In re Koninklijke Philips Patent Litigation

4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA IN RE KONINKLIJKE PHILIPS PATENT Case No. 18-cv-01885-HSG LITIGATION ORDER DENYING ASUS’S REQUEST 9 FOR LEAVE TO FILE AN This Document Relates To: ADDITIONAL MOTION FOR 10 SUMMARY JUDGMENT ALL ACTIONS 11 Re: Dkt. No. 971 14 Pending before the Court is Defendants ASUS Computer International and ASUSTeK Computer Inc.’s (collectively, “ASUS”) request for leave to file an additional motion for summary judgment. Dkt. No. 971 at 2. ASUS asserts that the Federal Circuit decision in Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir. 2020), demonstrates that claim 12 of U.S. Patent No. 7,529,806 (the “’806 Patent”) is invalid. Specifically, ASUS argues that in affirming the U.S. Patent Trial and Appeal Board’s (“PTAB”) finding that claim 1 of the ’806 Patent is invalid, the Federal Circuit adopted interpretations of claim 12 terms “media presentation” and “identifying,” “determining,” and “retrieving” that preclude the patentee’s validity arguments.

22 Claim construction is a question of law. Teva Pharmas. USA, Inc. v. Sandoz, Inc., 574 23 U.S. 318, 325 (2015). Accordingly, the Federal Circuit’s claim constructions are binding on this Court under stare decisis. See Ottah v. Fiat Chrysler, 884 F.3d 1135, 1140 (Fed. Cir. 2018); see also Rambus Inc. v. Hynix Semiconductor Inc., 569 F. Supp. 2d 946, 963-64 (N.D. Cal. 2008).

26 However, “stare decisis applies only to legal issues that were actually decided in a prior action.”

27 Beacon Oil Co. v. O’Leary, 71 F.3d 391, 395 (Fed. Cir. 1995) (finding that stare decisis did not declined to address the parties’ claim construction dispute regarding the term “a given segment of [a/the] media presentation.” Philips, 948 F.3d at 1334 n.5. There is also no evidence that the court addressed constructions for “identifying,” “determining,” and “retrieving.”1 Accordingly, the claim construction issues were not actually addressed and decided by the Federal Circuit and the Court is not bound by the underlying PTAB interpretations.

6 Nor does collateral estoppel resolve the dispute. “Because the [PTAB] applies the broadest reasonable construction of the claims while the district courts apply a different standard of claim construction as explored in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the issue of claim construction under Phillips to be determined by the district court has not actually been litigated.” SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016).

11 Moreover, even assuming that one of these doctrines applied, ASUS’s dispute centers on the application of the constructions, not the constructions themselves. The PTAB’s construction of “a given segment of [a/the] media presentation” is entirely consistent with the construction for “media presentation” adopted in this case. Compare IPR2017-00447, Paper 29, at 8 n.4, with Dkt.

15 No. 241 at 7. If ASUS believes that Philips’s validity interpretation is contrary to those constructions, it could have brought its motion by the dispositive motion deadline.2 // // // According to ASUS, Philips seeks to interpret “media presentation” as requiring “data that has been split into multiple segments” and also to require the “identifying,” “determining” and “retrieving” steps to be performed twice. Dkt. No. 971 at 3. The Federal Circuit did not consider these issues: the appeal was limited to the PTAB’s consideration of grounds not raised in the petition, the use of “general knowledge” to supply missing limitations, and the factual findings related to obviousness. See 948 F.3d at 1335, 1338-39.

2 To the extent ASUS claims there is an unresolved dispute as to the proper construction of terms that were not previously construed (or that were not construed with sufficient specificity to resolve the dispute), that issue can be resolved through supplemental claim construction proceedings before trial if necessary, if the case does not resolve at the upcoming mediation. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (explaining 1 For these reasons, the Court DENIES ASUS’s motion for leave to bring a second motion || for summary judgment.

5 IT IS SO ORDERED.

6 Dated: 5/26/2020 HAYWOOD S. GILLIAM, JR. 9 United States District Judge ll a 12

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