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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`CLINICOMP INTERNATIONAL, INC.,
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`v.
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`CERNER CORPORATION,
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`Plaintiff,
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`Defendant.
`
`
`
` Case No.: 17-cv-02479-GPC (DEB)
`
`ORDER:
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`(1) GRANTING DEFENDANT’S
`MOTION FOR SUMMARY
`JUDGMENT OF NON-
`INFRINGEMENT; AND
`
`[Dkt. No. 99.]
`
`(2) DENYING PLAINTIFF’S
`MOTION FOR LEAVE TO FILE A
`SUR-REPLY
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`[Dkt. No. 112.]
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`On September 19, 2022, Defendant Cerner Corporation (“Cerner”) filed a motion
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`for summary judgment of non-infringement. (Dkt. No. 99.) On October 14, 2022, Plaintiff
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`CliniComp International, Inc. (“CliniComp”) filed a response in opposition to Cerner’s
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`motion for summary judgment. (Dkt. No. 106.) On October 21, 2022, Cerner filed a reply.
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`(Dkt. No. 109.) On October 28, 2022, CliniComp filed a motion for leave to file a sur-
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`Case 3:17-cv-02479-GPC-DEB Document 120 Filed 11/15/22 PageID.3393 Page 2 of 44
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`reply. (Dkt. No. 112.) On November 1, 2022, Cerner filed an opposition to CliniComp’s
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`motion for leave to file a sur-reply. (Dkt. No. 116.)
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`
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`The Court held a hearing on Cerner’s motion for summary judgment on November
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`8, 2022. Amardeep Thakur, Bruce Zisser, and Shawn McDonald appeared for Plaintiff
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`CliniComp. Jared Bobrow and Jason Yu appeared for Defendant Cerner. For the reasons
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`set forth below, the Court grants Cerner’s motion for summary judgment of non-
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`infringement. In addition, the Court denies CliniComp’s motion for leave to file a sur-
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`reply.
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`I.
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`BACKGROUND
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`CliniComp is the owner of U.S. Patent No. 6,665,647 (“the ’647 Patent”) by
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`assignment. (Dkt. No. 1, Compl. ¶ 2.) In the present action, CliniComp alleges that Cerner
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`directly infringes claims 1, 2, 5, 10-13, 15-18, and 20-23 of the ’647 Patent by making,
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`using, selling, and/or offering to sell within the United States Cerner’s CommunityWorks,
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`PowerWorks, and Lights on Network services (collectively “the accused services”). (Dkt.
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`103, Ex. 2 at 21; see also Dkt. No. 1, Compl. ¶¶ 15-16.)
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`CommunityWorks and PowerWorks are two delivery services for Cerner’s primary
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`electronic health records (EHR) platform, Millennium. (See Dkt. No. 99-1 at 8; Dkt. No.
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`106 at 2.) Lights On Network (“LON”) is a cloud-based solution that “provides enterprise-
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`level data analytics” for Millennium customers. (Dkt. No. 108-9, Ex. J; Dkt. No. 103, Ex.
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`8).)
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`The ’647 Patent is entitled “Enterprise Healthcare Management System and Method
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`of Using Same.” U.S. Patent No. 6,665,647, at [54] (filed Dec. 16, 2003). The Federal
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`Circuit described the ’647 Patent as follows:
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`The ’647 patent describes a healthcare management system for
`healthcare enterprises. The purpose of the ’647 patent is to allow healthcare
`enterprises to consolidate legacy software applications and new software
`applications together on one software platform. Many healthcare enterprises
`utilize legacy systems for managing data related to a variety of uses, including
`patient care, accounting, insurance, and administrative functions. These
`established systems are often outdated and too inflexible to support healthcare
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`enterprises in the “modern managed care environment.” ’647 patent at col. 1
`ll. 58–62. The healthcare management system described in the ’647 patent
`allows healthcare enterprises to preserve existing legacy applications while
`simultaneously phasing in new or updated applications on the same system.
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`The enterprise healthcare management system in the ’647 patent allows
`enterprises to “remotely host[] . . . turnkey health care applications” and
`“provide[s] . . . enterprise users access to the turnkey applications via a public
`network.” Id. at col. 2 ll. 61–65. Enterprises can upgrade existing capabilities
`and add functionality not available in their current system without significant
`capital investments. Because the applications are hosted on a public network
`(i.e., the internet), the healthcare enterprise only needs computing resources
`sufficient to allow secure, quality access to the internet. The “turnkey”
`management system adjusts to changes within the enterprise as the system
`“easily and cost-effectively scales” to respond to an enterprise’s needs. Id. at
`col. 3 ll. 19–23.
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`The information collected by the enterprise from its applications may
`be stored in a searchable database. Specifically, the ’647 patent discloses a
`clinical data repository that stores information from applications within the
`suite of applications on the system. The clinical data repository stores
`“multidisciplinary information on a wide variety of enterprise functions.” Id.
`at col. 6 ll. 31–40. For example, the clinical data repository stores
`pharmaceutical, radiology, laboratory, and clinical information data utilized
`by other applications of the application suite.
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`The ’647 patent discloses that “the clinical data repository is a database
`that is partitioned” and that “the database portion may be configured as either
`a logical partition or a physical partition.” Id. at col. 9 ll. 60–64. The
`healthcare management system is also capable of supporting multiple
`enterprises, in which case “the information related to each of the separate
`healthcare enterprises is stored in a separate partition of the database.” Id. at
`col. 10 ll. 6–10. As such, when multiple enterprises are involved with using
`the system, the clinical data repository may have multiple partitions, with each
`partition holding healthcare management information for the respective
`enterprise.
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`Among other things, the ’647 patent describes the partitioning of data
`for multiple enterprises so as to allow the storing of “[the] first healthcare data
`in a first portion of the database associated with the first healthcare enterprise
`facility” and separately storing “[the] second healthcare data in a second
`portion of the database associated with the second healthcare enterprise
`facility.” Id. at col. 14 ll. 24–29. The system allows two (or more)
`independent healthcare enterprises to share access to certain applications
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`while maintaining sole access to their respective unique healthcare
`applications. The databases are effectively “partitioned” or “portioned” in this
`way.
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`Cerner Corp. v. Clinicomp Int’l, Inc., 852 F. App’x 532, 532–33 (Fed. Cir. 2021).
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`Independent claim 1 of the ’647 Patent, the only independent claim asserted by
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`CliniComp in this action,1 recites:
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`1. A method of operating an enterprise healthcare management system for a
`first healthcare enterprise facility and a second healthcare enterprise facility
`independent of the first healthcare enterprise facility, comprising:
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`establishing a first secure communication channel via a public network
`between an application server and a first end user device in the first enterprise
`facility and establishing a second secure communication channel via the
`public network between the application server and a second end user device
`in the second enterprise facility, the application server remotely hosting a
`healthcare application and having a database;
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`receiving first healthcare data from the first end user and second healthcare
`data from the second end user;
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`processing the first healthcare data and the second healthcare data with the
`healthcare application;
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`storing the processed first healthcare data in a first portion of the database
`associated with the first healthcare enterprise facility and storing the
`processed second healthcare data in a second portion of the database
`associated with the second healthcare enterprise facility;
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`configuring the database to accept legacy information derived from a legacy
`application operating at each of the first and second healthcare enterprise
`facilities, wherein the functions in the healthcare application are not
`duplicative of the legacy application; and
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`generating a query to extract information from the database relevant to a
`respective one of the first and second healthcare enterprise facilities derived
`from the healthcare data and the legacy information for managing and tracking
`a performance of the respective one of the first and second healthcare
`enterprise facilities,
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`wherein healthcare data in the first portion of the database is only accessible
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`
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`1
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`(See Dkt. No. 103, Ex. 2 at 2.)
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`to the first end user device and healthcare data in the second portion of the
`database is only accessible to the second end user device.
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`’647 Patent col. 14 ll. 8-45.
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`On December 11, 2017, CliniComp filed a complaint for patent infringement against
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`Defendant Cerner, alleging infringement of the ’647 Patent. (Dkt. No. 1, Compl.) On May
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`16, 2018, the Court granted Cerner’s motion to dismiss Clinicomp’s claims for willful
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`infringement and indirect infringement as well as the relief sought in connection with these
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`claims of injunctive relief, treble damages, and exceptionality damages. (Dkt. No. 18 at
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`21.) On June 25, 2018, Cerner filed an answer to CliniComp’s complaint. (Dkt. No. 19.)
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`On March 5, 2019, the Patent Trial and Appeal Board (“PTAB”) instituted an inter
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`partes review (“IPR”) as to claims 1-25 and 50-55 of the ’647 Patent. (Dkt. No. 30-1, Ex.
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`A.) On March 7, 2019, the Court granted a stay of the action pending completion of the
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`IPR proceedings. (Dkt. No. 31.) On March 26, 2020, the PTAB issued a final written
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`decision, determining that claims 50-55 of the ’647 Patent are not patentable in light of the
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`prior art, but that claims 1-25 of the ’647 Patent are patentable.2 (Dkt. No. 32, Ex. A at 93-
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`94.) On April 20, 2021, the Federal Circuit affirmed the PTAB’s determination that claims
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`1-25 of the ’647 Patent are patentable.3 (Dkt. No. 38-2, Ex. B at 10.) On June 24, 2021,
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`the Court granted the parties’ joint motion to lift the stay of the action. (Dkt. No. 44.)
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`On July 23, 2021, Cerner filed an amended answer to CliniComp’s complaint. (Dkt.
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`2
`Specifically, the PTAB concluded that Cerner had shown by a preponderance of the
`evidence that: (1) claims 50-52 are not patentable based on Evans; (2) claims 53 and 54 are
`not patentable based on Evans and Rai; (3) claims 50-53, and 55 are not patentable based
`on Johnson and Evans; and (4) claim 54 is not patentable based on Johnson, Evans, and
`Rai. (Dkt. No. 32, Ex. A at 93-94.) The PTAB further concluded that Cerner had not
`shown by a preponderance of the evidence: (1) that claims 1-5, 10-13, and 15-25 are
`unpatentable based on Johnson and Evans; or (2) that claims 6-9, and 14 are unpatentable
`based on Johnson, Evans, and Rai. (Id. at 93.)
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`3
`On November 15, 2021, the PTO issued an inter partes review certificate for the
`’647 Patent, stating: “Claims 1-25 are found patentable” and “Claims 50-55 are cancelled.”
`(Dkt. No. 71-2, Ex. A at A-20–A-21.)
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`No. 52.) On October 7, 2021, the Court issued a scheduling order in the action. (Dkt. No.
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`55.)
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`On July 28, 2022, the Court issued a claim construction order, construing the
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`disputed claim terms from the ’647 Patent. (Dkt. No. 91.) By the present motion, Cerner
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`moves for summary judgment of non-infringement of the ’647 Patent. (Dkt. No. 99-1 at
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`25.)
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`I.
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`Legal Standards
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`II. DISCUSSION
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`A.
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`Legal Standards Governing Summary Judgment
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`Summary judgment is appropriate under Federal Rule of Civil Procedure 56 if the
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`moving party demonstrates “that there is no genuine dispute as to any material fact and the
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`movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); Celotex Corp. v.
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`Catrett, 477 U.S. 317, 322 (1986). Material facts are facts that, under the governing
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`substantive law, may affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477
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`U.S. 242, 248 (1986). A dispute as to a material fact is genuine if there is sufficient
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`evidence for a reasonable jury to return a verdict for the non-moving party. Id. “Disputes
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`over irrelevant or unnecessary facts will not preclude a grant of summary judgment.” T.W.
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`Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987).
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`A party seeking summary judgment always bears the initial burden of demonstrating
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`that there is no genuine dispute as to any material fact. Celotex, 477 U.S. at 323. A moving
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`party without the ultimate burden of proof at trial can satisfy its burden in two ways: (1)
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`by presenting “evidence negating an essential element of the nonmoving party’s claim or
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`defense;” or (2) by demonstrating “that the nonmoving party does not have enough
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`evidence of an essential element to carry its ultimate burden of persuasion at trial.” Nissan
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`Fire & Marine Ins. Co. v. Fritz Companies, Inc., 210 F.3d 1099, 1102 (9th Cir. 2000).
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`Once the moving party establishes the absence of a genuine dispute as to any material fact,
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`the burden shifts to the nonmoving party to “set forth, by affidavit or as otherwise provided
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`in Rule 56, ‘specific facts showing that there is a genuine issue for trial.’” T.W. Elec. Serv.,
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`809 F.2d at 630 (quoting former Fed. R. Civ. P. 56(e)); accord Horphag Research Ltd. v.
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`Garcia, 475 F.3d 1029, 1035 (9th Cir. 2007). To carry this burden, the non-moving party
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`“may not rest upon mere allegation or denials of his pleadings.” Anderson, 477 U.S. at
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`256; see also Behrens v. Pelletier, 516 U.S. 299, 309 (1996) (“On summary judgment, . . .
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`the plaintiff can no longer rest on the pleadings.”). Rather, the nonmoving party “must
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`present affirmative evidence . . . from which a jury might return a verdict in his favor.”
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`Anderson, 477 U.S. at 256.
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`When ruling on a motion for summary judgment, the court must view the facts and
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`draw all reasonable inferences in the light most favorable to the non-moving party. Scott
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`v. Harris, 550 U.S. 372, 378 (2007). The court should not weigh the evidence or make
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`credibility determinations. See Anderson, 477 U.S. at 255. “The evidence of the non-
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`movant is to be believed.” Id. Further, the court may consider other materials in the record
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`not cited to by the parties, but it is not required to do so. See Fed. R. Civ. P. 56(c)(3); see
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`also Simmons v. Navajo Cnty., 609 F.3d 1011, 1017 (9th Cir. 2010) (“[A] district court
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`has no independent duty ‘to scour the record in search of a genuine issue of triable fact.’”).
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`B.
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`Legal Standards Governing Patent Infringement
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`A patent infringement analysis proceeds in two steps. Niazi Licensing Corp. v. St.
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`Jude Med. S.C., Inc., 30 F.4th 1339, 1350 (Fed. Cir. 2022); JVW Enterprises, Inc. v.
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`Interact Accessories, Inc., 424 F.3d 1324, 1329 (Fed. Cir. 2005). In the first step, the court
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`construes the asserted claims as a matter of law. See Niazi, 30 F.4th at 1351; JVW, 424
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`F.3d at 1329. In the second step, the factfinder compares the properly construed claims to
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`the accused method or device. See id.
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`“‘The patentee bears the burden of proving infringement by a preponderance of the
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`evidence.’” Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir.
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`2011). To establish infringement of a method claim, “a patentee must prove that each and
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`every step of the method or process was performed.” Aristocrat Techs. Australia Pty Ltd.
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`v. Int’l Game Tech., 709 F.3d 1348, 1362 (Fed. Cir. 2013); see Akamai Techs., Inc. v.
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`Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (“Direct
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`infringement under § 271(a) occurs where all steps of a claimed method are performed by
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`or attributable to a single entity.”); Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
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`1364, 1378 (Fed. Cir. 2011) (“To prove infringement, a plaintiff must prove the presence
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`of each and every claim element or its equivalent in the accused method or device.”).
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`Under the doctrine of equivalents, “a product or process that does not literally
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`infringe . . . the express terms of a patent claim may nonetheless be found to infringe if
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`there is ‘equivalence’ between the elements of the accused product or process and the
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`claimed elements of the patented invention.” Warner–Jenkinson Co. v. Hilton Davis
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`Chem. Co., 520 U.S. 17, 21 (1997); accord Eagle Pharms. Inc. v. Slayback Pharma LLC,
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`958 F.3d 1171, 1175 (Fed. Cir. 2020). The Federal Circuit “applies two articulations of
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`the test for equivalence.” Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008)
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`(citing Warner–Jenkinson, 520 U.S. at 40); see UCB, Inc. v. Watson Lab’ys Inc., 927 F.3d
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`1272, 1284 (Fed. Cir. 2019). Under the insubstantial differences test, “‘[a]n element in the
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`accused device is equivalent to a claim limitation if the only differences between the two
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`are insubstantial.’” UCB, 927 F.3d at 1284 (quoting Voda, 536 F.3d at 1326).
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`“Alternatively, under the function-way-result test, an element in the accused device is
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`equivalent to a claim limitation if it ‘performs substantially the same function in
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`substantially the same way to obtain substantially the same result.’” Voda, 536 F.3d at
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`1326 (quoting Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1209–10 (Fed. Cir.
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`2001)); see Ajinomoto Co. v. Int’l Trade Comm’n, 932 F.3d 1342, 1356 (Fed. Cir. 2019).
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`“Regardless how the equivalence test is articulated, ‘the doctrine of equivalents must be
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`applied to individual limitations of the claim, not to the invention as a whole.’” Mirror
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`Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012) (quoting Warner–
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`“‘Infringement, whether literal or under the doctrine of equivalents, is a question of
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`fact.’” Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed.
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`Cir. 2015). “Summary judgment of noninfringement is proper when no reasonable jury
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`could find that every limitation recited in a properly construed claim is found in the accused
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`device either literally or under the doctrine of equivalents.” Id.
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`C.
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`Legal Standards Governing Claim Construction
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`Because the first step in an infringement analysis is for the Court to construe the
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`asserted claims as a matter of law, the Court sets forth the following legal standards
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`governing claim construction. Claim construction is an issue of law for the court to decide.
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 838 (2015); Markman v. Westview
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`Instr., Inc., 517 U.S. 370, 372 (1996). Although claim construction is ultimately a question
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`of law, “subsidiary factfinding is sometimes necessary.” Teva, 135 S. Ct. at 838.
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`“It is a ‘bedrock principle’ of patent law that the ‘claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). “The purpose of claim construction is to
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`‘determin[e] the meaning and scope of the patent claims asserted to be infringed.’” O2
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`Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008).
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`Claim terms “‘are generally given their ordinary and customary meaning[,]’” which
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`“is the meaning that the term would have to a person of ordinary skill in the art in question
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`at the time of the invention.” Phillips, 415 F.3d at 1312–13. “In some cases, the ordinary
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`meaning of claim language as understood by a [PHOSITA] may be readily apparent even
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`to lay judges, and claim construction in such cases involves little more than the application
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`of the widely accepted meaning of commonly understood words.” Id. at 1314. “However,
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`in many cases, the meaning of a claim term as understood by persons of skill in the art is
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`not readily apparent.” O2 Micro, 521 F.3d at 1360. If the meaning of the term is not
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`readily apparent, the court must look to “‘those sources available to the public that show
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`what a person of skill in the art would have understood disputed claim language to mean.’”
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`Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). “Those sources include ‘the words of the
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`claims themselves, the remainder of the specification, the prosecution history, and extrinsic
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`evidence.’” Id. (quoting Innova, 381 F.3d at 1116); see Ericsson, Inc. v. D-Link Sys., Inc.,
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`773 F.3d 1201, 1217–18 (Fed. Cir. 2014).
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`In determining the proper construction of a claim, a court should first look to the
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`language of the claims. See Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373
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`(Fed. Cir. 2019) (“‘[C]laim construction must begin with the words of the claims
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`themselves.’”); Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed.
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`Cir. 2014) (“‘a claim construction analysis must begin and remain centered on the claim
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`language itself’”). The context in which a disputed term is used in the asserted claims may
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`provide substantial guidance as to the meaning of the term. See Phillips, 415 F.3d at 1314.
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`A court must also read claims “in view of the specification, of which they are a part.”
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`Markman, 52 F.3d at 979; see 35 U.S.C. § 112(b) (“The specification shall conclude with
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`one or more claims particularly pointing out and distinctly claiming the subject matter
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`which the inventor or a joint inventor regards as the invention.”). “‘Apart from the claim
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`language itself, the specification is the single best guide to the meaning of a claim term.’”
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`Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014).
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`But “[t]he written description part of the specification does not delimit the right to
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`exclude. That is the function and purpose of claims.” Markman v. Westview Instruments,
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`Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc); accord Arlington Indus., Inc. v.
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`Bridgeport Fittings, Inc., 632 F.3d 1246, 1256 (Fed. Cir. 2011). Therefore, “it is improper
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`to read limitations from a preferred embodiment described in the specification—even if it
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`is the only embodiment—into the claims absent a clear indication in the intrinsic record
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`that the patentee intended the claims to be so limited.” Dealertrack, Inc. v. Huber, 674 F.3d
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`1315, 1327 (Fed. Cir. 2012); accord Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 514
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`(Fed. Cir. 2015).
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`In addition to the claim language and the specification, the patent’s prosecution
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`history may be considered if it is in evidence. Phillips, 415 F.3d at 1317. The prosecution
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`history “consists of the complete record of the proceedings before the PTO and includes
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`the prior art cited during the examination of the patent.” Id. “Like the specification, the
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`prosecution history provides evidence of how the PTO and the inventor understood the
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`patent.” Id. “Yet because the prosecution history represents an ongoing negotiation
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`17-cv-02479-GPC (DEB)
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`between the PTO and the applicant, rather than the final product of that negotiation, it often
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`lacks the clarity of the specification and thus is less useful for claim construction purposes.”
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`Id.
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`In most situations, analysis of the intrinsic evidence will resolve claim construction
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`disputes. See Vitronics, 90 F.3d at 1583; Teva, 135 S. Ct. at 841; see also Seabed
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`Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the
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`meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to
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`extrinsic evidence.”). However, “[w]here the intrinsic record is ambiguous, and when
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`necessary,” district courts may “rely on extrinsic evidence, which ‘consists of all evidence
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`external to the patent and prosecution history, including expert and inventor testimony,
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`dictionaries, and learned treatises.’” Power Integrations, Inc. v. Fairchild Semiconductor
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`Int’l, Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at 1317). A
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`court must evaluate all extrinsic evidence in light of the intrinsic evidence. Phillips, 415
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`F.3d at 1319. “‘[E]xtrinsic evidence is to be used for the court’s understanding of the
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`patent, not for the purpose of varying or contradicting the terms of the claims.’” Genuine
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`Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1373 (Fed. Cir. 2022); see also
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`Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015) (“Extrinsic
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`evidence may not be used ‘to contradict claim meaning that is unambiguous in light of the
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`intrinsic evidence.’”). In cases where subsidiary facts contained in the extrinsic evidence
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`“are in dispute, courts will need to make subsidiary factual findings about that extrinsic
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`evidence.” Teva, 135 S. Ct. at 841.
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`“[D]istrict courts are not (and should not be) required to construe every limitation
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`present in a patent’s asserted claims.” O2 Micro, 521 F.3d at 1362; see also Eon Corp. IP
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`Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318–19 (Fed. Cir. 2016) (“‘[O]nly
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`those terms need be construed that are in controversy, and only to the extent necessary to
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`resolve the controversy.’”). In certain situations, it is appropriate for a court to determine
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`that a claim term needs no construction and its plain and ordinary meaning applies. See
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`O2 Micro, 521 F.3d at 1360; Phillips, 415 F.3d at 1314. But “[a] determination that a claim
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 120 Filed 11/15/22 PageID.3403 Page 12 of 44
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`term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate
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`when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’
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`meaning does not resolve the parties’ dispute.” O2 Micro, 521 F.3d at 1361. When the
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`parties present a dispute regarding the scope of a claim term, it is the court’s duty to resolve
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`the dispute. Id. at 1362; Eon, 815 F.3d at 1318.
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`II.
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`Federal Rule of Civil Procedure 56(d)
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`As an initial matter, CliniComp argues that Cerner’s motion for summary judgment
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`should be denied as premature. (Dkt. No. 106 at 2.) CliniComp notes that it has not taken
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`Rule 30(b)(6) depositions or received documents in response to several third-party
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`subpoenas, and expert discovery has not even begun. (Id.) In response, Cerner argues that
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`its motion is not premature, and the mere fact that the fact-discovery period in this action
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`has not expired is not a basis to deny summary judgment. (Dkt. No. 109 at 10.)
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`Federal Rule of Civil Procedure 56(d) provides “a device for litigants to avoid
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`summary judgment when they have not had sufficient time to develop affirmative
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`evidence.” United States v. Kitsap Physicians Serv., 314 F.3d 995, 1000 (9th Cir. 2002)
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`(discussing former Rule 56(f), which is now Rule 56(d)). Rule 56(d) provides in full: “If
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`a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present
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`facts essential to justify its opposition, the court may: (1) defer considering the motion or
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`deny it; (2) allow time to obtain affidavits or declarations or to take discovery; or (3) issue
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`any other appropriate order.” Fed. R. Civ. P. 56(d).
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`To prevail under Rule 56(d), a party requesting a continuance “must identify by
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`affidavit the specific facts that further discovery would reveal, and explain why those facts
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`would preclude summary judgment.” Tatum v. City & Cnty. of San Francisco, 441 F.3d
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`1090, 1100 (9th Cir. 2006); see also Blough v. Holland Realty, Inc, 574 F.3d 1084, 1091
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`n.5 (9th Cir. 2009) (“To prevail under this Rule, parties opposing a motion for summary
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`judgment must make ‘(a) a timely application which (b) specifically identifies (c) relevant
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`information, (d) where there is some basis for believing that the information sought actually
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`exists.” (internal quotation marks omitted)). “Failure to comply with these requirements
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`17-cv-02479-GPC (DEB)
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`Case 3:17-cv-02479-GPC-DEB Document 120 Filed 11/15/22 PageID.3404 Page 13 of 44
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`‘is a proper ground for denying discovery and proceeding to summary judgment.’” Fam.
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`Home & Fin. Ctr., Inc. v. Fed. Home Loan Mortg. Corp., 525 F.3d 822, 827 (9th Cir. 2008).
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`“The party seeking a Rule 56(d) continuance bears the burden of proffering facts sufficient
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`to satisfy the requirements of 56(d).” Martinez v. Columbia Sportswear USA Corp., 553
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`F. App’x 760, 761 (9th Cir. 2014) (citing Nidds v. Schindler Elevator Corp., 113 F.3d 912,
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`921 (9th Cir. 1996)).
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`Here, CliniComp has failed to even attempt to satisfy the requirements of Rule 56(d).
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`Indeed, CliniComp does not even invoke Rule 56(d). (See Dkt. No. 106 at 2.) CliniComp
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`has not presented the Court with an affidavit or declaration identifying any specific facts
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`that further discovery would reveal and explaining why those facts would preclude
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`summary judgment of non-infringement. CliniComp simply notes in its motion that it has
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`not taken Rule 30(b)(6) depositions or received documents in response to several third-
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`party subpoenas, and expert discovery has not begun. (Dkt. No. 106 at 2.) CliniComp
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`does not assert that any of this anticipated discovery would reveal any specific additional
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`facts that are “essential” to its opposition to Cerner’s motion for summary judgment of
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`non-infringement. See Sec. & Exch. Comm’n v. Stein, 906 F.3d 823, 833 (9th Cir. 2018)
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`(explaining that “[t]he facts sought must be ‘essential’ to the party’s opposition to summary
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`judgment”). As such, CliniComp has failed to satisfy the requirements of Rule 56(d), and,
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`therefore, the Court rejects CliniComp’s argument that Cerner’s motion for summary
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`judgment of non-infringement is premature. See Tatum, 441 F.3d at 1100 (“Because
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`[plaintiff] did not satisfy the requirements of Rule 56(f), the district court did not abuse its
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`discretion by deny