MYCONE DENTAL SUPPLY CO., INC. v. CREATIVE NAIL DESIGN, INC. et al

Filing 189

MEMORANDUM OPINION. Signed by Chief Judge Jerome B. Simandle on 7/9/2014. (tf, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

MYCONE DENTAL SUPPLY CO.,
INC.,
Plaintiff,

HONORABLE JEROME B. SIMANDLE

Civil Action
No. 11-4380 (JBS/KMW)

v.
CREATIVE NAIL DESIGN, INC., et
al.,

MEMORANDUM OPINION

Defendant.

SIMANDLE, Chief Judge:
This patent case comes before the Court on the motion of
Defendants Creative Nail Design, Beauty Systems Group, East
Coast Salon Services, and SalonCentric (f/k/a Emiliani
Enterprises) (collectively “CND”) to supplement their responsive
claim construction submission with the declaration of Stephen
Spiegelberg. [Docket Item 174.] CND argues that the Supreme
Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014), changed the standard for indefiniteness
such that there is a new standard of proof and a new role for
experts at the claim construction phase when, as in this case,
there are arguments that claims are indefinite. The Court will
grant Defendant’s motion. The Court finds as follows:

1.

The Markman hearing is presently scheduled for July

28, 2014. 1 The parties filed their opening Markman briefs on
November 22, 2013. Response briefs were filed June 3, 2014. The
Nautilus decision was issued on June 2, 2014, and CND filed the
instant motion the next day.
2.

The Patent Act requires that the patent specification

“shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
inventor . . . regards as the invention.” 35 U.S.C. § 112(b).
The Federal Circuit previously interpreted this requirement,
known as the definiteness requirement, to mean that “[o]nly
claims ‘not amenable to construction’ or ‘insolubly ambiguous’
are indefinite.” Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1347 (Fed. Cir. 2005). In Nautilus, the Supreme Court
stated that the Federal Circuit’s “insolubly ambiguous” standard
did not satisfy the definiteness requirement. Nautilus, 134 S.
Ct. at 2124. Instead, the Supreme Court held that “a patent is
invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution
history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.” Id.

1

The Court holds a Markman hearing because “the construction of
a patent, including terms of art within its claim, is
exclusively within the province of the court.” Markman v.
Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
2

3.

In its motion, CND argues that: the Nautilus decision

changed the standard for indefiniteness such that there is a new
standard of proof and a new role for someone skilled in the art;
because the district court must “consider whether a claim term
informs, with reasonable certainty those of skill in the art
about the scope of the invention, expert testimony is especially
relevant,” (CND Br. at 2 (emphasis in CND’s brief)). CND also
argues that the motion is timely because it was filed one day
after Nautilus’ publication, and that Plaintiff will not be
prejudiced because there are several weeks before the Markman
hearing.
4.

In opposition [Docket Item 182], Plaintiff asks the

Court to deny CND’s motion or, if the Court grants the motion,
to grant Plaintiff leave to submit a rebuttal declaration,
depose CND’s expert, and submit a supplemental brief. Plaintiff
asserts that: CND should have filed Spiegelberg’s declaration
with its opening Markman brief; Nautilus did not establish a
heightened need for expert testimony; Nautilus did not change
the perspective from which definiteness should be analyzed,
i.e., the perspective of a person of ordinary skill; and CND’s
untimely expert declaration would disrupt the claim construction
process because the parties briefed their claim construction
positions based on a record without expert testimony.

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5.

In reply [Docket Item 186], CND agrees that claims

must be viewed from the perspective of one with ordinary skill
in the art. But CND argues that the Nautilus standard enhances
the need for expert testimony because “it would be helpful to
the Court, when determining whether or not one of skill in the
art would understand the scope of the claims with ‘reasonable
certainty,’ to hear from experts regarding how one of ordinary
skill in the art would understand the scope of the claims,” (CND
Reply at 3), and the new standard’s focus on reasonableness
“invites expert testimony as to what one of ordinary skill in
the art would reasonably understand,” (Id. (emphasis in
original)). If its motion is granted, CND argues that
depositions are unnecessary and expert declarations alone are
sufficient.
6.

On July 30, 2014, Defendant Dymax Corporation, which

is proceeding separately from the CND Defendant group and which
also argued indefiniteness for some claim terms, joined CND’s
request to rely on Spiegelberg’s declaration. [Docket Item 185.] 2
Plaintiff opposed Dymax’s attempt to join CND’s motion because
Dymax never previously disclosed its intent to rely on an
expert, Dymax submitted its letter after Plaintiff filed its

2

Defendant SalonCentric also joined CND’s motion via letter
[Docket Item 187], although this letter seems unnecessary
because SalonCentric was named in CND’s notice of motion as one
of the Defendants on whose behalf the motion was filed.
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opposition, and Dymax’s conduct contravened the Court’s rules
regarding orderly claim construction submissions and briefing.
[Docket Item 188.]
7.

The Court will now turn to its analysis.

8.

The Court expects that indefiniteness arguments will

be substantial at the upcoming Markman hearing. The gravamen of
this case is Keystone’s allegation that Defendants are
infringing Keystone’s United States Patent No. 5,965,147 (“the
‘147 Patent”), which embodies Keystone’s invention of a
toxicologically- and dermatologically-safe nail coating product
comprised of a substantially acid-free hydrophilic acrylate
monomer gel. In the Amended Joint Construction statement [Docket
Item 180], CND contends that several claim terms are indefinite,
including “substantially acid-free,” “liquid substantially acidfree hydrophilic acrylate monomer composition,” “liquid
substantially acid-free hydrophilic monomer composition,” and
“substantially enhances adhesion.” The construction of these
terms thus has special significance for the disposition of the
case. The Court therefore recognizes the significance of the
definiteness inquiry to claim construction and the case as a
whole.
9.

Normally, the Local Patent Rules require that any

party intending to rely on expert opinion testimony for Markman
claim construction purposes shall identify the expert and
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service his or her certification or declaration with their
opening Markman declarations, see L. Pat. R. 4.5(a), and any
deposition of an expert is to be concluded within 30 days of
such filing, see L. Pat. R. 4.5(b). Any responding experts’
certification is due 60 days after service of the initial
expert’s certification, that is at least 30 days after the
opportunity to depose the initial expert. See L. Pat. R. 4.5(e).
In the present application, CND seeks to amend these
requirements and compress the time for Plaintiff’s response, all
before the July 28, 2014 Markman hearing, and after all claim
construction submissions had been made. An amendment of the
timetable for disclosure of Markman expert reports, like any
other document required to be exchanged pursuant to the Local
Patent Rules may be made only by Court order upon timely
application and showing of good cause, pursuant to L. Civ. R.
3.7.
10.

The present issue is whether Nautilus changed the

indefiniteness standard such that expert testimony is more
beneficial at the claim construction phase in this case and such
that CND’s late submission can be excused for good cause based
on an intervening change in the law. Nautilus does not
specifically discuss the role of expert testimony at the claim
construction phase. It announced a change in the law by
“revers[ing] the standard previously applied by the Federal
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Circuit for determining indefiniteness.” Adobe Sys. Inc. v.
Wowza Media Sys., LLC, Civ. 11-02243, 2014 WL 2731321, at *1
(N.D. Cal. June 10, 2014). CND argues that, under the new
“reasonable certainty” standard, expert testimony would be
helpful. This argument is reasonable.
11.

It is not unreasonable that CND did not perceive the

need for an expert when the standard was “insolubly ambiguous.”
In explaining the problems with the “insolubly ambiguous”
standard, the Nautilus court noted that “[i]t cannot be
sufficient that a court can ascribe some meaning to a patent's
claims; the definiteness inquiry trains on the understanding of
a skilled artisan at the time of the patent application, not
that of a court viewing matters post hoc.” Id. at 2130 (emphasis
in original). Because the Nautilus court emphasized that the
definiteness inquiry requires reasonable certainty, not simply
some meaning, an expert witness could be helpful in discerning
whether the patent claims would inform a skilled artisan with
reasonable certainty at the time of the invention.
12.

Furthermore, the Supreme Court cited Markman with a

parenthetical explaining that “claim construction calls for ‘the
necessarily sophisticated analysis of the whole document,’ and
may turn on evaluations of expert testimony.” Id. at 2130
(quoting Markman, 517 U.S. at 389). This reference to expert

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testimony could support a greater role for experts in the
definiteness inquiry.
13.

In addition, there are other contexts in which parties

present expert testimony to establish “reasonable certainty.”
See, e.g., Ware v. Rodale Press, Inc., 322 F.3d 218, 226 (3d
Cir. 2003) (affirming district court’s dismissal of breach of
contract claim because “Plaintiff failed to provide any
supporting documentation or expert reports or analysis” and
therefore “failed to present evidence upon which the factfinder
could base a damages calculation to a reasonable certainty”); In
re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 750 (3d Cir. 1994)
(“Pennsylvania requires experts to testify that defendant’s
actions caused plaintiff’s illness with a reasonable degree of
medical certainty”); In re Wilbar Realty, Inc., 325 B.R. 354,
363 n.14 (Bankr. M.D. Pa. 2005) (“[D]amages may be established
with reasonable certainty with the aid of expert testimony,
economic and financial data, market surveys and analyses,
business records of similar enterprises, and the like”)
(quotation omitted).
14.

Plaintiff argues that Nautilus did not change the

perspective, i.e., the perspective of a person of ordinary skill
in the art, from which definiteness should be analyzed and,
therefore, that there is no change in the law necessitating
expert testimony. But Plaintiff misapprehends CND’s argument.
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CND is not asserting that Nautilus changed the perspective such
that an expert’s perspective is now required. CND agrees that
the perspective has not changed. CND’s argument is that this new
standard of proof, which requires “reasonable certainty” as
opposed to a mere determination that a claim is not “insolubly
ambiguous,” benefits from an expert’s opinion in a way that the
previous standard did not. CND reasonably asserts that an expert
declaration could be beneficial in assessing whether a claim
informs a skilled artisan with reasonable certainty.
15.

The Court’s present reading of Nautilus indicates both

that experts may have increased significance in claim
construction in order to illuminate the “reasonable certainty”
standard and that CND’s tardy submission can be excused based on
an intervening change in the law. 3 Nautilus affects an ultimate

3

While no district courts have addressed this issue yet, some
patent practitioners have shared this Court’s view, interpreting
Nautilus to signify an increased role for experts in claim
construction to inform the “reasonable certainty” standard.
E.g., Cooley LLP, Supreme Court Lowers Standard for Proving
Patent Claims Are Indefinite, (June 3, 2014),
http://www.cooley.com/supreme-court-lowers-standard-for-provingpatent-claims-indefinite (“The ‘reasonable certainty’ test may
require expert witness involvement in the claim construction
process . . . . Expert witnesses will be the primary vehicles
for parties to supply opinions on what a person of ordinary
skill understands patent claims to mean with ‘reasonable
certainty.’”); C. Kyle Musgrove, Supreme Court Adopts New
Indefiniteness Standard, Haynes and Boone’s Newsroom (June 2,
2014), http://www.haynesboone.com/supreme-court-adopts-newindefiniteness-standard/ (“the Court’s test seems to open the
door for an increase in the presentation of expert testimony
regarding claim clarity,” noting “the Court’s citation to
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issue in the case and, because indefiniteness is a significant
issue to be adjudicated at claim construction, Nautilus impacts
the Markman proceedings. The Court is not holding that expert
testimony is required or necessary for the upcoming Markman
hearing; nor is the Court holding that expert testimony or
declarations will be dispositive or even persuasive. The Court
is simply holding that CND’s argument that it wishes to present
expert evidence based on the new Nautilus standard is
reasonable.
16.

The present case was filed in 2011 and has experienced

various delays stemming from, inter alia, litigation regarding
whether the case should proceed in the District of New Jersey or
the Southern District of California and adjudication of two
motions to dismiss. Also, an additional defendant was added
during discovery. The Court is loathe to introduce any further
delays. Furthermore, Plaintiff is certainly correct in saying
that CND’s indefiniteness arguments are not new and that CND
could have submitted an expert’s declaration earlier. The Court
is also, however, aware of the importance of the claim
construction proceedings. CND has presented a reasonable
argument, based on a new Supreme Court case, for submitting
additional evidence for the Markman hearing. In weighing the

Markman and the indication that claim construction ‘may turn on
evaluations of expert testimony’”).
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tension between preventing delay and ensuring completeness based
on new law, the Court will emphasize completeness and permit the
parties to respond to Nautilus with briefing and with expert
submissions, if they so choose.
17.

The Court will grant CND’s motion. CND may supplement

its claim construction briefing with Spiegelberg’s declaration.
Dymax may also rely on Spiegelberg’s declaration.
18.

The Court will grant Plaintiff’s request to depose

Spiegelberg. CND argued that declarations are sufficient at the
claim construction phase, but the Court disagrees. The Court is
mindful of the Federal Circuit’s admonition that “extrinsic
evidence consisting of expert reports and testimony . . . can
suffer from bias . . . . The effect of that bias can be
exacerbated . . . if the expert’s opinion is offered in a form
that is not subject to cross-examination.” Phillips v. AWH
Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005). If the parties will
be permitted to supplement their claim construction submissions,
then there must be an opportunity for depositions.
19.

In addition, in order to cure any prejudice to

Plaintiff from CND’s late submission, the Court will permit
Plaintiff to depose Spiegelberg before Plaintiff must decide
whether it will submit an expert declaration in response to
Spiegelberg’s declaration. This follows the premise of L. Pat.
R. 4.5(b), supra, that an initial Markman expert’s deposition be
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obtained before the opponent is required to decide whether it
will also introduce a responding expert.
20.

The Court will hold a telephone conference on July 10,

2014 at 4:00 p.m. with the parties to set forth a schedule for
Plaintiff to obtain Spiegelberg’s deposition and to determine
whether it will also submit a responding expert’s declaration,
and for deposition of the responding expert if desired by
Defendant, and for supplemental briefing. The Court continues to
have the goal of convening the Markman hearing on July 28th if
feasible. An accompanying Order will be entered.

July 9, 2014
Date

s/ Jerome B. Simandle
JEROME B. SIMANDLE
Chief U.S. District Judge

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