Halo Elec.s Inc. v. Pulse Eng'g Inc., 2:07-CV-00331-PMP-PAL.

• Decision Date: 14 June 2010
• Docket Number: No. 2:07-CV-00331-PMP-PAL.,2:07-CV-00331-PMP-PAL.
• Citation: 721 F.Supp.2d 989
• Parties: HALO ELECTRONICS, INC., Plaintiff, v. PULSE ENGINEERING, INC. and Technitrol, Inc., Defendants.
• Court: U.S. District Court — District of Nevada

721 F.Supp.2d 989

HALO ELECTRONICS, INC., Plaintiff,

v.PULSE ENGINEERING, INC. and Technitrol, Inc., Defendants.

No. 2:07-CV-00331-PMP-PAL.

United States District Court,D. Nevada.

June 14, 2010.

COPYRIGHT MATERIAL OMITTED.

COPYRIGHT MATERIAL OMITTED.

John C. Adkisson, Michael J. Kane, William R. Woodford, Fish & Richardson P.C., Minneapolis, MN, Juanita R. Brooks, Fish & Richardson P.C., San Diego, CA, Lori N. Brown, Harmon & Davies, P.C., Las Vegas, NV, for Plaintiff.

Brian R. Harrow, David E. Sipiora, Kristopher L. Reed, Townsend and Townsend and Crew LLP, Denver, CO, Kelly A. Evans, Paul Swenson Prior, Snell & Wilmer LLP, Las Vegas, NV, for Defendants.

ORDER

PHILIP M. PRO, District Judge.

Presently before the Court is Plaintiff Halo Electronics, Inc.'s Markman Claim Construction Brief (Doc. # 99), filed on September 17, 2009. Defendant Pulse Engineering, Inc. filed an Opposition (Doc. # 115) on October 15, 2009. Plaintiff filed a Reply (Doc. # 132) on November 19, 2009.

Also before the Court is Defendant Pulse Engineering, Inc.'s Markman Claim Construction Brief (Doc. # 101), filed on September 17, 2009. Plaintiff Halo Electronics, Inc. filed an Opposition (Doc. # 112) on October 15, 2009. Defendant filed a Reply (Doc. # 134) on November 19, 2009.

Also before the Court is Defendant Pulse Engineering, Inc.'s Markman Claim Construction Brief Regarding Claims Added During Reexamination of the Halo Patents (Doc. # 158) filed on January 21, 2010. Plaintiff Halo Electronics, Inc. filed an Opposition (Doc. # 159) on February 4, 2010. Defendant filed a Reply (Doc. # 166) on February 18, 2010. The Court held a hearing on these matters on May 27, 2010. (Mins. of Proceeding (Doc. # 191).)

I. BACKGROUND

Plaintiff Halo Electronics, Inc. (“Halo”) owns the legal rights to United States Patent Nos. 5,656,985 (the '985 Patent), 6,297,720 (the '720 Patent), 6,297,721 (the '721 Patent), 6,344,785 (the '785 Patent), and 6,662,431 ('431 Patent). ¹ The '985 Patent is the parent Patent from which the other Patents stem. The '985, '785, and ' 431 Patents have identical specifications, the latter two being “continuations” of the ' 985 Patent. The '489, '720, and ' 721 Patents also derive from the same disclosure as the ' 985 Patent, with some additional information added to their respective specifications. All the Patents relate to an improved design for an electronic surface-mount package. (Decl. of Kristopher Reed in Support of Pulse Eng'g Inc. & Technitrol, Inc.'s Opening Claim Constr. Br. [“Decl. in Support of Pulse's Opening Br.”] (Doc. # 102), Ex. A at 8 (1:4-18).) The package mounts to the surface of a printed circuit board inside electronic devices, such as computers and Internet routers, switches, and hubs. ( Id.) Every patent claim asserted by Halo includes at least one “side wall,” “toroid transformer,” terminal pin “molded within” the package, and posts to which wires are attached.

Defendant Pulse Engineering, Inc. (“Pulse”) owns the legal rights to United States Patent Nos. 6,769,936 (the Gutierrez/'936 Patent) and 6,116,963 (the Shutter/'963 Patent). The Gutierrez Patent describes an improved design and method of manufacturing a single- or multi-connector assembly which may include electronic components. (Decl. of William Woodford in Support of Halo's Opening Claim Constr. Br. [“Decl. in Support of Halo's Opening Br.”] (Doc. # 100), Ex. A at 16 (1:5-11).) The Shutter Patent is a microelectronic connector that incorporates a simplified design and permits rapid assembly by using a “bump and bend” arrangement in the first aspect of the invention, and a “snap” pin arrangement in the second aspect of the invention. ( Id., Ex. C at 22-23 (2:25-64).)

Plaintiff Halo filed an Amended Complaint alleging Defendant Pulse is infringing on Halo's '985, '720, '721, '785, and '431 Patents by selling surface-mount transformers embodying the patented inventions that contain an electronic surface-mount package including, but not limited to, parts numbers S558-5500-12-F, H1102NL, and HX1188NL. (First Am. Compl. for Patent Infringement [“Am. Compl.”] (Doc. # 51) at ¶¶ 16-17.) In response, Defendant Pulse filed Counterclaims alleging Plaintiff Halo is infringing on Pulse's ' 936 (Gutierrez) and '963 (Shutter) Patents by selling LAN products embodying the patented inventions, including but not limited to, Halo's “FastJacks” connectors. (Ans. of Defs. Pulse Eng'g, Inc. & Technitrol, Inc. to First. Am. Compl.; & Countercl. of Def. Pulse Eng'g for Patent Infringement [“Pulse Answer”] (Doc. # 60) at ¶ 11.)

In 2008, shortly after discovery began, the Court granted Pulse's request to stay the litigation because a third party had asked the United States Patent and Trademark Office (“PTO”) to reexamine the validity of the five Halo patents in the suit. ( See Mot. to Stay Pending Reexamination by Defs.' Pulse Eng'g, Inc., Technitrol, Inc. (Doc. # 70); Order Granting Mot. to Stay (Doc. # 72).) ² Upon completion of the reexamination, the PTO confirmed the validity of every claim in the five Halo patents asserted in this litigation and allowed Halo to add 66 additional claims. ( See Decl. of John Adkisson in Support of Halo Electronics, Inc.'s Response to Defs.' Opening Br. Re: Claims Added During Reexamination of the Halo Patents (Doc. # 160), Exs. 1-5.) Halo thereafter asserted most of those new claims against Pulse, and Pulse contends that there are three newly-asserted claims that require construction by the Court.

II. LEGAL STANDARDS

Patent claim construction is a question of law for the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). When interpreting claims, a court's primary focus should be on the intrinsic evidence of record, which consists of the claims, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1314-17 (Fed.Cir.2005) (en banc). The Court should begin by examining the claim language. Id. at 1312. Claim language should be viewed through the lens of a person of “ordinary skill in the relevant art at the time of the invention.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1283 (Fed.Cir.2005). If the claim language is clear on its face, then consideration of the other intrinsic evidence is limited “to determining if a deviation from the clear language of the claims is specified.” Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001).

The Court should give the claim's words their “ordinary and customary meaning.” Phillips, 415 F.3d at 1312-13 (quotation omitted). In construing a claim term's ordinary meaning, the context in which a term is used must be considered. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.Cir.2003). Both asserted and unasserted claims of the patent also can add meaning to a disputed claim term as claim terms normally are used consistently throughout the patent. Phillips, 415 F.3d at 1314. Additionally, where the patents at issue “all derive from the same parent application and share many common terms, [the court] must interpret the claims consistently across all asserted patents.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed.Cir.2005).

“[C]laims must be read in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315 (quotation omitted). The specification can offer “practically incontrovertible directions about a claim meaning.” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed.Cir.2009). For example, the patentee may act as its own “lexicographer” and give a specialized definition of a claim term either explicitly or implicitly, in which case, the specification acts as a dictionary for the patent. Id.; see also Phillips, 415 F.3d at 1321. “Likewise, inventors and applicants may intentionally disclaim, or disavow, subject matter that would otherwise fall within the scope of the claim.” Abbott Labs., 566 F.3d at 1288.

“When consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification.” Id. “[A]lthough the specification may well indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into claims when the claim language is broader than such embodiments.” Tate Access Floors, Inc. v. Maxcess Techns., Inc., 222 F.3d 958, 966 (Fed.Cir.2000) (quotation omitted). “By the same token, the claims cannot enlarge what is patented beyond what the inventor has described in the invention.” Abbott Labs., 566 F.3d at 1288 (internal quotation omitted).

Pursuant to the definiteness requirement in Section 112 of the Patent Act, “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. Whether a claim satisfies this requirement is a matter of law determined by the Court construing the patent claims.

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005) (citing 35 U.S.C. § 112, ¶ 2.) “[T]he purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude.” Id. Thus, the standard for determining indefiniteness is whether “the claims at issue are sufficiently precise to permit a potential competitor to determine whether or not he is infringing.” Exxon Research & Eng'g Co. v. U.S., 265 F.3d 1371, 1375 (Fed.Cir.2001) (quotation and alteration omitted). However, because of the statutory presumption of patent validity, claim terms are considered invalid for indefiniteness “only if reasonable efforts at claim construction prove futile.” Id. Clear and convincing evidence therefore must be shown to invalidate a patent. Datamize, 417 F.3d at 1348.

In addition to the specification, the Court also...