Seoul Viosys Co. v. P3 Int'l Corp.

• Decision Date: 30 September 2018
• Docket Number: 16-CV-6276 (AJN)
• Parties: Seoul Viosys Co., Ltd., Plaintiff, v. P3 International Corporation, Defendant.
• Court: U.S. District Court — Southern District of New York

Seoul Viosys Co., Ltd., Plaintiff, v. P3 International Corporation, Defendant.

16-CV-6276 (AJN)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

September 30, 2018

MEMORANDUM OPINION & ORDER

ALISON J. NATHAN, District Judge:

This is a patent infringement action brought by Plaintiff Seoul Viosys Co. against Defendant P3 International Corp. concerning seven patents: U.S. Patent Nos. 7,982,207 ("the '207 Patent), 9,203,006 ("the '006 Patent"), 8,692,282 ("the '282 Patent"), 8,168,988 ("the '988 Patent"), 8,664,693 ("the '693 Patent"), 9,269,867 ("the '867 Patent"), and 7,951,626 ("the '626 Patent"). Dkt. No. 8 ¶¶ 9-22. Plaintiff brings various claims for patent infringement arising under the patent laws of the United States, 35 U.S.C. § 1 et seq.

Before the Court are two pending matters. First, upon referral per Dkt. No. 74, United States Magistrate Judge Sarah Netburn conducted claim construction proceedings, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996), and issued an Opinion and Order constructing the patents at issue in this action. Dkt. No. 112. Plaintiff has objected to the construction of one term in that Opinion and Order. Second, the parties have submitted cross-motions for partial summary judgment.

The Court begins by addressing Plaintiff's objection to Judge Netburn's Opinion and Order. It then turns to the pending motions for summary judgment, beginning with a threshold dispute central to the summary judgment record before the Court. For the reasons set forth below, the Court ADOPTS Judge Netburn's Opinion and Order in full; GRANTS in part and DENIES in part Defendant's motion for partial summary judgment; and GRANTS in part and DENIES in part Plaintiff's motion for partial summary judgment.

I. Judge Netburn's Markman Opinion Is Adopted in Full

For purposes of its review of the Markman opinion, the Court adopts and refers the reader to Magistrate Judge Netburn's summary of the case and applicable law. Additionally, the Court adopts without further discussion those aspects of the Opinion and Order to which neither party has objected. As explained below, the Court rejects Plaintiff's objection to the Opinion and Order, and accordingly adopts the Opinion and Order's construction of the contested term.

A. Procedural Background

Magistrate Judge Netburn issued an Opinion and Order constructing the patent claims on September 22, 2017. Dkt. No. 112. Plaintiff moved for reconsideration and Judge Netburn reaffirmed her findings on November 29, 2017. Dkt. Nos. 114, 130. Plaintiff then filed an objection to the Opinion and Order's construction of the term "exposed from" in the '867 patent, and Defendant filed its response. Dkt. Nos. 131, 132.

B. Legal Standard

The appropriate standard of review applicable to a magistrate judge's ruling hinges on whether the ruling was dispositive or nondispositive. For non-dispositive determinations, the Court is required to "consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law." Fed. R. Civ. P. 72(a). An order is "clearly erroneous" if "on the entire evidence, [the district court] is left with the definite and firm conviction that a mistake has been committed." Easley v. Cromartie, 532 U.S. 234, 242 (2001) (quotationomitted). "A decision is contrary to law if it fails to apply or misapplies relevant statutes, case law, or rules of procedure." Levy v. Young Adult Inst., Inc., 13-CV-2861 (JPO), 2016 WL 4402038, at *1 (S.D.N.Y. Aug. 18, 2016) (quotation omitted). For dispositive determinations, "the district judge must determine de novo any part of the magistrate judge's disposition that has been properly objected to." Fed R. Civ. P. 72(b)(3).

"There is a split in authority as to whether claim construction is a nondispositive pretrial matter." Alexsam, Inc. v. MasterCard Int'l Inc., No. 15-CV-2799 (ILG)(SMG), 2018 WL 2849692, at *1 n.1 (E.D.N.Y. June 11, 2018), (citing cases); see also Mantissa Corp. v. Ondot Sys., Inc., No. 4:15-CV-1133, 2017 WL 1373771, at *1 n.2 (S.D. Tex. Jan. 13, 2017), adopted by 2017 WL 1383884 (S.D. Tex. Apr. 13, 2017). Because the Court agrees with Judge Netburn's construction of the contested term, it need not resolve whether claim construction is dispositive either as a general matter or in the precise factual circumstances of this case.

C. The Disputed Term

Plaintiff objects to Magistrate Judge Netburn's construction of only one term: "exposed from" as used in U.S. Patent No. 9,269,867 ("the '867 Patent"). Claim 1 of the '867 Patent, in relevant part, provides:

"A light-emitting device, comprising:

a first conductivity-type semiconductor [layer] disposed on a substrate;

an active layer disposed on the first conductivity-type semiconductor layer;

a second conductivity-type semiconductor layer disposed on the active layer;

an irregular convex-concave pattern disposed on a surface of the first conductivity-type semiconductor layer; and

a first electrode pad,

[. . .]

wherein the first conductivity-type semiconductor layer comprising the irregular convex-concave pattern is exposed from the active layer and the second conductivity-type semiconductor layer[.]

Dkt. No. 112, Markman Op. at 7 (citing '867 Patent at Column 11, Lines 6-23) (emphasis and some brackets in Markman Op.). In her Opinion and Order, Magistrate Judge Netburn concluded that "exposed from" should be constructed as "removed from, via etching, photolithography, or other methods." Markman Op. at 9. She reached this conclusion based on the relevant text within Claim 1 and based on other usage of the same term in the specification of the '867 Patent.

As to the text of the provision, Judge Netburn reasoned that "'exposed from' logically follows 'disposed on' in the sequence" described in Claim 1. Id. at 8. That is, "[a]fter the active layers and the second conductivity-type semiconductor layers are placed over the first conductivity-type layer," the claim uses "exposed from" to "describe[ ] how specific portions of the first conductivity-type semiconductor layer"—that is, the "irregular convex-concave pattern"—"are then removed or separated from the active and second conductivity-type semiconductor layers." Id.

Second, Judge Netburn referred to other portions of the specification of the '867 Patent, and noted that the patent "consistently uses 'exposed' to refer to removing the two layers placed above or over the first conductivity-type semiconductor layer via methods like photolithography and etching." Id. For example, the claim provides that "forming the LED requires 'exposing the first conductivity-type semiconductor layer by partially removing the active layer and the second conductivity-type semiconductor layer through photolithography and etching," after which "[a]n irregular convex-concave pattern is . . . created 'on the exposed first conductive type semiconductor layer by forming a photosensitive pattern on the mask.'" Id. (quoting '867 Patent at Column 2, Lines 23-26; Column 2, Lines 31-33) (emphasis retained); see also, e.g., id. at 8-9 (quoting '867 Patent at Column 7, Lines 60-62 to Column 8, Lines 1-8) ("The first conductivetype semiconductor layer is partially exposed by a patterning process, for example, photolithography and etching, using masks[.] . . . Then, etching is performed using the photosensitive layer pattern as a [mask] such that the second conductive type semiconductor layer and the active layer are partially removed to expose the first conductive type semiconductor layer.") (internal brackets omitted and emphasis retained).

D. Plaintiff's Objection

Plaintiff disagrees with this interpretation. According to Plaintiff, the term "exposed from" should be construed as "uncovered by" because it "corresponds to a physical, structural aspect of the device" such that it should be distinguished from a "process step." Id. at 9 (citing Dkt. No. 97, Pl. Claim Constr. Mem. at 6-8). Its primary objection is that, according to Plaintiff, patent law requires that a term like "exposed from" by default should be constructed according to its "structural sense"—not as a process limitation. Dkt. No. 131, Pl. Objections at 5-6.

In its objections, Plaintiff makes several additional arguments. First, it argues that P3 "unambiguously conceded that exposed from is a structural limitation in the claim." Id. at 5 (quotation and brackets omitted). Because the court's role in claim construction is "to resolve genuine disputes between the parties," Plaintiff contends the magistrate judge erred by diverging from the agreed-upon construction. Id. (citing O2 Micro Int'l Ltd. V. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)). Second, Plaintiff disputes whether the cited portions of the specification support the conclusion the magistrate judge reached. Id. at 7. Other uses of "exposed," in Plaintiff's view, are directed to the structure of the finished project. For example, the patent specification provides that "the irregular convex-concave pattern . . . enhances light extraction efficiency by refracting light entering the exposed surface of the first conductive type semiconductor layer." Id. at 7 (quoting '867 Patent at Column 4, lines 57-60) (internal bracketsomitted). Moreover, Plaintiff points out that the specification was designed to guide both process and product limitations, suggesting that terms used therein are not necessarily useful for interpreting the product limitation alone. Id. Moreover, the Court should not read limitations from the specification into the claims. Id. (citing Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988)).

Plaintiff next disagrees that the claim implicates a "sequence" at all, pointing the Court to inventors' use of the term "disposed below" as positional rather than temporal or sequential. Id. at 8. Plaintiff also maintains that the magistrate judge neglected the prosecution history of the patent, which it claims...