This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.
In Ocean Semiconductor LLC v. Analog Devices, Inc., No. 1:20-cv-12310, Judge Saris issued an order construing two disputed claim terms of Ocean's asserted patent, titled “Method and Apparatus for Filtering Metrology Data Based on Collection Purpose.” The Court agreed with Defendant ADI regarding one term and with Plaintiff Ocean regarding the other.
In construing the first disputed claim term, “collection purpose data,” the Court adopted ADI's proposed construction of “data indicating the initial purpose for collecting the metrology data,” over Ocean's proposal that no construction was necessary. The Court pointed to numerous uses of ADI's proposed construction in the specification, finding that the patentee acted as its own lexicographer in providing a specific definition for the claim term. The Court also noted that this same disputed claim term of the same patent was similarly construed, for the same reasons, in a separate litigation in Eastern District of Texas.
The Court also considered the disputed claim term “conducting a process control activity related to one of the tools based on the filtered metrology data.” In this instance, ADI argued that the term was a step-plus-function limitation subject to 35 U.S.C. § 112(f), and that it was indefinite for failing to disclose corresponding acts in the specification; Ocean argued that section 112(f) did not apply, and that no construction was necessary. The Court held that the claim was a step-plus-function claim despite not containing the phrase “step for,” because the phrase “process control” is the underlying function. But the Court also found that the specification included “[a]cts correspond[ing] to how the function is accomplished,” based on “the carrying out of a process control activity that is 1) related to one of the processing tools and 2) based on the filtered metrology data.” The Court held that “the recited act describes how the function of ‘process control' is accomplished,” thereby rendering the claim sufficiently definite without further construction.
Also in Ocean Semiconductor LLC v. Analog Devices, Inc., No. 1:20-cv-12310, Magistrate Judge Levenson issued an order regarding Ocean's efforts to depose nine current and former ADI employees, both by notice and by third-party subpoenas—all of which ADI sought to quash. Following a hearing, the Court granted a limited protective order as to some of Ocean's deposition topics and denied as moot ADI's motion to quash the third-party subpoenas directed to its former employees.
The order followed several months of a protracted dispute between the parties over the scope of discovery and the specificity of Ocean's allegations, resulting in extensive briefing, hearings, and discovery proposals from both sides. The Court first noted that blanket limitations on depositions of parties are disfavored and are, therefore, extremely rare. The Court also noted that although Judge Saris had dismissed certain claims and allegations for lack of specificity, she had declined to limit Ocean's allegations to a “single system,” but rather allowed for some discovery into “related systems.” The Court therefore relied upon the Federal Circuit's guidance “that discovery in a patent case ought to be aimed at fleshing out an existing infringement claim and ought not be an exploratory expedition to identify new claims.”
The Court ultimately struck a balance by allowing Ocean to proceed with three individual depositions and one 30(b)(6) deposition as proposed in Ocean's deposition plan; limiting the scope of the depositions to the systems specifically identified in Ocean's motion to amend its preliminary infringement contentions; and allowing either party to move for modification of the number or scope of the depositions upon a showing of good cause following a discovery conference between the parties and a pre-filing, preliminary discovery conference with the magistrate judge.
In Kologik Capital, LLC, v. In Force Technology, LLC, et al., No. 1:18-cv-11168, Magistrate Judge Levenson issued a Report and Recommendation granting Defendants' motion to dismiss Plaintiff's remaining claims with prejudice for want of prosecution.
After a prior Report and Representation dismissing all patent-related claims, counsel for both sides withdrew, and the Court subsequently issued an order to show cause regarding the party-corporations' lack of representation. Defendants obtained new counsel; Plaintiff did not.
Defendants moved to dismiss Plaintiff's remaining claims, and Plaintiff did not attend a hearing despite the Court providing notice directly to Plaintiff and its former counsel. Noting that, because it is an LLC, Plaintiff must be represented and that failure to obtain successor counsel may result in dismissal, the Court found that “it is appropriate at this time to dismiss Plaintiff's remaining claims for want of prosecution.”
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