United States District Court, D. New Jersey
JEROME B. SIMANDLE, Chief District Judge.
This patent case comes before the Court on the motion of Defendants Creative Nail Design, Beauty Systems Group, East Coast Salon Services, and SalonCentric (f/k/a Emiliani Enterprises) (collectively "CND") to supplement their responsive claim construction submission with the declaration of Stephen Spiegelberg. [Docket Item 174.] CND argues that the Supreme Court's decision in Nautilus, Inc. v. Biosig Instruments, Inc. , 134 S.Ct. 2120 (2014), changed the standard for indefiniteness such that there is a new standard of proof and a new role for experts at the claim construction phase when, as in this case, there are arguments that claims are indefinite. The Court will grant Defendant's motion. The Court finds as follows:
1. The Markman hearing is presently scheduled for July 28, 2014. The parties filed their opening Markman briefs on November 22, 2013. Response briefs were filed June 3, 2014. The Nautilus decision was issued on June 2, 2014, and CND filed the instant motion the next day.
2. The Patent Act requires that the patent specification "shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor... regards as the invention." 35 U.S.C. § 112(b). The Federal Circuit previously interpreted this requirement, known as the definiteness requirement, to mean that "[o]nly claims not amenable to construction' or insolubly ambiguous' are indefinite." Datamize, LLC v. Plumtree Software, Inc. , 417 F.3d 1342, 1347 (Fed. Cir. 2005). In Nautilus, the Supreme Court stated that the Federal Circuit's "insolubly ambiguous" standard did not satisfy the definiteness requirement. Nautilus , 134 S.Ct. at 2124. Instead, the Supreme Court held that "a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Id.
3. In its motion, CND argues that: the Nautilus decision changed the standard for indefiniteness such that there is a new standard of proof and a new role for someone skilled in the art; because the district court must "consider whether a claim term informs, with reasonable certainty those of skill in the art about the scope of the invention, expert testimony is especially relevant, " (CND Br. at 2 (emphasis in CND's brief)). CND also argues that the motion is timely because it was filed one day after Nautilus' publication, and that Plaintiff will not be prejudiced because there are several weeks before the Markman hearing.
4. In opposition [Docket Item 182], Plaintiff asks the Court to deny CND's motion or, if the Court grants the motion, to grant Plaintiff leave to submit a rebuttal declaration, depose CND's expert, and submit a supplemental brief. Plaintiff asserts that: CND should have filed Spiegelberg's declaration with its opening Markman brief; Nautilus did not establish a heightened need for expert testimony; Nautilus did not change the perspective from which definiteness should be analyzed, i.e., the perspective of a person of ordinary skill; and CND's untimely expert declaration would disrupt the claim construction process because the parties briefed their claim construction positions based on a record without expert testimony.
5. In reply [Docket Item 186], CND agrees that claims must be viewed from the perspective of one with ordinary skill in the art. But CND argues that the Nautilus standard enhances the need for expert testimony because "it would be helpful to the Court, when determining whether or not one of skill in the art would understand the scope of the claims with reasonable certainty, ' to hear from experts regarding how one of ordinary skill in the art would understand the scope of the claims, " (CND Reply at 3), and the new standard's focus on reasonableness "invites expert testimony as to what one of ordinary skill in the art would reasonably understand, " ( Id. (emphasis in original)). If its motion is granted, CND argues that depositions are unnecessary and expert declarations alone are sufficient.
6. On July 30, 2014, Defendant Dymax Corporation, which is proceeding separately from the CND Defendant group and which also argued indefiniteness for some claim terms, joined CND's request to rely on Spiegelberg's declaration. [Docket Item 185.] Plaintiff opposed Dymax's attempt to join CND's motion because Dymax never previously disclosed its intent to rely on an expert, Dymax submitted its letter after Plaintiff filed its opposition, and Dymax's conduct contravened the Court's rules regarding orderly claim construction submissions and briefing. [Docket Item 188.]
7. The Court will now turn to its analysis.
8. The Court expects that indefiniteness arguments will be substantial at the upcoming Markman hearing. The gravamen of this case is Keystone's allegation that Defendants are infringing Keystone's United States Patent No. 5, 965, 147 ("the 147 Patent"), which embodies Keystone's invention of a toxicologically- and dermatologically-safe nail coating product comprised of a substantially acid-free hydrophilic acrylate monomer gel. In the Amended Joint Construction statement [Docket Item 180], CND contends that several claim terms are indefinite, including "substantially acid-free, " "liquid substantially acidfree hydrophilic acrylate monomer composition, " "liquid substantially acid-free hydrophilic monomer composition, " and "substantially enhances adhesion." The construction of these terms thus has special significance for the disposition of the case. The Court therefore recognizes the significance of the definiteness inquiry to claim construction and the case as a whole.
9. Normally, the Local Patent Rules require that any party intending to rely on expert opinion testimony for Markman claim construction purposes shall identify the expert and service his or her certification or declaration with their opening Markman declarations, see L. Pat. R. 4.5(a), and any deposition of an expert is to be concluded within 30 days of such filing, see L. Pat. R. 4.5(b). Any responding experts' certification is due 60 days after service of the initial expert's certification, that is at least 30 days after the opportunity to depose the initial expert. See L. Pat. R. 4.5(e). In the present application, CND seeks to amend these requirements and compress the time for Plaintiff's response, all before the July 28, 2014 Markman hearing, and after all claim construction submissions had been made. An amendment of the timetable for disclosure of Markman expert reports, like any other document required to be exchanged pursuant to the Local Patent Rules may be made only by Court order upon timely application and showing of good cause, pursuant to L. Civ. R. 3.7.
10. The present issue is whether Nautilus changed the indefiniteness standard such that expert testimony is more beneficial at the claim construction phase in this case and such that CND's late submission can be excused for good cause based on an intervening change in the law. Nautilus does not specifically discuss the role of expert testimony at the claim construction phase. It announced a change in the law by "revers[ing] the standard previously applied by the Federal Circuit for determining indefiniteness." Adobe Sys. Inc. v. Wowza Media Sys., LLC, Civ. 11-02243, 2014 WL 2731321, at *1 (N.D. Cal. June 10, 2014). CND argues that, under the new "reasonable certainty" standard, expert testimony would be helpful. This argument is reasonable.
11. It is not unreasonable that CND did not perceive the need for an expert when the standard was "insolubly ambiguous." In explaining the problems with the "insolubly ambiguous" standard, the Nautilus court noted that "[i]t cannot be sufficient that a court can ascribe some meaning to a patent's claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc." Id. at 2130 (emphasis in original). Because the Nautilus court emphasized that the definiteness inquiry requires reasonable certainty, not simply some meaning, an expert witness could be helpful in discerning whether the patent claims would inform a skilled artisan with reasonable certainty at the time of the invention.
12. Furthermore, the Supreme Court cited Markman with a parenthetical explaining that "claim construction calls for the necessarily sophisticated analysis of the whole document, ' and may turn on evaluations of expert testimony." Id. at 2130 (quoting Markman, 517 U.S. at 389). This reference to expert ...