Core Wireless Licensing S.a.r.l. v. LG Electronics, Inc. et al

Filing 573

ORDER ADOPTING REPORT AND RECOMMENDATIONS for 532 Report and Recommendations, 276 Sealed Motion, filed by LG Electronics, Inc., LG Electronics MobileComm U.S.A., Inc.. Signed by Judge Rodney Gilstrap on 9/12/2016. (nkl, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

CORE WIRELESS LICENSING
S.A.R.L.,
v.
LG ELECTRONICS, INC., AND LG
ELECTRONICS MOBILECOMM
U.S.A., INC.

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Case No. 2:14-cv-911-JRG-RSP
(lead)
Case No. 2:14-cv-912-JRG-RSP

ORDER ADOPTING MAGISTRATE JUDGE’S REPORT AND RECOMMENDATION
DENYING DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
Before the Court is LG’s 1 Objection (Dkt. No. 550) to the Magistrate Judge’s Report and
Recommendation Denying Summary Judgment of Invalidity pursuant to 35 U.S.C. §§ 101 and 112
(Dkt. No. 532).
LG’s Objection challenges the portion of the Magistrate Judge’s Report and
Recommendation that denied its motion for summary judgment of invalidity for lack of
enablement. LG argues it is undisputed that the specification does not teach one of ordinary skill in
the art how to practice the inoperative embodiments of the asserted claim. The Magistrate Judge
correctly rejected this argument and held that “[t]he relevant enablement question is whether
‘undue experimentation’ is required to identify and practice the operative embodiments.” (Dkt.
No. 532 at 10.) LG has not offered evidence that any experimentation is necessary to identify
which embodiments are operative versus inoperative, or that any experimentation would be needed
to practice the operative embodiments.
LG also argues that the Magistrate Judge improperly cited law relating to inoperability
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“LG” is Defendants LG Electronics, Inc. and LG Electronics Mobilecomm U.S.A., Inc.

under 35 U.S.C. § 101. See, e.g. CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1339 (Fed.
Cir. 2003). LG correctly argues that a claim may pass the § 101 inoperability test but nevertheless
fail the § 112 enablement test. However, the Magistrate Judge cited CFMT in the legal background
section of the Report and Recommendation when discussing the legal import of inoperative
embodiments. The portion of the Report and Recommendation that contains the Magistrate Judge’s
ruling on the enablement issue does not cite to or rely on CFMT and related cases. Accordingly,
there is no indication that the Magistrate Judge misapplied CFMT.
The Court has reviewed the entirety of the Magistrate Judge’s Report and Recommendation
de novo in light of LG’s summary judgment briefing and LG’s Objection. The Court discerns no
error in the Magistrate Judge’s conclusions and the Court therefore adopts the conclusions of the
.
Report and Recommendation that Defendants are not entitled to summary judgment. 28 U.S.C. §
636(b)(1)(C); FED.R.CIV.P. 72(b)(3). Accordingly, Defendants’ Objections are OVERRULED
and the Magistrate Judge’s Report and Recommendation Denying Defendants’ Motion for
Summary Judgment of Invalidity pursuant to 35 U.S.C. §§ 101 and 112 (Dkt. No. 532) is hereby
ADOPTED.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 12th day of September, 2016.

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RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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