Semiconductor Energy Laboratory Co., Ltd. v. Samsung Electronics Co., Ltd. et al

Filing 134

ORDER denying 97 Motion Requesting Claims Construction ; denying 99 Motion Requesting Claims Construction. Signed by Chief Judge Barbara B. Crabb on 11/4/2009. (llj)

IN THE UNITED STATES DISTRICT COURT FO R THE WESTERN DISTRICT OF WISCONSIN

SEMICONDUCTOR ENERGY L AB O R AT O R Y CO., LTD., P l a i n t i ff , v. S AM S U N G ELECTRONICS CO., LTD., S -L C D CORPORATION, SAMSUNG E L EC T R O N IC S AMERICA, INC., and SAM SUN G TELECOMMUNICATIONS A M ER IC A, LLC, D efendan ts.

OR DER 0 9 - cv -0 1 - b b c

In this patent infringement lawsuit, plaintiff Semiconductor Energy Laboratory C o m p an y, Ltd. has requested the construction of five claim terms and defendants Samsung E lectro n ics Company, Ltd., S-LCD Corporation, Samsung Electronics America, Inc. and S am sung Telecommunications America, LLC have requested the construction of 11 claim term s. On May 1, 2009, Magistrate Judge Stephen L. Crocker entered an order setting out this court's rules for requesting construction of claim terms before summary judgment. The ord er stated "[i]t is the party's burden to persuade the court that construction of each specified term is necessary to resolve a disputed issue concerning infringement or invalidity."

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Prelim. Pretrial Conf. Order, dkt. #37, at 2. Although both parties submitted lengthy initial an d response briefs arguing their respective positions on the construction of certain claim term s, neither met its burden with respect to the need for claims construction. In an attempt to explain the need for claim construction, plaintiff included a table w i th only vague phrases, such as "will resolve infringement dispute," "clarify uncommon term of art for fact finder," "will reduce scope of prior art for validity analysis." Plt.'s Br., dkt. #100, at 13, 58 and 60. Although defendants provided complete sentences, the closest they came to complying with the order was asserting without explanation that claim con struction will "inform the parties" about which of the hundreds of the accused products sa tisfy the claim limitation in question and will "potentially narrow the issues" for trial. D f t.'s Br., dkt. #101, at 59, 64 and 66. The reason for the order is not to require parties to parrot its language before the co urt construes claim terms; it is to avoid devoting judicial resources to the issuance of ad viso ry opinions on the construction of claim terms about which the parties have no con crete dispute. Claims construction is not an academic exercise. As much as the parties m ay hate to show their hands at this early stage, they must do so if they hope to seek the benefit of claim construction before filing motions for summary judgment. Because the p a rties have disregarded the order and failed to demonstrate the basis for requesting construction of the terms they dispute, their motions requesting claim construction will be denied.

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O f course, this ruling does not mean they are forever barred from seeking construction o f claim terms. The parties are free to seek construction of claim terms when they file m o t i o n s for summary judgment, at which time terms will be construed to the extent necessary to resolve the parties' disputes on issues of infringement and invalidity. The parties have lost only the benefit of receiving some answers before then.

ORDER IT IS ORDERED that plaintiff Semiconductor Energy Laboratory Company, Ltd.'s m o tio n for claims construction, dkt. #97, and the motion of defendants Samsung E lec tro n ics Company, Ltd., S-LCD Corporation, Samsung Electronics America, Inc. and Sam sung Telecommunications America, LLC requesting claims construction, dkt. #99, are D EN IED . No claims construction hearing will be held on November 20, 2009. Entered this 4t h day of November, 2009. B Y THE COURT: /s/ _ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ _ __ _ B AR B AR A B. CRABB D istrict Judge

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