recent order resolving several other motions for summary judgment, the

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Court finds that the holding from IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377,

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1384 (Fed. Cir. 2005), does not apply to the claims at issue in this case. (ECF No. 152 at

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13.) Said otherwise, “[t]he limitations at issue here . . . focus on the capabilities of the

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system, whereas the claims in IPXL Holdings (“the user uses the input means”) . . . focus

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on specific actions performed by the user.” MasterMine Software, Inc. v. Microsoft Corp.,

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874 F.3d 1307, 1316 (Fed. Cir. 2017) (reversing in pertinent part the district court’s

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determination that certain claims were invalid as indefinite under IPXL Holdings and its

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progeny). “Even if a claim makes reference to user action, it is indefinite only if it explicitly

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claims the user’s act, and not if it claims only the system’s capability to receive and

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respond to user action.” Acceleration Bay LLC v. Activision Blizzard, Inc., Case No. CV

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16-453-RGA, 2017 WL 6508715, at *11 (D. Del. Dec. 20, 2017) (quoting Mastermine, 874

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F.3d at 1316) (internal quotation marks and punctuation removed and altered); see also

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id. at *12 (finding claims not indefinite). The claims at issue in the two patents-in-suit Recon

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challenged in the Indefiniteness MSJ fall into this valid category, not the category of invalid

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claims featured in IXPL Holdings. In sum, the Court remains substantively unpersuaded

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by the argument Recon made in the Indefiniteness MSJ.

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For the foregoing reasons, the Court will now make clear for the record that
Defendant Recon’s Indefiniteness MSJ (ECF No. 91) is denied.
DATED THIS 22nd day of July 2019.

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MIRANDA M. DU
UNITED STATES DISTRICT JUDGE

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