Wacom Loses Request for Reconsideration of Claims Construction Order

I posted here about the claims construction order issued by Judge Bryan in the Wacom v. Hanvon litigation. This case involves several patents covering electronic pen and tablet technology. Wacom had moved for reconsideration of the Judge Bryan's claims construction order arguing manifest and "pervasive" errors of law. In essence, Wacom asserted that the order erroneously "put the patent invalidity cart before the claim construction horse" by construing the claims to "preserve their validity." Judge Bryan denied the motion.

From Judge Bryan's Order:

"Plaintiffs argue that the Court made manifest and pervasive errors of law by requiring Plaintiffs to prove that their proposed constructions for multiple means-plus-function claims were valid. Dkt. 113 at 4-5. Plaintiffs assert “that the ‘doctrine of construing claims to preserve their validity . . . has no applicability’ except where the claim is ambiguous even after applying all of the tools of claim construction.” Dkt. 113 at 4 citing Phillips v. AWH Corp., 415 F.3d 1303, 1327-8 (Fed. Cir. 2005). However, “[t]he applicability of the doctrine [of construing claims to preserve their validity] in a particular case therefore depends on the strength of the inference that the [Patent and Trademark Office (“PTO”)] would have recognized that one claim interpretation would render the claim invalid, and that the PTO would not have issued the patent assuming that to be the proper construction of the term.” Id. at 1328. For the ‘553 Patent, Plaintiffs’ proposed means-plus-function constructions were so limited, vague, and
unsupported by the weight of intrinsic and extrinsic evidence in the record that a brief discussion of invalidity was required. Moreover, Plaintiffs were consistent in advancing the same limited arguments and unsupported constructions for the means-plus-functions limitations in the remainder of the asserted patents."


WacomOrderDenyingReconsideration.pdf

Dispute Over Privilege Log Resolved By Joint CR 37(a)(2)(B) Submission

Recently, I posted about this case brought by Wacom Technology Corporation against Hanvon Corporation in a dispute involving electronic pen and tablet technology. Judge Bryan recently resolved a discovery dispute between the parties over the sufficiency of Wacom's privilege log. The decision is interesting for at least two reasons. First, it is an excellent example of how parties can resolve their discovery disputes amicably and without resort to expensive motions practice. In 2002, this district enacted revisions to Local Rule 37, including the addition of language to Rule 37(a)(2)(B) permitting a joint submission from the parties and expedited handling of the dispute. The text of that rule can be found by following this link. In this case, Wacom and Hanvon made their joint submission, and the next day, they had a decision from Judge Bryan. The whole process takes about week. The second reason this order is interesting is because it provides some background for those practicing in Judge Bryan's court as to how he may resolve a similar dispute in the future. I'm often frustrated at the lack of available case law covering discovery matters, especially cases from particular courts and particular Judges.
WacomOrderonRule37Submission.pdf

Wacom Cries Foul Over Recent Claim Construction Order

Japanese manufacturer of pen and tablet components, Wacom Technology Corporation, alleged Patent Infringement, Violation of 35 U.S.C. § 292, and Unfair Competition, by Defendant Hanvon Corporation . There are six U.S. Patents involved in this case: RE34,187; 4,878,553 (as reexamined), 4,999,461, 5,134,689, RE35,329, and 5,691,513. All patents relate to pen and tablet products and related components. In a claims construction order issued by Judge Bryan on December 21, 2007, 46 separate claim terms were constructed. Judge Bryan's order provides some important insights and practice tips for those litigating patent cases in his court. From the order: "While the majority of the technology involved in this case is governed by Faraday’s Law of Induction (footnote omitted), the claim constructions should be governed by Ockham’s Razor (footnote omitted), which states that one should not increase, beyond what is necessary, the complexity required to explain anything. In other words, the public notice function of patent law is best served if these patents stand on their own two feet without the supporting crutch of complicated judicial constructions."

Judge Bryan's 34-page claims construction order and his 17-page claims construction chart are attached below. Wacom asked for reconsideration in a motion filed on New Year's Eve, 2007. Wacom's primary argument for reconsideration rests on an alleged "manifest and pervasive error of law" tainting the construction of 15 claim terms. According to Wacom's motion, the order mistakenly "conflates claim construction with patent validity—two entirely different exercises in patent law." In essence, Wacom argues that Federal Circuit law prohibits courts from re-writing claim terms under the guise of "preserving validity" and that this improperly places the burden on the patent holder to prove validity at the claims construction phase. The motion for reconsideration is also attached below.

WacomClaimsConstruction.pdf
WacomClaimsConstOrderChart.pdf
WacomMotionforReconsideration.pdf