UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS WACO DIVISION
ALIGN TECHNOLOGY, INC., § § Plaintiff, § § v. § CIVIL NO. W-24-CV-00187-ADA-DTG § CLEARCORRECT OPERATING, § LLC, CLEARCORRECT HOLDINGS, § INC., INSTITUT STRAUMANN AG, § § Defendants.
ORDER ON DISCOVERY DISPUTE Three days before the deadline to serve its opening claim construction brief, Defendant submitted a discovery dispute chart, which is attached as Exhibit 1 to this Order. See ECF No. 71 (Scheduling Order). Because of the extremely high volume of claims Plaintiff has asserted, De- fendant requests that either Plaintiff be ordered to cut the number of asserted claims drastically or that the parties be allowed to “brief 8 disputed terms for construction, in addition to the pro- posed [22] means-plus-function issues.” Defendant also requests a hearing and that its opening brief deadline be moved to three days after the Court issues an order on the dispute. Because Defendant raised this issue with the Court three days before its opening claim construction brief is due, Defendant’s request for a hearing is DENIED. The parties were re- quired to exchange claim terms on October 3, 2024, exchange proposed constructions on Octo- ber 10, 2024, and exchange extrinsic evidence on October 17, 2024. See ECF No. 71. Defendant had ample opportunity to raise this issue in advance of its briefing deadline. The Court is sympathetic, however, to the volume of patents and claims being asserted. As such, the Court will permit the parties to brief up to eighteen (18) terms with page limits as stated in the January 23, 2024, Standing Order Governing Proceedings (OGP) 4.4–Patent Cases. Further, in light of footnote 1 in the chart, the Court reminds the parties that the Schedul- ing Order requires that Defendant’s opening claim construction brief include “any arguments that any claim terms are indefinite.” Jd. at 3. SIGNED this 29th day of October, 2024.
A r. beet A UNITED STATES MAGISTRATE JUDGE
EXHIBIT 1 Issue ClearCorrect’s Position Align’s Position Whether Despite asserting 179 claims across The Court rejected ClearCorrect’s pri- there should nine patents, Align has not agreed to or request to force case narrowing, and be modifica- any proposed enlargement of the the Court’s rules already reflect en- tions to the Court’s default limit on the number of larged briefing. OGP, 7-8 (for 5+ pa- presumed claim terms. ClearCorrect has already tents, allowing 12 terms). limit on the significantly narrowed its proposed number of terms.1 In view of the current October Seeking reconsideration, ClearCorrect terms for 31 opening Markman brief deadline, again requests early narrowing. Alter- construction. ClearCorrect can no longer wait for natively, ClearCorrect seeks to broaden Align. the terms for construction by 250% and delay its opening brief. The Court Align should reduce to no more than should deny both requests. 75 asserted claims by October 29. Align could undoubtedly shrink the Number of Terms. ClearCorrect con- number of terms-at-issue by narrowing tends 22 terms are indefinite. With its its case, particularly where many terms “8 disputed terms,” ClearCorrect seeks appear in just a handful of asserted leave to brief 30 terms. claims; Align’s argument here that 14 terms appear in just two claims of one Blaming Align, ClearCorrect argues asserted patent confirms this. Courts that Align “could undoubtably shrink require pre-Markman claim narrowing the number of terms” that ClearCor- for this reason. See Rule 26(f) Report, rect proposed. The Court has rejected Dkt. 59, 19-20 (ClearCorrect collecting arguments exactly like ClearCorrect’s. cases). In SitePro, Inc. v. WaterBridge Res., Align has refused to meaningfully nar- LLC, the defendant sought leave to row its case, dropping only 4 of 183 brief extra terms via a dispute chart claims to date. And although the Court and, when that failed, briefed them an- previously declined to order narrow- yway. No. 23-cv-115-ADA-DTG, ing, this dispute confirms that such 2023 WL 10366528, at *1 (W.D. Tex. limits are necessary now. Align has Nov. 21, 2023). It then argued that not identified any specific discovery it Section 112(f) justified briefing 20 needs to narrow, nor could it: it has means-plus-function terms. Id., ECF had months of discovery, including No. 60 at 2-4. Deeming those argu- ClearCorrect’s invalidity contentions ments “inadequate,” the Court limited and core technical production. Align construction to 15 terms. Id., 2023 should not be allowed both assert an WL 10366528, at *1–2. As in SitePro, unwieldy number of claims and refuse ClearCorrect is not entitled to brief to adjust the default Markman limits. every conceivable issue.
To the extent the Court does not order Kemco does not help ClearCorrect. Align to narrow its claims now, Kemco dealt with how—not when—to ClearCorrect requests that the Court construe a 112(f) term. It is “well es- authorize the parties to brief 8 disputed terms, in addition to proposed means- tablished” that courts may “limit[] the plus-function terms. number of terms they construe at any one pretrial proceeding.” Eon CorpIP First, the number of terms ClearCor- Holdings LLC v. Aruba Networks Inc, rect proposes is reasonable: 62 F. Supp. 3d 942, 953 (N.D. Cal. 2014) (construing “six terms” parties • 22 are means-plus-function terms identified as “likely to be most signifi- subject to § 112 ¶ 6 that Align does cant to resolving the parties’ dispute”). not dispute the Court “must con- strue.” Kemco Sales v. Control ClearCorrect’s request is prejudicial. Papers, 208 F.3d 1352, 1360 (Fed. Even if its arguments overlap, that Cir. 2000); 35 U.S.C. §112(f) does not justify briefing 2.5x the de- (“shall construe”). fault number. ClearCorrect is wrong • Of the only 8 remaining disputed that Align “categorical[ly] rejected any terms, 4 recite particular treatment potential expansion of the presumed “pattern[s]” and raise virtually limit.” After ClearCorrect disclosed 55 identical Markman issues. terms, Align suggested it might brief up to 18—if ClearCorrect narrowed its SitePro does not help Align because: terms to 18 before the claim construc- (1) the defendant “did not seek leave of tion exchange. ClearCorrect declined. Court to” exceed the presumed limits before submitting its brief (ClearCor- Early Claim Narrowing. The sched- rect has); nonetheless (2) the Court uling order sets two claim narrowing granted “an expansion of the presump- dates. ECF No. 71 at 4. Those dates tive limit on terms” given the number account for many inputs into that deci- of asserted patents/claims (fewer than sion—the Markman order, final con- here). 2023 WL 10366528, at *1-2. tentions, and fulsome discovery. To Eon, an out-of-district case, is similarly modify those dates, ClearCorrect must unhelpful to Align where the court ad- show good cause. FRCP 16(b)(4). dressed the disputed “means” terms. Neither its earlier nor its latest request 62 F. Supp. 3d at 948-50. does so. (ECF No. 71 at 4.)
Second, Align’s categorical rejection ClearCorrect’s argument—that Align’s of any potential expansion of the pre- asserted claims are excessive—fails. sumed limit is inconsistent with the 13 claims, including their parent OGP, which contemplates: “the Court claims, contain all of ClearCorrect’s [may] grant[] leave for additional proposed terms. To illustrate, terms to be construed” beyond the pre- ClearCorrect proposes 14 terms from sumptive limit. OGP(v.4.4), 7, 14. ’444 claims 18 and 20 (inclusive of Such modifications are appropriate their parent claims). Even if Align re- here.
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UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS WACO DIVISION
ALIGN TECHNOLOGY, INC., § § Plaintiff, § § v. § CIVIL NO. W-24-CV-00187-ADA-DTG § CLEARCORRECT OPERATING, § LLC, CLEARCORRECT HOLDINGS, § INC., INSTITUT STRAUMANN AG, § § Defendants.
ORDER ON DISCOVERY DISPUTE Three days before the deadline to serve its opening claim construction brief, Defendant submitted a discovery dispute chart, which is attached as Exhibit 1 to this Order. See ECF No. 71 (Scheduling Order). Because of the extremely high volume of claims Plaintiff has asserted, De- fendant requests that either Plaintiff be ordered to cut the number of asserted claims drastically or that the parties be allowed to “brief 8 disputed terms for construction, in addition to the pro- posed [22] means-plus-function issues.” Defendant also requests a hearing and that its opening brief deadline be moved to three days after the Court issues an order on the dispute. Because Defendant raised this issue with the Court three days before its opening claim construction brief is due, Defendant’s request for a hearing is DENIED. The parties were re- quired to exchange claim terms on October 3, 2024, exchange proposed constructions on Octo- ber 10, 2024, and exchange extrinsic evidence on October 17, 2024. See ECF No. 71. Defendant had ample opportunity to raise this issue in advance of its briefing deadline. The Court is sympathetic, however, to the volume of patents and claims being asserted. As such, the Court will permit the parties to brief up to eighteen (18) terms with page limits as stated in the January 23, 2024, Standing Order Governing Proceedings (OGP) 4.4–Patent Cases. Further, in light of footnote 1 in the chart, the Court reminds the parties that the Schedul- ing Order requires that Defendant’s opening claim construction brief include “any arguments that any claim terms are indefinite.” Jd. at 3. SIGNED this 29th day of October, 2024.
A r. beet A UNITED STATES MAGISTRATE JUDGE
EXHIBIT 1 Issue ClearCorrect’s Position Align’s Position Whether Despite asserting 179 claims across The Court rejected ClearCorrect’s pri- there should nine patents, Align has not agreed to or request to force case narrowing, and be modifica- any proposed enlargement of the the Court’s rules already reflect en- tions to the Court’s default limit on the number of larged briefing. OGP, 7-8 (for 5+ pa- presumed claim terms. ClearCorrect has already tents, allowing 12 terms). limit on the significantly narrowed its proposed number of terms.1 In view of the current October Seeking reconsideration, ClearCorrect terms for 31 opening Markman brief deadline, again requests early narrowing. Alter- construction. ClearCorrect can no longer wait for natively, ClearCorrect seeks to broaden Align. the terms for construction by 250% and delay its opening brief. The Court Align should reduce to no more than should deny both requests. 75 asserted claims by October 29. Align could undoubtedly shrink the Number of Terms. ClearCorrect con- number of terms-at-issue by narrowing tends 22 terms are indefinite. With its its case, particularly where many terms “8 disputed terms,” ClearCorrect seeks appear in just a handful of asserted leave to brief 30 terms. claims; Align’s argument here that 14 terms appear in just two claims of one Blaming Align, ClearCorrect argues asserted patent confirms this. Courts that Align “could undoubtably shrink require pre-Markman claim narrowing the number of terms” that ClearCor- for this reason. See Rule 26(f) Report, rect proposed. The Court has rejected Dkt. 59, 19-20 (ClearCorrect collecting arguments exactly like ClearCorrect’s. cases). In SitePro, Inc. v. WaterBridge Res., Align has refused to meaningfully nar- LLC, the defendant sought leave to row its case, dropping only 4 of 183 brief extra terms via a dispute chart claims to date. And although the Court and, when that failed, briefed them an- previously declined to order narrow- yway. No. 23-cv-115-ADA-DTG, ing, this dispute confirms that such 2023 WL 10366528, at *1 (W.D. Tex. limits are necessary now. Align has Nov. 21, 2023). It then argued that not identified any specific discovery it Section 112(f) justified briefing 20 needs to narrow, nor could it: it has means-plus-function terms. Id., ECF had months of discovery, including No. 60 at 2-4. Deeming those argu- ClearCorrect’s invalidity contentions ments “inadequate,” the Court limited and core technical production. Align construction to 15 terms. Id., 2023 should not be allowed both assert an WL 10366528, at *1–2. As in SitePro, unwieldy number of claims and refuse ClearCorrect is not entitled to brief to adjust the default Markman limits. every conceivable issue.
To the extent the Court does not order Kemco does not help ClearCorrect. Align to narrow its claims now, Kemco dealt with how—not when—to ClearCorrect requests that the Court construe a 112(f) term. It is “well es- authorize the parties to brief 8 disputed terms, in addition to proposed means- tablished” that courts may “limit[] the plus-function terms. number of terms they construe at any one pretrial proceeding.” Eon CorpIP First, the number of terms ClearCor- Holdings LLC v. Aruba Networks Inc, rect proposes is reasonable: 62 F. Supp. 3d 942, 953 (N.D. Cal. 2014) (construing “six terms” parties • 22 are means-plus-function terms identified as “likely to be most signifi- subject to § 112 ¶ 6 that Align does cant to resolving the parties’ dispute”). not dispute the Court “must con- strue.” Kemco Sales v. Control ClearCorrect’s request is prejudicial. Papers, 208 F.3d 1352, 1360 (Fed. Even if its arguments overlap, that Cir. 2000); 35 U.S.C. §112(f) does not justify briefing 2.5x the de- (“shall construe”). fault number. ClearCorrect is wrong • Of the only 8 remaining disputed that Align “categorical[ly] rejected any terms, 4 recite particular treatment potential expansion of the presumed “pattern[s]” and raise virtually limit.” After ClearCorrect disclosed 55 identical Markman issues. terms, Align suggested it might brief up to 18—if ClearCorrect narrowed its SitePro does not help Align because: terms to 18 before the claim construc- (1) the defendant “did not seek leave of tion exchange. ClearCorrect declined. Court to” exceed the presumed limits before submitting its brief (ClearCor- Early Claim Narrowing. The sched- rect has); nonetheless (2) the Court uling order sets two claim narrowing granted “an expansion of the presump- dates. ECF No. 71 at 4. Those dates tive limit on terms” given the number account for many inputs into that deci- of asserted patents/claims (fewer than sion—the Markman order, final con- here). 2023 WL 10366528, at *1-2. tentions, and fulsome discovery. To Eon, an out-of-district case, is similarly modify those dates, ClearCorrect must unhelpful to Align where the court ad- show good cause. FRCP 16(b)(4). dressed the disputed “means” terms. Neither its earlier nor its latest request 62 F. Supp. 3d at 948-50. does so. (ECF No. 71 at 4.)
Second, Align’s categorical rejection ClearCorrect’s argument—that Align’s of any potential expansion of the pre- asserted claims are excessive—fails. sumed limit is inconsistent with the 13 claims, including their parent OGP, which contemplates: “the Court claims, contain all of ClearCorrect’s [may] grant[] leave for additional proposed terms. To illustrate, terms to be construed” beyond the pre- ClearCorrect proposes 14 terms from sumptive limit. OGP(v.4.4), 7, 14. ’444 claims 18 and 20 (inclusive of Such modifications are appropriate their parent claims). Even if Align re- here. duced its claims to 75, all disputed terms would remain. It is the number Requested Relief. Order that “Align of ClearCorrect’s terms that is exces- shall narrow the number of asserted sive, not Align’s asserted claims. claims to no more than 75 by no later
than October 29.” Alternatively, Order ClearCorrect misleadingly claims that “the parties are granted leave to brief 8 disputed terms for construction, Align has had “months of discovery.” in addition to the proposed means- The parties dispute whether ClearCor- plus-function issues. ClearCorrect’s rect’s technical production is suffi- opening Markman brief shall be filed cient. Apart from scheduling order- three business days after the Court’s mandated productions, ClearCorrect Order.” has yet to produce a single document.
Further, ClearCorrect states it “has agreed to defer” other indefiniteness arguments. Align does not agree that ClearCorrect may argue indefiniteness 1 Given the Court’s presumptive limits later. Nor does Align agree to at the Markman phase and Align’s ClearCorrect’s last-minute request to general unwillingness to agree to ad- extend the briefing schedule. dress additional terms at this time,
ClearCorrect has agreed to defer and Requested Relief. Deny ClearCor- not to address at this time its argu- rect’s requested relief and order ments that certain terms of the Material “ClearCorrect must immediately dis- Patents are indefinite. To be clear, close to Align what 12 terms ClearCor- ClearCorrect is not withdrawing those rect will brief.” indefiniteness positions, and reserves the right to raise those issues at the ap- propriate time as the case proceeds.