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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`MICROWAVE VISION, S.A.,
`MVG INDUSTRIES, SAS, AND
`MVG, INC.,
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`
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`ETS-LINDGREN INC.
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`
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`Plaintiffs,
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`v.
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`Defendant.
`
`
`CIVIL ACTION NO.
`1:14-CV-1153-SCJ
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`ORDER
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`
`
`Before the Court in this patent infringement action is defendant ETS-
`
`Lindgren, Inc.’s (ETS) invalidity-based motion for summary judgment (Doc.
`
`82), and plaintiffs’ oppositional (they seek a declaration of validity) cross-
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`motion for summary judgment. Doc. 84.
`
`I.
`
`BACKGROUND
`
`As the Court related in its Markman1 order:
`
`Plaintiff Microwave Vision, S.A. and its wholly owned subsidiaries
`MVG Industries, SAS, and MVG, Inc. (collectively, the “Plaintiffs”), and
`
`
`1 See Markman v. Westview Instruments, Inc., 517 U.S. 370, 374 (1996) (evaluating a
`patent claim’s validity “in turn necessitates a determination of ‘what the words in
`the claim mean’”). A “Markman” hearing (or order) thus delves exclusively into
`claim construction issues.
`
`
`
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 2 of 30
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`
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` Defendant[] . . . ETS-Lindgren Inc. . . . are competitors in the field of
`over-the-air measurement systems, including multi-probe systems. See
`Doc. No. [19], p. 2. Among other things, such systems can be used to
`measure various parameters relating to antennas used in wireless
`devices, including wireless cellular communication devices. See id.
`Plaintiff Microwave Vision owns the rights to U.S. Patent No. 7,443,170
`(the “170 Patent”), which issued on October 28, 2008, and is entitled
`“Device and Method for Determining at Least One Variable Associated
`With the Electromagnetic Radiation of an Object Being Tested.” See
`Doc. No. [1], ¶17; Doc. No. [1-1]. Plaintiffs believe that Defendants' . . .
`multi-probe array measurement system utilizes technology claimed by
`the 170 Patent. Accordingly, Plaintiffs have filed the present action
`accusing Defendants of patent infringement. See Doc. No. [1]. . . .
`Defendants [then] filed counterclaims seeking declarations that (1)
`[they] have not infringed the '170 Patent, and (2) the '170 Patent is
`invalid. See Doc. Nos. [17]-[19].
`
`Microwave Vision, S.A. v. ESCO Techs. Inc., No. 14-CV-1153-SCJ, 2015 WL
`
`11237099, at *1 (N.D. Ga. July 15, 2015) (“Markman Order”) (footnote
`
`omitted), reconsideration denied Microwave Vision, S.A. v. ETS-Lindgren
`
`Inc., No. 1:14-CV-1153-SCJ, 2016 WL 4111361 (N.D. Ga. Feb. 2, 2016)
`
`(“Reconsideration Order”).
`
`The Markman Order construed three terms in the 170 Patent:
`
`1. “network of probes” is construed to mean “multiple probes having
`a fixed and coplanar relationship to one another”
`
`2. “means for providing a plurality of measurements using the
`network of probes, the plurality of measurements corresponding to a
`plurality of angular positions of a given one of the network of probes
`relative to the test object” is construed as follows:
`
`
`2
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`
`
`
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 3 of 30
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`Claimed Function:
`
`
`“providing a plurality of measurements using the network of
`probes, the plurality of measurements corresponding to a
`plurality of angular positions of a given one of the network of
`probes relative to the test object”
`
`Associated Structure:
`
`(1) “a mast that supports the object under test, and that extends
`radially from a base and along the main axis of support to an
`opposite end that is nearer the geometric center of the arc formed by
`the network of probes, and that pivots in a relative fashion with
`respect to the network of probes”
`
`(2) “a mast that supports the object under test, and that extends
`radially from a base and along the main axis of support to an
`opposite end that is nearer the geometric center of the arc formed by
`the network of probes, and with respect to which the network of
`probes pivots in a relative fashion”
`
`
`3. “means for pivoting one or more of the network of probes and the
`support about a point located in the plane formed by the network of
`probes or about a point located in the plane parallel to the plane
`formed by the network of probes to vary, between successive ones of
`the plurality of measurements, an angle formed between the given
`one of the network of probes and the main axis of the support by a
`fraction of the angular pitch of the network of probes so that a total
`number of measurements in the plurality of measurements is greater
`than a total number of probes in the network of probes” is construed
`as follows:
`
`
`
`
`
`
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`
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`Function:
`
`“pivoting the network of probes, the support, or both about a
`point located in the plane formed by the network of probes, or in
`a parallel plane”
`
`3
`
`
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 4 of 30
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`Structure (for Pivoting the Network of Probes):
`
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`“an arc mounted on rollers and an electric motor drive”
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`Structure (for Pivoting the Support):
`
`
`
`
`
`
`
`
`
`
`
`“an electric motor, an actuator that extends more or less
`horizontally in the plane of the arc and is hinged to one end of
`the base, and a convex bottom surface on the base of a mast,
`which rests, by means of one or more rollers, on a
`complementary concave surface”
`
`
`2015 WL 11237099, at *18 (underlining added).
`
`
`
`Having argued that Claim 12’s “pivoting one or more of the network of
`
`probes and the support” language meant that the “means” must “pivot” both
`
`the “support” and “network of probes,”2 but not one or the other (Doc. 43 at
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`16-21), ETS disagreed with the Court’s construction of Claim 12. It
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`consequently moved for reconsideration, where it advanced the same
`
`argument again. See Doc. 62 at 7 (“ETS contends that [‘one or more of the
`
`network of probes and the support’] only means” that both the support and
`
`network can pivot, but not one or the other). ETS also insisted that the
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`Markman Order failed to address its alternative argument that the same
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`phrase suffered fatal indefiniteness issues because “it is unclear which
`
`
`2 ETS also argued that “one or more” applied only to “network of probes” such that
`4
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 5 of 30
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` [interpretation] is correct.” Id.
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`
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`The Court declined to rehash its Claim 12 construction, finding that ETS
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`illuminated no clear error to justify reconsideration. Doc. 89 at 2 (“The Court
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`finds Defendant’s motion essentially to be asking the Court to ‘give it another
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`try’ which is not a permissible basis for a motion for reconsideration.”). It
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`then noted that it considered both parties’ construction arguments (as well as
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`all intrinsic evidence), and in doing so found that Claim 12’s functions
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`included pivoting either the support, the network of probes, or both. Id. at 4.
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`“Implicit in [the Markman Order] ruling, therefore, is a finding that the
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`claim was not indefinite.” Id. More specifically, in rejecting ETS’ contrary
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`argument, the Court made clear “that [Claim 12] was not indefinite because . .
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`. in light of the specification and prosecution history, [it] informe[d] those
`
`skilled in the art about the scope of the invention with reasonable certainty.”
`
`Id. Going further, the Court stated that it “specifically rejected [ETS’]
`
`argument that the patent failed to disclose and clearly link any structure that
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`corresponds to [Claim 12’s] proposed function and therefore should be
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`invalid for indefiniteness.” Id. at 5.
`
`As it litigated this case, ETS made the same Claim 12 construction
`
`
`5
`less than all probes moved at the same time.
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`
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 6 of 30
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`
`
` arguments in a parallel inter partes proceeding before the Patent Trial and
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`Appeal Board (PTAB). See Doc. 82-10 at 10 (“ETS asserts that the ‘one or
`
`more’ language [of the means for pivoting limitation] unambiguously refers
`
`to the network of probes,” and thus that “the claimed function of this
`
`limitation requires movement of the network of probes and the support”)
`
`(emphasis and alteration in original). The PTAB ultimately denied ETS’
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`petition (more on that later), and in doing so concluded that it failed to
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`identify a structure that linked to a function both plaintiffs and ETS ascribe to
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`Claim 12—that the “means for pivoting,” at a minimum, “includes pivoting
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`both the network of probes and the support.” Id. (emphasis in original).
`
`Now, wielding the PTAB decision offensively, ETS moves for summary
`
`judgment on invalidity grounds. Doc. 82. It contends that, as the PTAB
`
`found, no structure in Claim 12 links to the claimed function of pivoting both
`
`the support and the network of probes.3 Doc. 82-1 at 22. That linkage failure,
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`it says, creates indefiniteness that violates 35 U.S.C. §§ 112(b) & (f) which in
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`turn fatally taints the 170 Patent. Id. at 25.
`
`
`3 Both parties agree that Claim 12 includes as a function pivoting the support and
`the network of probes (the “both” pivot). Their divergence comes because ETS
`insists that is Claim 12’s only function, while plaintiffs contend it also includes
`pivoting just the support, or just the network of probes.
`6
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 7 of 30
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`
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`Plaintiffs, according to ETS, admitted as much by arguing, before this
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`Court and the PTAB, that a claim “scope covering” a “both” pivot would
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`produce an “imaginary system”
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`that covers none of
`
`the patent’s
`
`embodiments. Id. at 27 (citing Doc. 42 at 6-7). “Nowhere” in their Markman
`
`briefing, says ETS, did plaintiffs “argue the patent describes an embodiment
`
`where both the network of probes and the support pivot.” Id. at 11. Nor did
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`they “point to any disclosure associating or linking any structure to the dual,
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`third function of pivoting both structures” (the network and support). Id. at
`
`11-12. Instead, plaintiffs pointed to language in the 170 Patent’s Summary of
`
`Invention describing the “relative tilting” of the network of probes and
`
`support, and asserted that such tilting can only occur “when only one body
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`tilts ‘relative’ to the other.” Id. at 12. To ETS, that necessarily excludes both
`
`the network and support pivoting simultaneously. Doc. 88 at 8.
`
`ETS leans heavily on the PTAB decision, too. It urges the Court to
`
`adopt that body’s conclusion that the “170 Patent fails to clearly link
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`corresponding structure to the function of pivoting both the network of
`
`probes and the support.” Doc. 82-1 at 22 (emphasis in original). Because
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`PTAB’s analysis, though not aimed at invalidity issues, “tracks exactly the
`
`
`7
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 8 of 30
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` indefiniteness analysis the Court must apply here,” the Court, ETS insists,
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`must find Claim 12 invalid “[u]nless [it] is prepared to disagree with the
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`Patent Office.” Id. at 22-23.
`
`Finally, ETS contends that (1) Claim 12 violates § 112(b) “because the
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`Court’s construction [of it] does not comport with what the applicant
`
`regarded as his invention” (Doc. 82-1 at 26);4 and (2) “even if the two separate
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`embodiments [(the means for pivoting the support and network of probes)]
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`could be combined somehow . . . the patent still would not describe enough
`
`structure for the system to work.” Id. at 28. That, says ETS, “is because
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`software/hardware would be required to . . . actually move the support
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`and/or probes . . . [and] coordinate the movement of the two structures.” Id.
`
`
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`Opposing, plaintiffs contend that ETS’ motion is “in actuality,” not
`
`seeking summary judgment. Doc. 83 at 6. Instead, it “ask[s] this Court to
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`[effectively] reconsider its construction of the ‘means for pivoting’ limitation
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`of Claim 12, and to reverse the specific holding it set forth at page 46, footnote
`
`21 of its claim construction [Markman] opinion.” Id. “On that basis alone,”
`
`
`4 “By [plaintiffs’] admission, the patent was never intended to cover an embodiment
`in which both the support and the probes pivot, and any claim attempting to cover
`such an “imaginary” embodiment violates Section 112. Yet the Court has found
`claim 12 covers a system where both pivot. Claim 12 is therefore invalid due to
`8
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 9 of 30
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` say plaintiffs, ETS’ summary judgment “motion should be denied outright as
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`an improper attempt to challenge” the Court’s previous reconsideration
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`ruling. Id.
`
`
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`Plaintiffs also insist that ETS mischaracterized their Markman briefing
`
`and arguments before the PTAB. Specifically, their “imaginary system”
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`argument never, as ETS urges, applied to “a system where both the support
`
`and network of probes pivot.” Doc. 83 at 11. Instead, it responded to ETS’
`
`contention that the “one or more” language in Claim 12 referred only to
`
`“network of probes,” not the support, such that fewer than all probes could
`
`pivot. That, say plaintiffs, created an imaginary system because moving fewer
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`than all probes is “a capability that is impossible to provide using the
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`structures disclosed in [the] 170 Patent specification.” Id. at 12 (quoting Doc.
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`40 at 19). ETS therefore “has no basis for reading any of [plaintiffs’]
`
`statements as an admission that pivoting ‘both’ would constitute an
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`‘imaginary’ embodiment.” Id. at 13.
`
`
`
`Beyond mischaracterizing plaintiffs’ arguments, ETS also, according to
`
`plaintiffs, inappropriately spun the Court’s Markman order by stating that it
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`“found [that] the 170 patent does not disclose a system in which both the
`
`
`9
`[plaintiffs’] failure to set forth what MVG regarded as its invention.” Doc. 82-1 at 27.
`
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`
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 10 of 30
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`
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` support and the probes pivot.” Doc. 83 at 14 (alteration and emphasis in
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`original). Plaintiffs insist that, in reality, the Court held that “it appears
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`undisputed from the parties proposed constructions . . . that pivoting both the
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`‘network of probes’ and the ‘support’ can be achieved through some
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`combination” of the two structures.” Id. at 15 (quoting Doc. 59 at 46 n.21).
`
`
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`What’s more, say plaintiffs, ETS itself argued in its Markman briefing,
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`contrary to its current position, that Claim 12 included the “both” pivot and
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`that it “specifically identifie[d] structure corresponding to the pivoting
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`functions.” Doc. 83 at 16 (quoting Doc. 41 at 23). ETS took the same tack in its
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`briefing before the PTAB, where it contended that “the patent plainly
`
`contemplates that both [the support and network of probes] can move, as
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`claim 12 covers.” Id. at 17 (quoting Doc. 82-7 at 29). “[T]hose prior
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`positions,” plaintiffs contend, “may fairly be treated as binding admissions.”
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`Id. at 16.
`
`
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`The PTAB decision comes in for criticism as well. It “has no binding
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`effect” on this Court, misstated and misapplied the law, expressly disclaimed
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`an indefiniteness inquiry, and ruled based on a more limited record than that
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`before this Court. See Doc. 83. Finally, plaintiffs urge summary judgment in
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`10
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 11 of 30
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`
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` their favor because (1) no genuine dispute exists that the 170 Patent covers the
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`“both” pivot; (2) “one of ordinary skill in the art would have understood that
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`to pivot both . . . the corresponding structure would be a combination of the
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`disclosed structures;” and (3) no additional hardware or software is
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`“necessary for performing the function of pivoting ‘the network of probes, the
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`support, or both.’” Id. at 25-29.
`
`II. GOVERNING STANDARDS
`
`Summary judgment is appropriate when the moving party establishes
`that, based upon the evidence presented, “there is no genuine dispute
`as to any material fact and the movant is entitled to judgment as a
`matter of law.” Fed. R. Civ. P. 56(a). “[T]he requirement that a dispute
`be ‘genuine’ means simply that there must be more than some
`metaphysical doubt as to the material facts.” Anderson v. Liberty
`Lobby, Inc., 477 U.S. 242, 261 (1986) (citations and internal quotation
`marks omitted). The court views the record and draws all factual
`inferences in the light most favorable to the non-movant. Carlson v.
`FedEx Ground Package Sys., Inc., 787 F.3d 1313, 1317 (11th Cir. 2015).
`“If reasonable minds could differ on the inferences arising from
`undisputed facts, then a court should deny summary judgment.” Id. at
`1318 (quoting Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir.
`1997)).
`
`Dean-Mitchell v. Reece, ___ F.3d ___, 2016 WL 4756942, at *2 (11th Cir. Sept.
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`13, 2016).
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`11
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 12 of 30
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` III. ANALYSIS
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`A.
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`Preliminary Concerns
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`Before turning to the substance of either party’s arguments, the Court
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`first addresses (1) plaintiffs’ contention that ETS plies a reconsideration
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`request in the guise of a motion for summary judgment (Doc. 83 at 8), and (2)
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`ETS’ alleged mischaracterization of plaintiffs’ Markman arguments and the
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`Court’s own findings in the Markman and Reconsideration Orders.
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`1.
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`Reconsideration
`
`In its Markman briefing (and before the PTAB, for that matter), ETS
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`argued that Claim 12’s function encompassed pivoting both the support and
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`the network of probes, but not pivoting one or the other. See Doc. 41 at 6.
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`The Court disagreed, and held that Claim 12’s “function . . . is ‘pivoting the
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`network of probes, the support, or both.” Doc. 59 at 45. With nothing new to
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`add, ETS nevertheless moved for reconsideration, repeating the same “it’s
`
`and, not and/or”5 argument. Doc. 62 at 7-8.
`
`
`5 ETS asked
`
`
`for clarification and/or reconsideration of the Court’s determination that the
`function of the “means for pivoting one or more of the network of probes and
`the support about a point located in the plane formed by the network of
`probes. . . .” As briefed to the Court, Microwave contends the highlighted
`12
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 13 of 30
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`The Court rejected that argument a second time. Doc. 89 at 3-4. In
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`doing so, it noted that “[i]mplicit in [its] ruling . . . is a finding that [Claim 12]
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`was not indefinite.” Id. at 4. “The Court found that the claim was not
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`indefinite because ‘the patent's claims, viewed in light of the specification and
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`prosecution history, inform those skilled in the art about the scope of the
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`invention with reasonable certainty.’ See Dow Chemical Co. v. Nova
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`Chemicals Corp. (Canada), 803 F.3d 620, 634 (Fed. Cir. 2015) (quoting
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`Nautilus. Inc. v. Biosig Instruments. Inc.. 134 S. Ct. 2120, 2124, 2129 (2014)).”
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`Id. As noted above, the Court also “specifically rejected Defendants’
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`argument that the patent failed to disclose and clearly link any structure that
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`corresponds to the proposed function and therefore should be invalid for
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`indefiniteness.” Id. at 5.
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`In the present summary judgment motion, ETS argues to the contrary,
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`again. See Doc. 82-1 at 8 (“[T]he patent does not clearly link structure to a
`
`system in which both the support and probes can pivot.”). Indeed, its entire
`
`
`language means “and/or” such that the probes can pivot, the support can
`pivot, or both can pivot. ETS contends that the highlighted phrase only
`means “and”, or alternatively, the phrase is indefinite because it is unclear
`which is correct.
`
`Doc. 62 at 7.
`
`
`13
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 14 of 30
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`
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` motion turns on whether Claim 12 definitively links function to structure.
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`Since the Court already decided that precise issue, rehashing it here
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`constitutes reconsideration.
`
`A motion for reconsideration is appropriate only where there is: (1)
`newly discovered evidence; (2) an intervening development or change
`in controlling law; or (3) a need to correct a clear error of law or fact.
`Jersawitz v. People TV, 71 F. Supp. 2d 1330, 1344 (N.D. Ga. 1999); Pres.
`Endangered Areas of Cobb's History, Inc. v. U .S. Army Corps of
`Eng'rs, 916 F. Supp. 1557, 1560 (N.D. Ga. 1995). A motion for
`reconsideration should not be used to present the Court with
`arguments already heard and dismissed, or to offer new legal theories
`or evidence that could have been presented in the previously filed
`motion. Bryan v. Murphy, 246 F. Supp. 2d 1256, 1259 (N.D. Ga. 2003);
`see also Preserve Endangered Areas, 916 F. Supp. at 1560 (“A motion
`for reconsideration is not an opportunity for the moving party and their
`counsel to instruct the court on how the court ‘could have done it
`better’ the first time.”).
`
`Bryant v. Jones, No. 1:04-CV-2462-WSD, 2007 WL 113959, at *1 (N.D. Ga. Jan.
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`10, 2007).
`
`
`
`Local Rule 7.2(E) contains additional requirements. Parties may not
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`seek reconsideration more than twenty-eight “days after entry of the
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`[challenged] order or judgment.” N.D. Ga. L.R. 7.2(E). And under no
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`circumstances may they “file motions to reconsider the court’s denial of a
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`prior motion for reconsideration.” Id.
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`
`
`
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`Strict adherence to that rule would neutralize those portions of ETS’
`14
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 15 of 30
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` motion that address whether Claim 12 sufficiently links its function to
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`structure since the Reconsideration Order already put that issue to bed (a
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`sufficient link in fact exists, Doc. 89 at 5). It nevertheless remains true that, as
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`ETS notes, the Court has never considered the PTAB decision—which found
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`insufficient linkage—before now.6 Doc. 88 at 12.
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`
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`The opinion of an expert body like the PTAB can carry significant
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`persuasive weight when courts deal with technically complex issues, like
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`patents. And, though they need not do so in all cases, courts can engage in “a
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`rolling claim construction, in which the court revisits and alters its
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`interpretation of the claim terms as its understanding of the technology
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`evolves.” Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d
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`1308, 1316 (Fed. Cir. 2010). Although the Court hesitates to give ETS a third
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`bite at the apple, ignoring the PTAB decision entirely smacks of folly, too. It
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`therefore will address that inter partes review insofar as it disagrees with the
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`Court’s construction of Claim 12. All other issues previously decided—
`
`
`6 The Court did not decide ETS’ August 2015 reconsideration motion (Doc. 62) until
`February 2, 2016 (Doc. 89). ETS’ PTAB-infused motion for summary judgment came
`almost two months before that decision. Doc. 82 (filed December 8, 2015). But
`because the reconsideration motion predated the PTAB decision (issued in October
`2015), the Court did not consider the latter in deciding the former.
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`15
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 16 of 30
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` namely, that “means for pivoting one or more of the network of probes and
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`the support” encompasses pivoting the network, the support, or both—
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`remain so.
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`2.
`
`ETS’ Misconstruction of the Court’s Findings and Plaintiffs’
`Arguments
`
`
`ETS repeatedly asserts that plaintiffs “argued to the Court [that] . . . a
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`system where both the support and network of probes pivot is imaginary,”
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`and that the Court so found. See, e.g., Doc. 82-1 at 7 (“According to
`
`[plaintiffs],” a system where both structures pivot is “imaginary”) (emphasis
`
`in original); id. (“[T]he Court’s Markman order relies upon [plaintiffs’]
`
`“imaginary” argument in ruling against ETS’s position.”). It’s true that the
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`Court “agrees with Plaintiffs . . . that [ETS has] advanced ‘a construction of
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`‘one or more of . . .’ that would make Claim 12 cover an imaginary system
`
`while excluding both disclosed embodiments.” Doc. 59 at 45. But that in no
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`way means that plaintiffs ever argued, or the Court ever accepted, that a
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`construction of Claim 12 where both structures pivot creates an “imaginary
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`system.”
`
`To be clear: the “imaginary system” is one where “one or more” applies
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`only to the “network of probes,” not also to the support. That construction,
`16
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 17 of 30
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` (which ETS pushed during claim construction and before the PTAB, who also
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`rejected it), at least based on the patent as written, cannot exist because the
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`specification and summary of invention make clear that the network of probes
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`moves as one structure, not each probe individually.7 To construe Claim 12
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`differently would indeed create the aforementioned “imaginary system” that
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`effectively reads the support and network embodiments out of the 170 Patent.
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`ETS also claims that plaintiffs argued that the support and network
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`cannot both move (Doc. 82-1 at 7), and that this Court agreed. Id. at 9. Not
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`so. Plaintiffs consistently argued that Claim 12 encompasses a “both” pivot.
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`See, e.g., Doc. 42 at 6 (“Plaintiffs’ proposed construction would cover both
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`disclosed embodiments (as well as their combination). . . .”) (emphasis added).
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`They never argued that moving both is impossible. At best (or worst,
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`depending on perspective), they used the same language from the Summary
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`of Invention to argue for each embodiment (Figures 1 and 2 in the 170 Patent)
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`pivoting the support and network of probes individually and pivoting both.
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`See Doc. 42 at 9.
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`7 See Doc. 40 at 19 (“[I]f Defendants’ proposed construction were adopted, claim 12
`would describe a system in which a single probe could be moved along the arc while
`the remainder of the probes stayed stationary—a capability that is impossible to
`provide using the structures disclosed in ’170 Patent specification.”).
`17
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 18 of 30
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`Neither did the Court find that “the 170 Patent does not disclose a
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`system in which both the support and probes pivot.” Doc. 82-1 at 9. In the
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`Markman Order, the Court construed Claim 12’s function to include
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`“pivoting the network of probes, the support, or both. . . .” Doc. 59 at 45. The
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`Reconsideration Order reiterated that finding. See Doc. 89 at 4 (“The Court
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`accepted Plaintiffs’ arguments, thereby finding the functions to be ‘and/or’
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`and rejected Defendant’s argument for ‘and’ only.”). Any argument that the
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`Court held otherwise—and any derivative conclusions—fall flat.
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`So there is no confusion moving forward, the Court explicitly finds
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`(again) that:
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`(a)
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`Plaintiffs never “admitted” or argued that Claim 12 does not
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`include a “both” pivot.
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`(b)
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`(c)
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`The Court never adopted such a construction.
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`“Imaginary system” refers only to that construction of Claim 12
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`ETS advances in which the phrase “one or more” applies to “network of
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`probes,” but not “the support.”
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`(d)
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`“[O]ne or more of the network of probes and the support,” means
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`“pivoting the network of probes, the support, or both.” It does not
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`18
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 19 of 30
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`mean that “one or more” of the probes in the network pivots.
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`With those findings made clear, the Court proceeds to address the PTAB
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`decision and the parties’ arguments that do not offend the retrictions on
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`reconsideration outlined above.
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`B.
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`The PTAB Decision
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`Before the PTAB, the parties made the same arguments they make here.
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`ETS argued that Claim 12’s function “requires the movement of the network
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`of probes and the support,” while plaintiffs contended that it covered
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`“pivoting the network of probes, the support, or both.” Doc. 82-10 at 10
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`(emphasis in original). Because they both agreed that the function included
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`the “both” pivot, the PTAB considered only whether Claim 12 included
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`“corresponding structure for [that] claimed function.” Id. at 11.
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`After observing that “neither party expressly state[d] that the
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`combination of structures disclosed in Figures 1 and 2 of the 170 Patent
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`corresponds to the [‘both’ pivot],” the PTAB found ETS’ inter partes petition—
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`not the 170 Patent itself—“deficient for failing to identify structure that
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`corresponds to the full scope of the claimed function.” Doc. 82-10 at 12.
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`“Specifically, ETS does not argue expressly that the structure corresponding
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`19
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 20 of 30
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` to the dual function of pivoting the network of probes and pivoting the
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`support is the combination of these structures disclosed in Figures 1 and 2 of
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`the ’170 patent.”8 Id. at 13 (emphasis in original). The PTAB went on to note
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`that the patent’s silence on Figures 1 and 2’s mutual exclusivity “is
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`insufficient to ‘clearly associate’ the combination of” those two structures. Id.
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`Going further, the PTAB also found that the 170 Patent’s Specification
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`itself failed to “clearly associate the combination of separate structures
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`disclosed in Figures 1 and 2 as corresponding to the claimed dual functions.”
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`Doc. 82-10 at 14. It rejected plaintiffs’ “relative tilting” argument because that
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`Summary of Invention language included “no mention of the structures
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`disclosed in Figures 1 and 2, nor their combination.” Id. Because “[t]he 170
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`patent Specification does not describe and identify an apparatus combination
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`that performs both pivoting the network of probes and pivoting the support,
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`neither
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`the claimed function proposed by ETS nor [plaintiffs] has
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`corresponding structure.” Id. at 16. And because both parties’ Claim 12
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`constructions included a “both” pivot, the PTAB found no corresponding
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`structure “irrespective of which construction [it] might adopt.” Id. at 17.
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`8 The PTAB, as this Court held, also rejected ETS’ argument that “one or more”
`referred solely to “network of probes” such that “less than all of the probes may be
`20
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 21 of 30
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` Importantly, and because its authorizing statute limits inter partes review to
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`patentability determinations,
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`the PTAB
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`expressly disclaimed any
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`indefiniteness analysis. Id. at 3 n.1 (“[W]e do not make any determinations of
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`indefiniteness.”).
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`At bottom, and regardless of whether the analysis is framed in
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`patentability or indefiniteness terms, the PTAB and this Court simply
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`disagree that the 170 Patent fails to “clearly associate” the structures in
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`Figures 1 and 2 with the “both” pivot function. Compare Doc. 89 at 5 (“The
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`Court specifically rejected [ETS’] argument that the patent failed to disclose
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`and clearly link any structure that corresponds to the proposed function and
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`therefore should be invalid for indefiniteness.”) (citing the 170 Patent’s
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`“relative tilting” language)), with Doc. 82-10 at 14 (“[T]he 170 patent
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`Specification does not ‘clearly associate’ the combination of structures . . . as
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`corresponding to the claimed dual function of” the “both” pivot) (rejecting the
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`“relative tilting” language). And because neither binding precedent, the
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`parties’ arguments before this Court, nor the analytical heft of the PTAB
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`decision demand that this Court reverse course, its prior indefiniteness
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`finding stands.
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`21
`moved.” Doc. 82-10 at 13 n.8.
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`Case 1:14-cv-01153-SCJ Document 138 Filed 09/20/16 Page 22 of 30
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`As t