Court: District Court, N.D. Georgia; September 20, 2016; Federal District Court
Defendant ETS-Lindgren, Inc. (ETS) has filed a motion for summary judgment arguing the invalidity of U.S. Patent No. 7,443,170 (the '170 Patent'), owned by plaintiff Microwave Vision, S.A. and its subsidiaries. The plaintiffs oppose this motion and seek a declaration of the patent's validity. The '170 Patent, issued on October 28, 2008, pertains to a device and method for measuring electromagnetic radiation from tested objects, specifically in the context of over-the-air measurement systems used for wireless devices.
Plaintiffs allege that ETS's multi-probe array measurement system infringes the '170 Patent, prompting them to initiate the current legal action. In response, ETS has counterclaimed, asserting non-infringement and the patent's invalidity. The court previously issued a Markman order, interpreting key terms of the '170 Patent.
The order defines:
1. **'network of probes'** as multiple probes that are fixed and coplanar.
2. **'means for providing a plurality of measurements'** as a function involving a mast that supports the test object, allowing for multiple measurements at various angular positions of the probes.
3. **'means for pivoting'** involves pivoting the probes and support at specific points, with associated structures including an arc on rollers and motorized components for adjustment.
These interpretations are critical for determining the patent's scope and the validity of ETS's claims.
ETS challenged the Court's interpretation of Claim 12, specifically the phrase 'pivoting one or more of the network of probes and the support,' asserting that it should mean both elements must pivot rather than one or the other. Following the Court’s Markman Order, ETS sought reconsideration, reiterating its argument and claiming the language was indefinite due to uncertainty in interpretation. The Court denied this request, stating ETS did not demonstrate any clear error. It highlighted that the claim allowed for pivoting either the support, the network of probes, or both, and found the claim not indefinite, as it provided reasonable certainty regarding the invention's scope based on the specification and prosecution history. The Court also dismissed ETS's assertion that the patent lacked necessary structural disclosures for the claimed function.
ETS had presented similar arguments in a separate inter partes proceeding before the Patent Trial and Appeal Board (PTAB), which concluded that ETS failed to identify any linking structure for the claimed function of pivoting both elements. Leveraging the PTAB's decision, ETS now seeks summary judgment on invalidity, arguing that the lack of linkage constitutes indefiniteness under 35 U.S.C. 112(b), undermining the validity of the 170 Patent. ETS claims that the plaintiffs acknowledged this issue by contending that a claim requiring a 'both' pivot would create an 'imaginary system' lacking embodiments within the patent, and asserts that the plaintiffs did not provide evidence of an embodiment where both the network and the support pivot together.
Plaintiffs argue that the 170 Patent's Summary of Invention indicates that 'relative tilting' occurs only when one body tilts relative to another, thereby excluding simultaneous pivoting of both the network and support. ETS emphasizes the PTAB's finding that the 170 Patent does not clearly link the structure with the function of pivoting both components, urging the Court to declare Claim 12 invalid based on that analysis. ETS claims that Claim 12 violates 112(b) because the Court's interpretation diverges from the applicant's original intent, and even if the two pivoting embodiments could be combined, the patent lacks sufficient structural description, as additional software/hardware would be necessary for operation.
In contrast, plaintiffs assert that ETS's motion is not a genuine summary judgment request but rather an attempt to have the Court reconsider its earlier construction of the 'means for pivoting' limitation in Claim 12. They argue that ETS mischaracterized their prior arguments and the Court's Markman ruling, claiming that their 'imaginary system' argument addressed ETS's assertion regarding the 'one or more' language in Claim 12, not the pivoting of both elements. Plaintiffs contend that ETS's interpretation of their statements as admissions is unfounded, as the Court had previously indicated that pivoting both components could be achievable through a combination of the described structures. They further note that ETS previously acknowledged that Claim 12 encompasses the possibility of both structures moving, suggesting that ETS's earlier positions may be considered binding admissions.
The PTAB decision is criticized for lacking binding effect on the Court, misapplying the law, and failing to conduct an indefiniteness inquiry, as well as relying on a more limited record. Plaintiffs assert that summary judgment should be granted in their favor based on three points: (1) there is no genuine dispute that the 170 Patent encompasses the 'both' pivot, (2) a person skilled in the art would recognize that pivoting both requires a combination of disclosed structures, and (3) no extra hardware or software is necessary for the pivoting function of the network of probes or the support.
Summary judgment is deemed appropriate when the moving party demonstrates there are no genuine disputes on material facts, allowing for judgment as a matter of law under Fed. R. Civ. P. 56(a). A 'genuine' dispute means more than mere metaphysical doubt regarding material facts, and the court must view the record favorably towards the non-moving party. If reasonable minds could differ on the interpretations of undisputed facts, summary judgment should be denied.
Preliminary concerns include plaintiffs' assertion that ETS is improperly seeking reconsideration disguised as a motion for summary judgment and ETS' mischaracterization of plaintiffs’ Markman arguments. The Court previously ruled that Claim 12’s function includes pivoting both the support and the network of probes, contradicting ETS' claim that it only covers one or the other. ETS' motion for reconsideration was rejected, with the Court affirming that Claim 12 is not indefinite, as the patent's claims provide reasonable certainty regarding the scope of the invention. ETS' argument hinges on whether Claim 12 clearly links function to structure, yet this issue has already been resolved, making ETS’ repetition of arguments a reconsideration attempt. Reconsideration is only warranted under specific circumstances, such as new evidence or changes in law.
A motion for reconsideration is not intended for rehashing previously dismissed arguments or for introducing new legal theories or evidence that could have been included in earlier motions, as established in case law (Bryan v. Murphy, 246 F.Supp.2d 1256, 1259; Preserve Endangered Areas, 916 F.Supp. at 1560). It is not a platform for the moving party to critique the court's earlier decisions. Local Rule 7.2(E) restricts parties from seeking reconsideration more than twenty-eight days after the entry of the relevant order or judgment and prohibits motions for reconsideration of the court's denial of a prior reconsideration motion. Consequently, parts of ETS' motion that revisit previously settled issues regarding Claim 12's linkage are rendered moot, as this matter was already resolved. However, the court recognizes it has not yet addressed the PTAB's decision that found insufficient linkage, which could provide persuasive insight into the patent's complexity. The court may engage in "rolling claim construction," allowing it to revisit claim interpretations as technology understanding evolves. While hesitant to allow ETS another chance, the court will consider the PTAB's findings that counter its prior construction of Claim 12, while reaffirming its earlier decisions on other related issues.
ETS misinterprets the court's findings and plaintiffs' arguments, asserting that plaintiffs claimed a system where both support and probes pivot is "imaginary." The court clarifies that the plaintiffs' argument is that a construction limiting "one or more" to only the network of probes, excluding support, is the "imaginary system," a proposal ETS advanced but which lacks support in the patent's specifications. The court emphasizes that both structures can move as one entity, and plaintiffs have consistently argued that Claim 12 allows for a system where both the network and support pivot, contradicting ETS' claims.
The Court clarified its interpretation of Claim 12 from the 170 Patent, affirming that it encompasses the functions of pivoting the network of probes, the support, or both. It rejected the Defendant's argument for a strict 'and' interpretation, affirming an 'and/or' reading. The Court explicitly stated that Plaintiffs did not concede that Claim 12 excludes a 'both' pivot and that no such construction was adopted. The term 'imaginary system' was defined narrowly, indicating it only pertains to a construction where 'one or more' applies solely to the network of probes, not the support.
In addressing the PTAB's decision, both parties maintained similar arguments regarding Claim 12's function requiring movement of both the network of probes and the support. The PTAB, however, found ETS's inter partes petition deficient, as it failed to identify structures in Figures 1 and 2 corresponding to the dual pivoting function. The PTAB noted that the patent did not clearly associate the combination of the two structures for the claimed function and dismissed the plaintiffs' 'relative tilting' argument due to a lack of mention in the Summary of Invention. Ultimately, the PTAB concluded that neither party's proposed construction of Claim 12 included corresponding structure to support the claimed dual functions.
The PTAB has explicitly stated that it does not engage in indefiniteness analysis due to its statutory limitations, focusing solely on patentability determinations. The Court concurs with the PTAB's stance that the 170 Patent adequately associates the structures depicted in Figures 1 and 2 with the claimed 'both' pivot function. ETS's argument asserting that the patent fails to disclose a clear link to any corresponding structure is rejected, particularly in light of the patent's 'relative tilting' language. The Court maintains its prior finding of indefiniteness based on precedent and the PTAB's analysis.
To evaluate a means-plus-function limitation, the Court must first identify the claimed function and then ascertain what structures correspond to that function as outlined in the specification. The structures must be clearly associated with the function, evaluated from the perspective of a person of ordinary skill in the art. The Court references a relevant case, Cardiac Pacemakers, where the patent lacked corresponding structures necessary to perform the claimed functions because they required external interpretation or action.
In contrast, for the 170 Patent, the claim language allows for the combination of structures from Figures 1 and 2 to achieve the 'both' pivot function. However, it is established that neither figure alone is sufficient to perform this function; rather, a combination of both is necessary. The Court concludes that the only structures capable of fulfilling the claimed dual functions are the two figures collectively, reinforcing that pivoting both the support and the network of probes requires their combined structure.
Claim language must clearly identify corresponding structures, as established in Cardiac Pacemakers, 296 F.3d at 1117. This identification requires more than stating that multiple structures together correspond to a single function; it must be evident that the individual structures cannot perform the function alone and that their combination is necessary. In this case, Figures 1 and 2 cannot independently perform the "both" pivot function, but Claim 12 specifies this function and describes how the means for moving the probes and support interact. Thus, it is clear that Figures 1 and 2 enable the support and probes to tilt relative to each other, satisfying the definiteness required for "means plus function" limitations.
The Court disagrees with ETS and the PTAB's positions, affirming that Claim 12 adequately links its functions to corresponding structures. ETS, relying on expert testimony, argues that the patent fails to describe sufficient structure because additional software or hardware would be necessary to execute the pivoting function. However, plaintiffs contend that the pivoting function does not require control functions or software, and that the mechanisms described in Claim 12—such as rollers and an electric motor—are sufficient to perform the pivoting function. The Court recognizes that while certain structural components are essential for performing the function, like a toaster requires a heating element, enabling features such as electricity do not perform the function themselves. Thus, the combination of rollers, actuators, and motors in the invention is deemed necessary for the pivoting function outlined in Claim 12.
External force is necessary for the 'means for pivoting' in the 170 Patent to function, similar to how a toaster requires a person to push a button to activate its heating element. The software or hardware facilitating this pivoting does not perform the pivot itself; instead, components such as motors, actuators, and rollers execute the pivot function. The excerpt references case law, notably Northrop Grumman Corp. v. Intel Corp. and O.I. Corp. v. Tekmar Co., to emphasize that the monitoring signals cannot be part of the structure that performs the action. ETS argues that the claim fails to address whether the pivoting mechanism requires an external agent, but the critical issue is whether the described structure actually performs the pivoting. The court highlights that, unlike in Cardiac Pacemakers, where the doctor (an external actor) was necessary for function, Claim 12 encompasses all components required for pivoting.
The court denies ETS's motion for summary judgment based on invalidity, affirming that the PTAB decision does not necessitate changes to its claim construction. Furthermore, the court grants the plaintiffs' cross-motion validating Claim 12 of the 170 Patent, concluding that it includes all necessary components for the pivot function. The court also notes that ETS's prior arguments are repetitive and do not warrant reconsideration. The ruling underscores the importance of claim construction in evaluating patent validity, referencing the Markman v. Westview Instruments decision. Both parties agree that Claim 12 involves pivoting both the support and the network of probes, although they disagree on whether it includes the ability to pivot each separately.
Plaintiffs acknowledged that the patent was not designed to encompass a scenario where both the support and probes pivot, leading to the conclusion that any claims suggesting such an embodiment breach Section 112. The Court has determined that Claim 12 does indeed cover a system where both components can pivot, rendering it invalid since the plaintiffs failed to articulate what MVG considered its invention. ETS sought clarification on the Court's interpretation of the phrase "means for pivoting one or more of the network of probes and the support," arguing that it should be read as 'and/or' (allowing for independent or simultaneous pivoting of the probes and support). Conversely, ETS contended that the phrase could only mean 'and,' or was indefinite due to ambiguity. The Court delayed its decision on ETS's reconsideration motion until February 2, 2016, while ETS's summary judgment motion was filed on December 8, 2015. The Court did not factor in the PTAB's ruling from October 2015 in its consideration of the earlier motion. If the defendants' interpretation were accepted, it would imply that a single probe could pivot while others remained stationary, which contradicts the structures described in the 170 Patent specification. The PTAB also dismissed ETS’s claim that 'one or more' applied solely to the network of probes. Additionally, ETS's argument that the Court's construction of Claim 12 misaligned with the applicant's intent was undermined by the plaintiffs' lack of such admission. Consequently, the Court found no grounds to reconsider its established interpretation of Claim 12, which already acknowledged the dual pivot function and corresponding structure. As the argument exceeded the permissible time for reconsideration and was essentially a repeated challenge to the settled construction, it was not considered.
