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Kaist IP U.S. LLC v. Samsung Electronics Co., Ltd.,

United States District Court, E.D. Texas, Marshall Division

May 17, 2018

KAIST IP U.S. LLC, Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.

          MEMORANDUM OPINION AND ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE

         Plaintiff 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 IN PART.

         A. Defendants' “Old” Indefiniteness Contentions

         Plaintiff 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.

         Judge 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.[1]

B. Defendants' “New” Indefiniteness Contention

         Plaintiff 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.

         Regardless 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.

         C. Defendants' Enablement / Written Description Contentions

         Finally, 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.

         Whether 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. 2011).

         Unlike 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 citations omitted)).

         Claim 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.

         Nor is 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 ...


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