1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 FOR THE EASTERN DISTRICT OF CALIFORNIA 10 11 RICHARD A. LEINES, No. 2:18-cv-00969-KJM-DB 12 Plaintiff, 13 v. ORDER 14 HOMELAND VINYL PRODUCTS, INC., 15 Defendant. 16 17 Plaintiff Richard Leines sues defendant Homeland Vinyl, Inc. (“Homeland”), 18 alleging, among other things, Homeland’s “Gorilla Lock” product infringes a patent owned and 19 developed by Leines. On September 30, 2019, the court conducted a claim construction hearing in 20 accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Through this order, 21 based on the hearing and on the record before it, the court construes the disputed words and phrases 22 found in Claim 11 of Leines’ patent at issue, U.S. Patent No. 594,961 (“the ‘961 Patent”). 23 I. BACKGROUND 24 Leines and Homeland entered into a licensing agreement whereby Homeland could 25 manufacture and sell certain products, called “Gorilla Lock” deck products, that are purportedly 26 based on an invention Leines patented. Compl. ¶ 5. The patent at issue in the license and in the 27 complaint, Patent No. 6,594,961, is entitled “Deck Plank Extrusion and Retaining Clip,” id. ¶ 6, 28 1 and describes a type of “decking board” designed to “allow simple installation and removal,” when 2 constructing a deck or similar surface, Pl.’s Br., ECF No. 35, at 5. 3 Claim 11 of the ‘961 Patent (“Claim 11”), at issue in the dispute presently before 4 the court, states: 11. A deck board which can be attached to an underlying surface 5 easily in one downward motion and with a simple clip, comprising: a deck board of rigid material having a width and a length, the width 6 being substantially less than the length, said deck board having a pair of opposite edges, said opposite edges having a 7 separation that defines said width, said deck board having an upper surface and an under side, 8 said under side of said deck board having a bottom surface which is substantially parallel to said upper surface and an elongated 9 recess in a portion of said bottom surface, said elongated recess extending along the length of said deck board, 10 said elongated recess having a pair of sidewalls which directly face each other and which are spaced apart by a predetermined 11 spacing, a bottom portion of each of said pair of sidewalls of said elongated 12 recess tapering up and inward toward the opposite sidewall to a ledge which faces upward, so that said sidewalls contain 13 a respective pair of upwardly facing ledges, each ledge extending from and being spaced up from the bottom of a 14 respective sidewall by a predetermined distance, said ledges extending into said recess from said respective sidewalls 15 toward each other, whereby said deck board can be connected smoothly and securely to 16 a clip having a pair of outwardly facing flanges while maintaining a uniform alignment of said elongated deck 17 board over said surface, yet can be readily disconnected, and such that said deck board can be trimmed in width at 18 said edges of said deck board without disturbing the attachment of said deck board to said clip. 19 20 Compl., Ex B (‘961 Patent), ECF No. 1-2, at 15 (emphasis added to highlight disputed terms). 21 In accordance with Rule 4 of the Northern District’s Patent Local Rules,1 Leines has 22 submitted an opening brief on claim construction. See Pl.’s Br. Defendants submitted a responsive 23 claim construction brief, Defs.’ Resp., ECF No. 36, and Leines replied, Reply, ECF No. 37. After 24 hearing oral argument on the matter, the court addresses the construction of the disputed words and 25 phrases found in Claim 11 of the ‘961 Patent below. 26 27 1 The court has adopted the Northern District’s Patent Local Rules to govern the relevant parts of 28 this case. See ECF No. 24 at 2. 1 II. LEGAL STANDARD 2 The court construes patent claims as a matter of law reserved for the court to decide, 3 Markman, 517 U.S. at 372, based on the relevant intrinsic and extrinsic evidence, Phillips v. AWH 4 Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005) (en banc). “Ultimately, the interpretation to be 5 given a term can only be determined and confirmed with a full understanding of what the inventors 6 actually invented and intended to envelop with the claim.” Phillips, 415 F.3d at 1316 (internal 7 quotation marks and citation omitted). Accordingly, a claim should be construed in a manner that 8 “stays true to the claim language and most naturally aligns with the patent’s description of the 9 invention.” Id. 10 In construing disputed terms, a court looks first to the claims themselves, for “[i]t is 11 a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the 12 patentee is entitled the right to exclude.’” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari 13 Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Generally, the words of a claim 14 should be given their “ordinary and customary meaning,” which is “the meaning that the term[s] 15 would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 16 1312–13. A “person of ordinary skill is a hypothetical person who is presumed to be aware of all 17 the pertinent prior art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 18 (Fed. Cir. 1986) (footnote omitted). In some instances, the ordinary meaning to a person of skill in 19 the art is clear and claim construction may involve “little more than the application of the widely 20 accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1314. 21 Furthermore, “[w]here commonly understood words are accorded their ordinary 22 meaning in the patent, the court need not construe them for the jury.” Medversant Techs., L.L.C. 23 v. Morrisey Assocs., Inc., No. CV 09-05031 MMM FFMX, 2011 WL 9527718, at *19 (C.D. Cal. 24 Aug. 5, 2011) (citing, inter alia, Biotec Biologische Naturverpackungen GmbH & Co. KG v. 25 Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (holding district court did not err when it 26 declined to construe “melting” because term was used in patent in its ordinary meaning and did not 27 otherwise require construction)). 28 1 In many cases, however, the meaning of a term to a person skilled in the art will not 2 be readily apparent, and a court must look to other sources to interpret the term’s meaning. See id. 3 at 4. Under these circumstances, a court should consider the context in which the term is used in 4 an asserted claim or in related claims and bear in mind that “the person of ordinary skill in the art 5 is deemed to read the claim term not only in the context of the particular claim in which the disputed 6 term appears, but in the context of the entire patent, including the specification,” Phillips, 415 F.3d 7 at 1313, as well as the prosecution history, which consists of the complete record of proceedings 8 before the U.S. Patent and Trademark Office (“PTO”) and includes the cited prior art references. 9 See Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff’d, 517 10 U.S. 370 (1996); Advanced Steel Recovery, LLC v. X-Body Equip., Inc., No. 11 216CV00148KJMEFB, 2019 WL 3253782, at *3 (E.D. Cal. July 19, 2019). A court is also 12 authorized to consider extrinsic evidence in construing claims, such as “expert and inventor 13 testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980 Although a court may 14 consider evidence extrinsic to the patent and prosecution history, such evidence is considered “less 15 significant than the intrinsic record” and “less reliable than the patent and its prosecution history in 16 determining how to read claim terms.” Id. at 1317–18 (internal quotation marks and citations 17 omitted). 18 III. DISCUSSION 19 A. Constructions on Which Parties Agree 20 As provided by Patent Local Rule 4.3(c), the parties have identified the following 21 terms and constructions upon which they agree: 22 23 Claim Term Construction “a bottom portion of each of said pair Plain and ordinary meaning. 24 of sidewalls” “tapering up and inward toward the Plain and ordinary meaning. 25 opposite sidewall to a ledge which 26 faces upward” 27 28 1 Joint Claim Construction Statement, ECF No. 32, at 1. The court accepts these constructions and 2 construes the above claim terms as described. 3 B. Claim 11’s Preamble & “Simple Clip” 4 Defendant originally contended the preamble of Claim 11 is limiting, and therefore 5 the term “simple clip,” which appears in the preamble, requires construction. Def.’s Resp. at 11. 6 At hearing, defendant conceded the preamble is not limiting as to the term “simple clip,” and no 7 construction is necessary. The court thus does not construe the term “simple clip.” Defendant’s 8 concession did not extend to the remainder of the preamble, however, which defendant addresses 9 in its briefing regarding indefiniteness. Def.’s Resp. at 19–20; see also TomTom, Inc. v. Adolph, 10 790 F.3d 1315, 1323–24 (Fed. Cir. 2015) (holding district court “erred in determining that it had to 11 construe the entire preamble if it construed a portion of it” and finding certain language in preamble 12 was not limiting, as not providing an antecedent basis for any claims but rather stating a “purpose 13 or intended use”). 14 C. Other Disputed Terms 15 1. “Rigid material” 16 Plaintiff asserts the term “rigid material” does not require construction and should 17 simply be given its “plain and ordinary meaning,” which it describes as 18 “material that is rigid.” Pl.’s Br. at 8–9; Pl.’s Reply at 10 (insisting the phrase needs no 19 construction. Defendant argues the term needs to be construed, but agrees that “a material that is 20 rigid” is an appropriate construction. Def.’s Resp. at 13. At hearing, the parties agreed that “rigid 21 material” and “a material that is rigid” mean essentially the same thing, with words “simply 22 rearrange[d],” Pl.’s Reply at 10, but defendant maintained its proposed construction was slightly 23 clearer than the term in the patent. On review of the patent specification, the court discerns no 24 special meaning to the term “rigid material,” but finds the construction “a material that is rigid” is 25 a proper construction of the term, as it is slightly clearer than “rigid material.” See Delta Faucet 26 Co. v. Kohler Co., No. 117CV01222SEBDML, 2018 WL 2865467, at *5 (S.D. Ind. June 11, 2018) 27 (finding no construction of term “releasably” necessary, but adopting one party’s “gloss” on the 28 term, as it is “somewhat clearer and thus more readily understood by a jury without change in 1 meaning than is the term itself”); Sun Microsystems, Inc. v. Network Appliance, Inc., 591 F. Supp. 2 2d 1069, 1096 (N.D. Cal. 2008) (finding no substantive difference between two proposed 3 constructions of a term, court determined that one construction “is slightly clearer, and therefore 4 more helpful for the jury”). 5 2. “A pair of sidewalls which directly face each other” 6 Claim Term Leines’ Proposed Homeland’s Compromise 7 Construction Construction 8 “A pair of sidewalls No construction necessary; “Any pair of sidewalls which directly face plain and ordinary meaning. which directly face 9 each other” each other and define the boundary of an 10 elongated recess in a deck board” 11
12 13 Leines maintains the disputed term, “a pair of sidewalls which directly face each 14 other” needs no construction, because it is “simple and clear.” Pl.’s Br. at 12–14. Homeland 15 disagrees, and argues the phrase is unclear and should be construed as “any pair of sidewalls which 16 directly face each other and define the boundary of an elongated recess in a deck board.” Def.’s 17 Resp. at 14–15. 18 Inherent in the parties’ dispute over the meaning of the phrase “a pair of sidewalls 19 which directly face each other” is a dispute over the term “sidewall.” Homeland initially proposed 20 the construction “any panel or partition,” but, in its responsive brief, agrees to incorporate the term 21 “sidewall” as is, insofar as it means “a wall forming the side of something.” Def.’s Resp. at 14 & 22 n.3 (citing https://www.merriam-webster.com/dictionary/sidewall). The court finds “a wall 23 forming the side of something” is an appropriate construction, as it encompasses the term’s plain 24 and ordinary meaning and appears to comport with the term’s meaning as it is used in the patent. 25 To clarify, the court is not relying on the dictionary definition of “sidewall” provided by Homeland 26 to identify a new meaning of the term, but simply adopts it as articulating the ordinary meaning of 27 the term. See CANVS Corp. v. United States, 126 Fed. Cl. 106, 116 (2016) (“[T]he ordinary 28 meaning of words as gleaned from the intrinsic record should not be set aside for 1 a dictionary definition that plainly contradicts the use of the words in the patent.”) (citing Phillips 2 v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir. 2005) (“[Judges] may [] rely 3 on dictionary definitions when construing claim terms, so long as the dictionary definition does not 4 contradict any definition found in or ascertained by a reading of the patent documents.”)). As for 5 the phrase as a whole, Homeland argues it requires construction because “it is unclear how exactly 6 the sidewalls relate to each other, what spacing exists, and when that spacing is determined.” Def.’s 7 Resp. at 6. In an effort to clarify, Homeland’s proposed construction appends “. . . and define the 8 boundary of an elongated recess in a deck board” to the phrase “any pair of sidewalls which directly 9 face each other.” Id. at 14. But Homeland does not provide the court with anything in the claim, 10 the specification, or the prosecution history that suggests the phrase has any special meaning 11 beyond its ordinary, everyday meaning. 12 Leines opposes Homeland’s proposed construction, arguing that it “is not specific 13 as to which recess is being defined,” and is inaccurate because the “claimed elongated recess is 14 defined not only by the sidewalls but by the horizontal support member.” Pl.’s Br. at 14. Further, 15 Leines argues that the construction cannot comprise “any two” panels, partitions, or sidewalls, 16 because the claim refers only to two sidewalls that “face each other,” thereby rendering them “a 17 pair of sidewalls.” Id. “Any two” panels, partitions, or sidewalls “improperly broaden[s] the term.” 18 Id. Leines does not appear to argue that Homeland’s proposed phrase “and define the boundary of 19 an elongated recess in a deck board” is inaccurate, but argues only that it is unnecessary, because 20 the meaning of the term is clear without it. Pl.’s Br. at 14. 21 Leines further argues the “plain meaning of these terms is confirmed when viewed 22 in light of the specification.” In particular, Leines points to Figure 2 which depicts the “sidewalls” 23 spaced apart and directly facing each other, reproduced below first in its original form, and then 24 with added embellishments from plaintiff’s brief emphasizing the disputed claim terms. ‘961 25 Patent, at 4 Fig. 2; Pl.’s Br. at 13. “In conjunction with the horizontal stabilizing web 40 (which 26 27 28 1 | has no facing wall),” Leines explains, Figure 2 shows the sidewalls “define the elongated □□□□□□□ □ 2 | predetermined spacing.” Pl.’s Br. at 13. °
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FIG. 2 FIG. 2 9 | ‘961 Patent, at 4 Fig. 2 (left image); Pl.’s Br. at 13 (right image). 10 Leines also argues that the prosecution history of the ‘691 Patent is “consistent with 11 | both the claim language and specification and evidences no intent on the part of the patentee to 12 | impart a special meaning to these terms.” Pl.’s Br. at 13-14 (citing Benisek Decl, Ex. B, 5.28.2002 13 | Am. A at RLOO0108-11 (‘The deck-plank holding portion comprises of flanges that are spaced up 14 | from the base and that extend away from each other in opposite directions. The plank has a bottom 15 | elongated recess with a pair of upwardly facing ledges that mate with the flanges of the clip when 16 | the plank is pushed down over the clip.”)). 17 Given the claim language and the specification, the court finds the meaning of the 18 | phrase “‘a pair of sidewalls which directly face each other’ need not be construed, because it would 19 | be understood by a person of ordinary skill in the art in its “ordinary, everyday sense” especially 20 | with the additional clarification provided by Figure 2 in the patent, ‘961 Patent at 4 fig. 2. 21 | Collegenet, Inc. v. XAP Corp., No. CV-03-1229-HU, 2004 WL 2429843, at *14 (D. Or. Oct. 29, 22 | 2004) (construction not necessary where a claim term appears to be used in its ordinary sense, not 23 | in any technical or scientific sense). As one district court has explained: “While claim terms “must 24 | be construed as they would be understood by a person of ordinary skill in the art to which the 25 | invention pertains,’ and thus, ‘[w]hat the claim terms would mean to laymen is irrelevant[,]’ if a 26 | person of ordinary skill in the art would understand the term in its ordinary, everyday sense, there 27 | is no need to construe the term.” /d. (quoting Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 28 | 1149 (Fed. Cir. 2004)). The phrase “a pair of sidewalls which directly face each other” can be
1 understood in its ordinary, everyday sense. Homeland’s proposed construction adds unnecessary 2 embellishments that do not add clarity and run counter to the ordinary meaning of the term. 3 Therefore, the phrase needs no construction. 4 3. “Spaced apart by a predetermined spacing” & “Being spaced up from the 5 bottom of a respective sidewall by a predetermined distance” 6 7 Claim Term Leines’ Proposed Homeland’s Compromise Construction Construction 8 “Each ledge . . . No construction necessary; “Any spacing between the ledge and being spaced up plain and ordinary meaning. the bottom of the sidewall determined 9 from the bottom of before manufacturing.” a respective 10 sidewall by a 11 predetermined distance” 12 “spaced apart by a No construction necessary; “Any spacing that exists between the predetermined plain and ordinary meaning. sidewalls that is determined before 13 spacing.” manufacturing.”
15 The parties also dispute whether the claim terms “Each ledge . . . being spaced up 16 from the bottom of a respective sidewall by a predetermined distance” and “spaced apart by a 17 predetermined spacing” require construction. As signaled by Homeland’s compromise 18 construction and related briefing, the crux of the dispute is over the word “predetermined” as used 19 in both of the aforementioned claim terms. Homeland argues the word should be construed to mean 20 “determined before manufacturing,” whereas Leines maintains the word requires no construction, 21 as the meaning is obvious. See Pl.’s Reply at 11. Leines also argues the addition of the word 22 “manufacturing” is inaccurate, because “not all deck boards within the scope of the claim are 23 ‘manufactured.’” Id. For example, the claimed deck board may be made of wood, and “manually 24 routed by the carpenter to meet the limitations of the claim just prior to installation as decking.” 2 25 Id. (emphasis added). 26 27 2 As used here, “routed” means to have gouged a furrow into a wooden surface, which is 28 distinct from “manufacture,” which can mean “to make from raw materials by hand or by 1 Here, the court agrees with Homeland that, in this context, the term “predetermined” 2 implies that the spacing is determined before some event. At hearing, the court suggested an 3 alternative construction, which the parties discussed and generally agreed upon: “Any spacing 4 between the ledge and the bottom of the sidewall determined before installation,” rather than before 5 manufacturing. Leines pointed out, however, that the spacing of the sidewalls may be modified 6 after initial installation of the product. Taking this observation into account, the court finds the 7 terms are appropriately construed, respectively, as: “Any spacing between the ledge and the bottom 8 of the sidewall determined before installation or re-installation,” and “Any spacing that exists 9 between the sidewalls that is determined before installation or re-installation.” 10 D. Homeland’s Indefiniteness Arguments 11 1. Addressing Indefiniteness at the Claim Construction Hearing 12 In its responsive claim construction brief, Homeland argues that at least six terms in 13 the ‘961 Patent are indefinite under 35 U.S.C. § 112. Def.’s Resp. at 17. Homeland explains that 14 it identified these terms in its preliminary claim constructions that the parties exchanged as provided 15 by Patent Local Rule 4-2. See Def.’s Resp. at 18 n.6. However, there is no discussion of these 16 terms in the parties’ joint claim construction and prehearing statement, which is governed by Patent 17 Rule 4-3. ECF No. 32. In his brief, Leines argues Homeland’s arguments regarding indefiniteness 18 are “procedurally improper,” Pl.’s Reply at 3, but at hearing, he argued the court should decide the 19 issue of indefiniteness at the current claim construction stage. 20 Because Homeland has the burden of demonstrating indefiniteness and invalidity 21 contentions are potentially dispositive, Homeland’s indefiniteness arguments are more 22 appropriately advanced in a summary judgment motion, rather than in a responsive claim 23 construction brief. See 2-Way Computing, Inc. v. Nextel Fin. Co., No. 2:11-CV-00012-JCM, 2012 24 WL 4846145, at *20 (D. Nev. Oct. 9, 2012) (magistrate judge’s decision noting “it 25 is more appropriate to defer these arguments until summary judgment because they are potentially 26
27 machinery.” See Rout, Merriam-Webster, https://www.merriam-webster.com/dictionary/rout (last visited Jan. 22, 2020); Manufacture, Merriam-Webster, https://www.merriam- 28 webster.com/dictionary/manufacture (last visited Jan. 22, 2020). 1 dispositive and would invalidate the patent, and because of the burden of proof required to show 2 indefiniteness.”), amended on reconsideration on other grounds, sub nom. 2-Way Computing, Inc. 3 v. Sprint Nextel Corp., No. 2:11-CV-12 JCM PAL, 2013 WL 2218010 (D. Nev. May 17, 2013) 4 (district judge’s decision on reconsideration). Homeland appears to anticipate this argument, 5 stating, in a footnote, “To the extent the Court desires further briefing on the indefiniteness issue, 6 Homeland will file a supplemental brief or separate motion for summary judgment.” Def.’s Resp. 7 at 18 n.6. 8 Though “[i]ndefiniteness is a question of law,” Amgen Inc. v. F. Hoffman–LA Roche 9 Ltd., 580 F.3d 1340, 1371 (Fed. Cir. 2009) (citation omitted), Homeland’s indefiniteness arguments 10 under 35 U.S.C. § 112 are not properly raised in its responsive claim construction brief, given the 11 procedural framework provided by the Patent Local Rules in force here. The local rule governing 12 claim construction proceedings, Patent Local Rule 4, does not expressly reference indefiniteness. 3 13 The rule’s provision governing claim construction briefs states that the “party claiming patent 14 infringement” or “the party asserting invalidity if there is no infringement issue present in the case” 15 shall file “an opening brief and any evidence supporting its claim construction.” Patent L.R. 4- 16 5(a). No later than 14 days afterwards, the opposing party is to file “its responsive brief and 17 supporting evidence.” Patent L.R. 4-5(b). Homeland did not file an opening brief, nor does it 18 contend it was entitled to do so, since there is clearly an “infringement issue present in [this] case.” 19 See Compl. at 20 (alleging patent infringement). Rather, the applicable local rules reserve the claim 20 construction hearing and related briefing for arguments related solely to claim construction, as the 21 title belies. Patent L.R. 4 (“Claim Construction Proceedings”). For this reason, and because
22 3 None of the remaining provisions mention indefiniteness either. Rule 4-2, 23 governing the exchange of preliminary claim constructions and extrinsic evidence, directs the parties to include in the “Preliminary Claim Construction”: “for each term which any party contends 24 is governed by 35 U.S.C. § 112(6), identify the structure(s), act(s), or material(s) corresponding to that term’s function,” in addition to their proposed constructions on each term identified “for claim 25 construction.” Patent L.R. 4-2(a). However, 36 U.S.C. § 112 does not have a subdivision six, only 26 a subdivision “(f),” which is titled “Element in Claim for a Combination” and is not the subdivision related to indefiniteness. The requirement of definiteness is rooted in subdivision “(b),” previously 27 paragraph two of section 112. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 902 (2014) (“The 1870 Act’s definiteness requirement survives today, largely unaltered.”) (citing 35 U.S.C. 28 § 112, ¶ 2 (2006 ed.)). 1 defendant has the burden of proof on the issue, the court finds the question whether certain terms 2 in the ‘961 Patent are indefinite is more suitable for resolution on summary judgment and does not 3 reach the question here. See Takeda Pharm. Co. v. Handa Pharm., LLC, No. C-11-00840 JCS, 4 2012 WL 1243109, at *16 (N.D. Cal. Apr. 11, 2012) (“Due to the largely factual nature of [the 5 inquiry whether a term is indefinite], the Court concludes that this question is more suitable for 6 determination on summary judgment than at the claim construction phase of the case.”) (citing 7 CSB–System Int’l, Inc. v. SAP America, Inc., 2011 WL 3240838, at *17–18 (E.D. Pa., July 28, 8 2011) (discussing reasons for deferring indefiniteness inquiry to summary judgment4)); see also 9 Chiron Corp. v. Genentech, Inc., No. CIV.S-00-1252 WBSGGH, 2002 WL 32123928, at *2 (E.D. 10 Cal. June 24, 2002) (where party brought summary judgment motion on issue of indefiniteness, 11 court explained “it is not uncommon for courts to find a claim term invalid for indefiniteness after 12 construing the term” and therefore motion was procedurally sound); but see Eclectic Prod., Inc. v. 13 Painters Prod., Inc., No. 6:13-CV-02181-AA, 2015 WL 930045, at *2 (D. Or. Mar. 2, 2015) 14 (deciding issue of indefiniteness when raised affirmatively in plaintiff’s opening claim construction 15 brief); Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012) (“Whether a claim 16 complies with the definiteness requirement of 35 U.S.C. § 112 ¶ 2 is a matter of claim construction, 17 which we review de novo.” (footnote omitted)). Homeland may raise its indefiniteness arguments 18 in a motion for summary judgment. 19 2. Waiver of Indefiniteness Expert 20 For the first time at hearing, Leines raised the argument that Homeland waived its 21 ability to offer an expert on indefiniteness, because Homeland did not name an expert on 22 indefiniteness before expert discovery on claim construction closed. The court ordered the parties 23
24 4 “Several well-settled principles [] tend to discourage rulings on indefiniteness at the Markman stage. First, there is a high burden of proof on a party challenging the patent based on 25 indefiniteness, which is difficult to meet at the early stages of litigation. Proof of indefiniteness must meet an exacting standard. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 26 783 (Fed. Cir. 2010). A patentee need not define his invention with mathematical precision in 27 order to comply with the definiteness requirement. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010). Moreover, a claim is not indefinite simply because the parties 28 disagree concerning construction. Id.” CSB–System Int’l, Inc., 2011 WL 3240838 at *17. 1 to submit supplemental briefing on this issue, ECF No. 44, which they have now done, Pl.’s Suppl. 2 Br., ECF No. 45; Def.’s Suppl. Br., ECF No. 46. 3 Following the procedure set forth in Patent Local Rule 4-2, the parties exchanged 4 preliminary claim constructions. See Patent L.R. 4-2(a). Therein, Homeland identified six terms 5 in Claim 11 that it argued rendered the claim indefinite under 35 U.S.C. § 112, but Homeland did 6 not identify an expert on the subject. Def.’s Resp., Ex. A (Def.’s Proposed Claim Constructions), 7 ECF 36-1. Patent Local Rule 4-2 directs the parties as the next step to submit a joint claim 8 construction statement that includes “testimony of percipient and expert witnesses.” Patent L.R. 9 4-2(b). However, in the parties’ joint claim construction statement, filed on the docket, 10 Homeland did not raise the issue of indefiniteness. See ECF 32. Only in its responsive claim 11 construction brief, as noted above, did Homeland raise its indefiniteness arguments. Def.’s Resp. 12 at 17. 13 Essentially, the parties’ dispute comes down to whether indefiniteness is properly 14 addressed within the parameters of this claim construction phase of the case, for which discovery 15 closed on April 15, 2019, or whether indefiniteness should be decided in a dispositive motion, in 16 which case the deadline to identify an expert is December 6, 2019. Scheduling Order, ECF No. 17 24, at 2 (April 15, 2019 is “Close of Claim Construction Discovery”; Am. Scheduling Order at 1 18 (setting December 6, 2019 as date “Opening Expert Reports due (on issues for which the party 19 bears the burden of proof,” but not amending “Close of Claim Construction Discovery” date). 20 Specifically, Homeland argues indefiniteness is an invalidity contention and is therefore subject 21 to Patent Local Rule 3 covering “Patent Disclosures,” rather than Local Patent Rule 4, which 22 governs “Claim Construction Proceedings.” Def.’s Suppl. Br. at 3–4 & n.3 (citing Local Patent 23 Rule 3-3(d) (requiring disclosure of “[a]ny grounds of invalidity based on . . . indefiniteness”)). 24 For procedural purposes, the court agrees. As discussed above, the patent local rule governing 25 claim construction does not address claims of indefiniteness. By contrast, Rule 3 refers directly to 26 indefiniteness arguments, directing the party opposing patent infringement to serve on all parties 27 its “Invalidity Contentions,” containing, inter alia, “[a]ny grounds of invalidity based on 35 28 U.S.C. § 101, indefiniteness under 35 U.S.C. § 112(2) or enablement or written description under 1 35 U.S.C. § 112(1) of any of the asserted claims.” Patent L.R. 3-3(d). That the drafters of the 2 Patent Local Rules chose to call out indefiniteness arguments specifically in Rule 3-3, but not in 3 Rule 4, suggests the omission was deliberate, and signals indefiniteness is procedurally not a part 4 of the claim construction phase. 5 Furthermore, courts often address indefiniteness at the summary judgment stage, 6 and this court never signaled otherwise, so it was reasonable for Homeland to expect the court 7 would do the same here and to interpret the scheduling order accordingly. See, e.g., Takeda 8 Pharm. Co., 2012 WL 1243109, at *16. Finally, indefiniteness is a dispositive issue on which 9 Homeland “bears the burden of proof.” See Scheduling Order at 2; see also Pl.’s Reply at 3. 10 Therefore, by the plain language of the scheduling order, Homeland’s indefiniteness expert 11 disclosure was not due until December 6, 2019. Am. Scheduling Order at 1. 12 IV. CONCLUSION 13 For the reasons above, the court construes the terms in Claim 11 of the ‘961 Patent 14 as follows: 15 Claim Term Construction 16 “Simple clip” The term does not require construction, because the 17 preamble is not limiting with respect to “simple clip.” 18 “Rigid material” “A material that is rigid” 19 “A pair of sidewalls which “Sidewall” is construed to mean its plain and ordinary 20 directly face each other” meaning, “a wall that forms the side of something.” 21 Otherwise, the term does not require construction. 22 “Each ledge . . . being “Any spacing that exists between the sidewalls that is 23 spaced up from the bottom determined before installation or re-installation.” 24 of a respective sidewall by a 25 predetermined distance . . .” 26 “Spaced apart by a “Any spacing that exists between the sidewalls that is 27 predetermined spacing.” determined before installation or re-installation.” 28 1 The court does not rule at this time on the issue of indefiniteness, which it will decide if and when 2 the issue is properly raised in a motion for summary judgment. Homeland has not waived its ability 3 to offer an expert on indefiniteness, so long as it disclosed such an expert before the December 6, 4 2019 deadline, which has now passed. If Homeland requires an extension of this deadline in light 5 of this order, it may seek one through a stipulation offered by the parties or in an ex parte request. 6 This order resolves ECF No. 35. 7 IT IS SO ORDERED. 8 DATED: January 23, 2020. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28