Masimo Corp. v. Philips Electronics North America Corp.
Masimo Corp. v. Philips Electronics North America Corp.
Opinion of the Court
MEMORANDUM ORDER
I. Introduction
In the continuing saga of disputes in this matter, Philips moved, prior to and during a status conference held on December 18, 2012, to limit the number of claims asserted by Masimo in both Masimo I and Masimo II, which Masimo opposed.
II. Background
Originally, in Masimo I, Masimo sued Philips alleging infringement of fourteen patents related to pulse oximetry.
For litigation and case management purposes, the parties were ordered to reduce the number of patents to a more manageable level. The parties were only able to reduce the original number of twenty-four to fourteen patents. Thereafter, the court reduced the number of total patents to be initially litigated and tried to seven (four Masimo and three Philips patents), and also reduced the number of claim terms to
Masimo instituted a second action (Masimo II) against Philips alleging infringement of two patents in August 2011.
Beginning in August 2012, the parties filed various motions for summary judgment, motions to strike and Daubert motions on the initial seven patents. Briefing on those motions was completed in October 2012, and they are presently under consideration by the court.
In addition to the somewhat tortured procedural history highlighted herein, the parties have entertained the court with a number of discovery matters and other similar concerns.
III. Parties’ Positions
Philips
Philips maintains narrowing the asserted claims from Masimo’s present number of 95 (17 independent claims) to a total of 30 claims would reduce the overall complexity of the case because: 1) that reduction would likely reduce the number of claim disputes
Although Philips agrees narrowing should leave open the possibility of adding claims upon a showing of good cause, consistent with Stamps.com, it does not agree Masimo should be permitted to assert new claims if any presently asserted claims are eliminated during reexamination.
Masimo
Masimo argues because discovery is ongoing in the remaining eight patents, any claim reduction should occur shortly before trial. It maintains Philips has failed to show any claims are duplicative to support “dismissal” of 65 of its patent claims,
Masimo summarily discusses how each asserted claim is directed to “distinct inventions with unique features,” for which the innovative aspects of its products are entitled to protection via injunctive relief.
Masimo also notes Philips listed 135 pri- or art references, but its validity charts only addressed 19, which were raised against all 95 claims. It requests Philips be limited to those charted references. It further demands before any claim reduction occurs, Philips be required to provide their validity contentions, citing Intellectual Ventures and Personal User.
IV. Analysis
A district court has inherent authority to reasonably limit both the number of claim terms to be construed and the number of patent claims the parties may assert,
When Masimo moved to incorporate three of the seven unselected or “limbo” patents for trial, it unequivocally represented minimal, if any discovery was needed,
Masimo suggests the only legal standard recognized by the Federal Circuit in In re Katz was the duplicativeness of the claims. That assumption is not accurate. Rather, the Federal Circuit specifically noted in response to Katz’s criticism that only a small number of claims had been examined by the district court before reduction occurred, that court also “based its findings on the common genealogy of Katz’s patents.”
Masimo argues in its overview of its presently asserted 17 independent claims and the purported innovative features of the 78 related dependent claims that each claim is a distinct invention with unique features, which suggests no claim reduction could ever occur in any matter. Yet, it admits reduction is necessary, and it never intended to present all presently asserted claims to the jury. Masimo’s summary does not refute early claim reduction, and claim reduction does not offend “the statutory presumption that each claim is independently presumed valid” or the “ ‘rebuttable presumption that different claims are of different scope.’ ”
Despite couching its arguments as an attempt by Philips to dismiss Masimo’s presently asserted claims, nothing in Philips’ written or oral presentation suggests that purpose. Philips explicitly states “any claim narrowing should leave open the possibility of adding additional claims upon a showing of good cause.”
Therefore, early claim reduction is warranted before claim construction briefing and summary judgment motions are filed. In light of the analysis herein, including the breakdown between the number of presently asserted independent and dependent claims, the related subject matter of the patents, the genealogy of the asserted patents and the relationship among them, the previous claim construction decisions, and the filed summary judgment motions, Masimo is ordered to identify thirty (30) claims that are representative of the claims presently at issue from any or all of its asserted patents. The purpose of limiting the number of presently asserted claims to a selected group of representative claims is to streamline the issues, and Masimo should endeavor in its selection to choose truly representative claims directed to issues material to this litigation. The parties are further ordered to identify no more than twenty (20) claims terms for construction, taking into account terms that would be unfamiliar or confusing to the jury or un
As to narrowing the prior art references,
Masimo objects to Philips’ “arbitrary mathematical approach,” and requests, before claim reduction occurs, that Philips either be limited to the 19 references it has charted or complete its discovery responses for all prior art references it previously identified, relying on Intellectual Ventures and Personal User.
In Intellectual Ventures, the court did not order the defendants to serve invalidity contentions before the plaintiff reduced its claims.
In Personalized User, the plaintiff had previously reduced its asserted claims from 68 to 36 claims, and the issue was whether the plaintiff would be required to reduce its asserted claims further before claim construction submissions and ■ the Markman hearing. The plaintiff sought invalidity contentions from the defendant only on the remaining 36 asserted claims.
Unlike Personal User, in the instant matter, no initial reduction in the number of asserted claims has occurred, and Philips has responded to invalidity contentions by charting 19 of its prior art references, which are identified as applicable to all 95 presently asserted claims.
Applying the prior analyses, including those on claim reduction and limiting the number of claim terms, after the selection by Masimo, Philips is ordered to identify no more than- 40 prior art references, and shall provide its invalidity contentions with charts, if it has not done so previously, for each prior art reference.
Consistent with the findings in In re Katz and Stamps.com, the limitations imposed on the number of presently asserted claims to 30 and the number of presently asserted prior art references to 40 may be modified upon a showing of good cause.
Because of the findings herein, modification in the scheduling order is necessary, and the briefing schedule for claim construction beginning February 4, 2013 and the March 20, 2013 Markman hearing date are cancelled. Counsel shall meet and confer regarding the timing of Masimo’s identification of the asserted claims and Philips’ subsequent identification of its pri- or art references and completion of its invalidity contentions, as well as submission of a new Joint Claim Construction Chart and a new briefing schedule on claim construction. The court expects counsel to agree on these matters. Counsel shall file a joint proposal regarding these matters on or before 5:00 p.m. Eastern time on February 5, 2013. A teleconference to discuss these matters and to set a new Markman hearing date is scheduled for Thursday, February 7, 2013 at 11:00 a.m. Eastern time with counsel for Philips initiating and organizing the teleconference.
ORDER
Consistent with the findings herein, IT IS ORDERED that:
1. Masimo shall identify no more than thirty (30) of its presently asserted claims, from any or all of its patents-in-suit, that are representative of the claims at issue in this litigation.
2. The parties shall identify no more than twenty (20) claim terms for the court to construe.
3. After Masimo has completed its selection as contained in ¶ 1 of this Order, Philips shall identify no more than forty (40) of its presently asserted prior art references, and shall provide its invalidity contentions with charts for each prior art reference, if it has not previously done so.
4. Counsel shall meet and confer regarding the dates for completion of Masimo’s claim selection, Philips’ prior art
5. As a result of ¶ 4 of this Order, the present briefing schedule on claim construction and the Markman hearing date of March 20, 2013 are cancelled.
.D.I. 639 Joint Interim Status Report for the Remaining Patents. Because summary judgment briefing had been completed, and the court had already begun reviewing and analyzing the parties’ arguments, Philips' motion as to the Masimo I patents was denied at this stage, to be addressed later for trial purposes.
. See D.I. 654 Transcript of December 18, 2012 teleconference at 51-53.
. D.I. 1; D.I. 12 at 2-4, ¶¶ 7-20.
. D.I. 15.
. D.I. 67; D.I. 86; D.I. 118.
. D.I. 148; see also D.I. 163, 164. It was left up to the parties to select the patents on which they would initially proceed.
. D.I. 210; D.I. 218, 219.
. D.I. 319.
. See 11-742 LPS-MPT (Masimo II), D.I. 1. The '955 and the '400 Masimo patents were initially asserted.
. D.I. 11 (Masimo II).
. D.I. 15, 16 (Masimo II).
. D.I. 23 (Masimo II).
. D.I. 38 (Masimo II).
. D.I. 642 at 4 (noting that pursuant to the recently submitted joint claim construction chart (D.I. 636), there are at least 33 disputes, 18 of which fall within a single claim).
. Id. As Philips posits, a single prior art reference asserted against each claim on summary judgment means the court would have to separately evaluate the validity of all of the 95 claims.
. Id. at 5. Philips points to Masimo’s representation that the subject matter of four of the patents is substantially similar since they relate to " 'parallel calculations,' " made during a teleconference on December 21, 2011, addressing Philips' motion to consolidate/stay and Masimo's counter motion to add patents from Masimo II to Masimo I for trial. See D.I. 642, Ex. K 5:6-9:24; 34:7-35:24. Masimo requested adding three patents after the cutoff date for discovery on claim construe
.Masimo agreed with Philips that initially there were two Masimo patents raised in C.A. No. 11-742, the '400 and the '955 patents, and that the '955 patent goes back to the unselected '850 patent in the 09-80 case, which then goes back to the '272 patent, a selected, construed patent from Masimo I. D.I. 642, Ex. I at 23-24.
. See Stamps.com Inc. v. Endicia, Inc., 437 Fed.Appx. 897 (Fed.Cir. 2011); In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed.Cir. 2011); Intellectual Ventures v. Check Point Software, C.A. No. 10-1067-LPS, Tr. 11/13/2011, D.I. 642, Ex. B; Nuvasive, Inc v. Globus Medical Inc., C.A. No. 10-849-LPS, Tr. 11/3/11, id., Ex. D; Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, Tr. 9/6/11, id., Ex. E; Personalized User Model, LLP v. Google, Inc., C.A. No. 09-5252-LPS, Tr. 9/8/10, id. Ex. C. Philips also relies on decisions from other jurisdictions. See High Point Sari v. Sprint Nextel Corp., C.A. No. 09-2269-CM-DJW (D.Kan. Aug. 18, 2010), id., Ex. F; Hearing Components, Inc. v. Shure, Inc., C.A. No. 9:07CV104-Clark, 2008 WL 2485426 (June 13, 2008), id., Ex. A.
. C.A. No. 08-131-JJF, D.I. 66, Order (D.Del. Nov. 10, 2008).
. The PTO initially rejected the asserted claims of the '955 (Masimo II) during reexamination proceedings. D.I. 642, Ex. N. The PTO has also ordered reexamination of the asserted claims for the '984, '194 and '222 of Masimo I. Id., Exs. O-Q.
. D.I. 642 at 10.
. Philips adamantly denies it is requesting summary dismissal, and has explicitly provided " ‘any claim narrowing should leave open the possibility of adding additional claims upon a showing of good cause.’ ” D.I. 644 (quoting D.I. 642 at 8-9).
. Masimo's argument conflicts with its prior representations that certain "limbo” patents could easily be incorporated in Masimo I. See n. 16, infra.
. D.I. 643 at 1.
. 639 F.3d at 1311.
. See D.I. 643 at 3-6.
. Masimo does not indicate when that event is likely to occur, but apparently under its proposal, it is sometime after summary judgment motions are decided, and assumes counsel are able to agree, which, from prior experience, the court feels is questionable.
. See D.I. 642, Ex. B at 24:6-10, 31:4-9 (Intellectual Ventures); id., Ex. C at 26:5-18 (Personal User).
.See Stamps.com Inc. v. Endicia, Inc., 437 Fed.Appx. 897 (Fed.Cir. 2011); In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed.Cir. 2011); Intellectual Ventures v. Check Point Software, C.A. No. 10-1067-LPS, Tr. 11/13/2011, D.I. 642, Ex. B; Nuvasive, Inc v. Globus Medical Inc., C.A. No. 10-849-LPS, Tr. 11/3/11, id., Ex. D; Softview LLC v. Apple Inc., C.A. No. 10-389-LPS, Tr. 9/6/11, id., Ex. E; Personalized User Model, LLP v. Google, Inc., C.A. No. 09-5252-LPS, Tr. 9/8/10, id. Ex. C.; High Point Sari v. Sprint Nextel Corp., C.A. No. 09-2269-CM-DJW (D.Kan. Aug. 18, 2010), id., Ex. F; Hearing Components, Inc. v. Shure, Inc., C.A. No. 9:07CV104-Clark, 2008 WL 2485426 (June 13, 2008) id.. Ex. A; IP Cleaning S.p.A v. Annovi Reverberi, S.p.A., C.A. No. 08-cv-147-bbc, 2006 WL 5925609, at *1 (W.D.Wis. Oct. 26, 2006) (determining the court would only construe 16 claim terms, regardless of the number of patents and patent claims asserted); Fenster Family Patent Holdings, Inc. v. Siemens Med. Solutions USA, Inc., C.A. No. 04-38 JJF, 2005 WL 2304190, at *3 (D.Del. Sept. 20, 2005) (finding 90 asserted claims covering 49 allegedly infringing products as unreasonable and admittedly arbitrarily reduced the number of claims to 10 and 5 products).
. Landis v. N. Am. Co., 299 U.S. 248, 254-55, 57 S.Ct. 163, 81 L.Ed. 153 (1936).
. D.I. 642, Ex. I 8:13-15 (“But one thing that is clear is that there has been substantial discovery already and much of that discovery is related to the unselected patents.”); 11:5-6 (“There’s no doubt that judicial economy would be served” [by incorporating the three unselected patents into Masimo I for trial].).
. D.I. 642, Ex. I at 6:12-7:4 (representing that the selected, construed '984 patent and the unselected '850 patent are related parallel calculation patents; the selected and construed '272 patent and unselected '154 patent are related frequency domain patents; while the unselected '952 patent and the selected, construed '941 patent are related pulse rale patents).
. See 642, Ex. J.
.The '053 patent is from a continuation application of the '850. The '159 and '400 patents are from separate continuation applications of the '053. The '859 patent (now abandoned) is from a continuation application of the '053 patent. The '955 patent is from a divisional application of the '859 patent, and the '572 patent is from a continuation application of the '955 patent. Thus, the '850, '159, '400, '955 and '572 are the result of continuation applications from the construed '272 patent, which is presently under consideration on summary judgment.
A continuation application is filed to pursue additional claims to an invention disclosed in an earlier application (the parent application) that has not yet been issued or is abandoned. The continuation application uses the same specification as the pending parent application, and the applicant may not add additional disclosure to the specification. It claims the same invention claimed in the earlier application. Harmon, Homan and McMahon, Patents And The Federal Circuit, 10th Ed. § 18.1(f) 2011. A divisional application is similar to a continuation application in that it is based on the same disclosure as an earlier application, but is “carved out of an earlier application that disclosed and claimed more than one independent invention.” Id.'
. Compare D.I. 642, Ex. G ('955 patent) at claim 5 and Ex. H ('572 patent) at claim 1.
. D.I. 636.
. In re Katz Interactive Call Processing Litig., 639 F.3d at 1312 n. 7.
. Id. at 1310. See also, Stamps.com Inc. v. Endicia, Inc., 437 Fed.Appx. 897, 902-3 (Fed. Cir. 2011). In re Katz also recognized burden allocation rests on the claimant ("When the claimant is in the best position, to narrow the dispute, allocating the production burden to the claimant will benefit the decision-making process and therefore will not offend due process unless the burden allocation unfairly
.Stamps.com, 437 Fed.Appx. at 902. Stamps.com addressed similar issues as In re Katz, including plaintiff's argument that the denial of its motion to pursue additional claims violated due process. In upholding the lower court’s refusal to allow additional claims beyond the litigated claims, the Federal Circuit determined ”[w]here the patentee ’did not file a motion to add claims with the requisite showing of need,' it 'cannot legitimately complain that it did not have a meaningful opportunity to be heard.' ” Id., quoting In re Katz, 639 F.3d at 1312.
. In re Katz, 639 F.3d at 1313 (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1326 (Fed.Cir. 2003)).
. Id.
. D.I. 642 at 8-9.
. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir. 1997) (recognizing that every word in a claim has meaning, but this does not mean every word requires construction).
. Philips identified 135 prior art references, but only provided discovery responses for 19 of these references.
. As evidenced by the transcript, the request by the defendants to reduce the number of asserted claims in Intellectual Ventures was made at a much earlier stage in the case than the motion filed in the instant matter.
. D.I. 642, Ex. B at 22:10-24:4; 30:3-31:1.
. D.I. 642, Ex. C. at 7:2-8.
. Id. at 8:10-14.
. Unlike the instant matter, the defendant had not provided any invalidity contentions.
. D.I. 642, Ex. C at 26:5-27:6.
. In its one page letter response to Masimo's submission, Philips did not dispute this representation by Masimo. See D.I. 644.
. For example, whether a proposed added claim presents different questions on infringement or validity.
By directing Masimo to identify a limited number of claims and Philips to identify a limited number of references, the court is not absolutely precluding Masimo from asserting any of the 65-some remaining claims, or Philips from raising additional prior art references, but the court is requiring good cause to be shown before any modification to the limitations imposed will occur.
Reference
- Full Case Name
- MASIMO CORPORATION v. PHILIPS ELECTRONICS NORTH AMERICA CORPORATION
- Cited By
- 4 cases
- Status
- Published