United States District Court, E.D. Texas, Marshall Division
KAIST IP U.S. LLC, Plaintiff,
SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.
MEMORANDUM OPINION AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE
moves, for three reasons, to exclude certain opinions of Dr.
Vivek Subramanian, Defendants' technical expert on
invalidity of the asserted claims. Pl.'s Mot. [Dkt. #
220]. First, Plaintiff contends Subramanian's report
includes indefiniteness contentions already resolved by the
Court during claim construction. Id. at 3-4. Second,
Plaintiff contends the report includes a new and untimely
indefiniteness contention that should not be considered.
Id. at 4-5. Third, Plaintiff claims
Subramanian's report raises new claim construction
arguments to support enablement and written-description
contentions. Id. at 5-9. After full briefing by the
parties, the Court will GRANT the motion
Defendants' “Old” Indefiniteness
contends Subramanian's report includes indefiniteness
positions already considered and rejected by the Court.
Pl.'s Mot. [Dkt. # 220] at 3-4. Defendants admit as much,
but contend the law obligates them to keep pressing those
positions or risk a finding of waiver. Defs.' Resp. [Dkt.
# 272] at 1-3. Defendants also note that, as of the time they
filed their response, Judge Gilstrap had not ruled on their
objections to the Court's claim construction order.
Id. at 1-2. At the very least, Defendants ask the
Court to hold that these arguments are not waived for appeal.
Id. at 3.
Gilstrap has since overruled Defendants' objections,
Order [Dkt. # 388], and Defendants do not contest these
issues have already been decided. Given that,
Subramanian's testimony is not relevant and should be
excluded under Fed.R.Evid. 402. Accordingly, the Court will
grant this part of the motion.
B. Defendants' “New” Indefiniteness
contends Defendants raise a new indefiniteness contention
concerning the “gate oxide layer” limitation,
even though the local rules require disclosure of any
indefiniteness arguments in a party's invalidity
contentions. Pl.'s Mot. [Dkt. # 220] at 4-5 (citing
Subramanian Rep. ¶ 1225). Defendants counter that
nothing in the Docket Control Order (or any other order)
prohibits them from raising indefiniteness arguments after
claim construction. Def.'s Resp. [Dkt. # 272] at 3-4.
of whether Defendants' new contention is timely,
indefiniteness is a question of law. Alfred E. Mann
Foundation for Scientific Research v. Cochlear Corp.,
841 F.3d 1334, 1341 (Fed. Cir. 2016). Because Paragraph 1225
of Subramanian's report only pertains to indefiniteness,
the Court will grant this part of the motion
and preclude Defendants from offering argument or testimony
corresponding to that paragraph.
Defendants' Enablement / Written Description
Plaintiff contends Subramanian's report raises new
enablement and written-description arguments concerning
Claims 5-7 and Claim 15. Plaintiff asks the Court to exclude
Subramanian's testimony relating to these arguments
because Defendants take new claim construction positions.
Pl.'s Mot. [Dkt. # 220] at 5. Defendants counter that the
positions taken by Subramanian do not require claim
construction and, even if they do, they are not untimely.
a specification complies with the written-description
requirement of 35 U.S.C. § 112 is a fact question.
Va s -Cath Inc. v. Mahurkar, 935 F. 2 d 1555, 1563
(Fed. Cir. 1991); Ralston Purina Co. v. Far-Mar-Co,
772 F.2d 1570, 1575 (Fed. Cir. 1985). To fulfill the
requirement, a patent specification must describe an
invention in sufficient detail that one skilled in the art
can clearly conclude that “the inventor invented the
claimed invention.” Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (1997); see also In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)
(“[T]he description must clearly allow persons of
ordinary skill in the art to recognize that [the inventor]
invented what is claimed.”). Thus, an applicant
complies with the written description requirement “by
describing the invention, with all its claimed
limitations” using “such descriptive means as
words, structures, figures, diagrams, formulas, etc., that
set forth the claimed invention.” Lockwood,
107 F.3d at 1572. Not surprisingly, “[t]he construction
of the claims [is] important to the written description
analysis.” In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1319-20 (Fed. Cir.
the written-description requirement, enablement is a question
of law based on underlying factual findings. MagSil Corp.
v. Hitachi Global Storage Tech., Inc., 687 F.3d 1377,
1380 (Fed. Cir. 2012). An enabling specification teaches
those skilled in the art “how to make and use the full
scope of the claimed invention without ‘undue
experimentation.'” Genentech, Inc. v. Novo
Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997)
(quoting In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993)). To that end, the claim scope must be no more
than the scope of the enablement. MagSil Corp., 687
F.3d at 1381. And because enablement concerns claim scope,
the proper construction of relevant terms is critical to
resolving the issue. See AK Steel Corp. v. Sollac &
Ugine, 344 F.3d 1234, 1241 (Fed. Cir. 2003)
(“Because a patent specification must enable the full
scope of a claimed invention, an enablement inquiry typically
begins with a construction of the claims.” (internal
construction, however, is not an issue with respect to Claim
15. The claim recites chamfered corners of the Fin active
region resulting from “an oxidation and etching, or
(and) annealing process.” '055 Patent at 14:24-27.
Defendants contend the claim scope exceeds the teachings of
the specification because the claim recites only
“oxidation, ” whereas the specification discloses
oxidation above 900 °C. That might be true, but
even if “oxidation” should have been construed by
the Court, such a construction would not be material to the
written-description question because the difference between
the claim and the specification is only the temperature
during oxidation, regardless of whether or how
“oxidation” should be construed.
claim construction an issue with respect to Claims 6-7. Each
of these claims requires that “the contact resistance
is reduced by selecting the size of a contact region which is
in contact with said metal layer to be greater than the width
of said Fin active region and/or the length of said
gate.” '055 Patent at 12:39-43; see also
Id. at 13:1-4. Defendants contend the specification
doesn't support this limitation, disclosing only that
“the width of the Fin active region and longer
than the length of the gate.” Pl.'s Mot. [Dkt. #
220] at 6-7 (emphasis added). Plaintiff does ...