EMSAT Advanced Geo-Location Technology, LLC et al vs. Alltel Corp., et al
Filing
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Opinion and Order: Defendants' motion to modify the Revised Case Management Plan is denied. Moreover, defendants' motion for summary judgment on the issue of priority is denied without prejudice. (Related Doc # 102 , 101 ). Judge Sara Lioi on 9/30/2014. (P,J)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
EMSAT ADVANCED
GEO-LOCATION TECHNOLOGY,
LLC, et al.,
PLAINTIFFS,
vs.
[1] CELLCO PARTNERSHIP;
[2] SPRINT SPECTRUM, L.P.
[3] ALLTEL COMM’N, LLC;
[4] U.S. CELLULAR CORP.; and
[5] VIRGIN MOBILE USA, L.P., et al.,
DEFENDANTS.
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[1] CASE NO.
[2] CASE NO.
[3] CASE NO.
[4] CASE NO.
[5] CASE NO.
4:08CV816
4:08CV818
4:08CV821
4:09CV2313
4:09CV2815
JUDGE SARA LIOI
OPINION AND ORDER
In these consolidated patent cases, defendants have moved to modify the Case
Management Plan Part I (see, e.g., Case No. 4:08CV816, Doc. No. 93).1 Plaintiffs oppose the
motions (see, e.g., Doc. No. 95), and defendants have replied (see, e.g., Doc. No. 96).
I.
BACKGROUND
There have already been lengthy delays in these cases, each of which was at the
request of defendants. Filed in 2008 and 2009, these cases were originally stayed in March 2009,
pending re-examination of the subject patents by the Patent and Trademark Office. (See Non-Doc.
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Substantially similar motions were filed in each case. For the sake of convenience and clarity, all citations to the
parties’ filings will be to the lead case, Case No. 4:08CV816. The Court’s discussion and analysis applies equally,
however, to each case and to each motion to modify.
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Order, Mar. 31, 2009.) The first stay was lifted in April 2009, and defendants soon moved to
reinstate the stay. (Doc. No. 45.) That motion was granted, and the Court reinstated the stay on
May 22, 2009. (Doc. No. 46.)
The cases were still stayed, pending reexamination, when they were transferred to
the undersigned on December 6, 2010. On January 29, 2014, for good cause shown, the Court
lifted the stay, and, on February 21, 2014, the Court conducted a Case Management Conference,
during which the Court discussed with counsel and the parties new dates and deadlines that would
govern the case. After receiving proposed dates from the parties, the Court issued a Revised Case
Management Plan Part I that set forth dates and deadlines for the exchange of infringement and
other contentions and claim construction. (Doc. No. 81.) With respect to claim construction, the
Court scheduled a tutorial on the governing science for January 29, 2015, and set January 30, 2015
as the date for the Markman hearing.
Defendants have now moved to further modify the schedule to permit the Court
time, prior to claim construction, to address the question of whether plaintiffs are entitled to claim
1991 or 1996 as the priority date for the ‘822 patent. According to defendants, “this threshold issue”
must be resolved prior to claim construction because “claims must be interpreted from the
perspective of those skilled in the art at the time of the invention.” (Mot. at 3040-41 [quoting
Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)]) (emphasis added). Without
leave of court, defendants have also moved for summary judgment on the issue of the priority date
for the ‘822 patent (Doc. No. 92).
I.
LAW AND ANALYSIS
A district court has broad discretion to manage its docket and control the manner in
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which its cases progress. See Gould v. Control Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir.1983).
Defendants suggest that it is “logical” to disturb the Court’s carefully crafted schedule and take the
issue of priority out of order to resolve it prior to claim construction. (Doc. No. 93 at 3033.)
Defendants admit, however, that their proposed revision will result in additional delays.
The very approach advocated for by defendants was denounced by Federal Circuit
Judge Jimmie Reyna in X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358 (Fed. Cir.
2014) (Reyna, J., concurring). While defendants complain that Judge Reyna’s observations were
contained in a concurring opinion, the analysis is, nonetheless, instructive and persuasive.
In X2YAttentuators, Judge Renya agreed with the majority that the claim terms had
been properly construed but wrote separately “to address an error in the claim construction
approach adopted by the ALJ and the Commission.” Id. at 1363. Specifically, he criticized the ALJ
and the Commission because they “failed to objectively construe the asserted clams before
deciding whether the claims were entitled to priority.” Id. Judge Renya gave three reasons why this
approach was erroneous.
First, it is well settled that a written description analysis depends on a proper claim
construction because, among other reasons, a claim is entitled to the priority date of
an earlier application only if the earlier specification provides sufficient written
support for the full scope of the claim. Where the claims have not been properly
construed, the full scope of the claim is unknown, thereby rendering baseless any
determination of written support in an earlier patent. It follows that entitlement to
priority cannot be decided without first construing the asserted claims. Similarly, it
is improper to construe claims with the goal of arriving at a particular priority date,
a measure that would violate a tribunal’s independent obligation to determine the
meaning of the claims, notwithstanding the views asserted by the adversary parties.
Second, it is improper to “hold” the patentee to a priority date that is asserted as a
defense to an invalidity challenge without first construing the claims and resolving
invalidity issues. To be clear, invalidity considerations may inform claim
construction in limited circumstances, but they cannot dictate the process . . . And
third, it was erroneous to treat X2Y’s attempt to overcome allegedly invalidating
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prior art through a priority claim as an attempt to “recast” its patents. X2Y had a
right to advocate for a broad claim construction that might ultimately find no
support in the earlier patents to which it claimed priority. . . . Indeed, it is well
established that a patentee may argue in the alternative for different priority dates at
trial.
Id. at 1365 (internal quotation marks, citation marks, and paragraph breaks omitted).
Similarly here, without first establishing the scope of the asserted claims, it would
be impossible to determine whether plaintiffs are entitled to a particular priority date. Likewise, it
would be improper to let an asserted defense dictate claim construction, or to unfairly restrict
plaintiffs from advocating for alternative priority dates. The Court will not permit the tail to wag
the dog.2 See Nextec Applications v. Brookwood Cos., Inc., 703 F. Supp. 2d 390 n.28 (S.D.N.Y.
2010) (“whether the written description in the priority applications is adequate to entitle a
later-issued patent to the benefit of an earlier filing date is a separate issue from claim construction,
and is to be analyzed separately after the claims have been construed”) (citing Koninklijke Philips
Elecs. N.Y. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1336 (Fed. Cir. 2010) (“A district court
must base its analysis of written description under § 112 on proper claim construction. . . . On
remand, the district court must construe [the disputed claims] in light of the . . . written description
and then determine whether the [predecessor] application’s written description satisfies §
112. . . .”)) (emphasis added).
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rely upon the decision in Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1258 (Fed. Cir. 2004) for the
proposition that, “[w]hen different disclosures lead to inconsistent claim scope, the Federal Circuit recognizes that
courts may resolve the issues of priority and invalidity ‘without reaching this complex claim construction question.’”
(Doc. No. 96 at 3111 [citing Chiron, 363 F.3d at 1258].) Chiron is not helpful for several reasons. First, it does not
appear from the decision that the district court addressed the issue of priority prior to resolving claim construction, and,
on appeal, the Federal Circuit specifically noted that the parties did not challenge the district court’s claim
construction in the first instance. Id. at 1254. Second, the Federal Circuit did not condone the practice of tackling
priority before claim construction. Rather, it merely held that the “jury’s verdict of invalidity” was supported by the
record, such that it was not necessary to address a complicated claim construction issue. Id. at 1258.
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II.
CONCLUSION
For all of the foregoing reasons, defendants’ motions to modify the Revised Case
Management Plan are denied. Moreover, defendants’ motions for summary judgment on the issue
of priority are denied without prejudice.
IT IS SO ORDERED.
Dated: September 30, 2014
HONORABLE SARA LIOI
UNITED STATES DISTRICT JUDGE
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