Order Granting Motion to File Supplementing Briefing, Tessera, Inc. v. Advanced Micro Devices, Inc., et al., Case No. C 05-cv-4063 (Judge Claudia Wilken)
The Supreme Court took a keen interest in patent cases this term, and the ripple effects are already being felt. The Court changed the standard for patent indefiniteness in its recent opinion in Nautilus, Inc. v. Biosig Instruments, Inc. In Nautilus, the Supreme Court appeared to relax the Federal Circuit's strict "insolubly ambiguous" standard for indefiniteness, in holding that a claim was indefinite when it failed to inform, "with reasonable certainty," those skilled in the art about the scope of the invention. Nautilus will likely have a significant impact on pending patent cases as defendants seek to take advantage of the new indefiniteness standard. Judge Wilken's Order in this Tessera case illustrates how a defendant could seek to raise a Nautilus defense in a case that is well underway.
Plaintiff Tessera had filed a motion for summary judgment that the patents-in-suit were not indefinite. After the Nautilus decision came down, Defendants sought leave to submit ten pages of supplemental briefing. Judge Wilken found the additional briefing was warranted because the Court announced a new standard of indefiniteness.
Defendants didn't just ask for the opportunity to submit supplemental briefing, however. They also asked the court to find as a matter of law that the asserted patents were invalid as indefinite, even though they had never previously argued that any of the claims were indefinite, and even though fact and expert discovery had now concluded. Rule 37 forbids disclosing new theories late in the case unless the late disclosure is "substantially justified or harmless." Likewise, Defendants who wish to make an additional summary judgment motion after briefing has concluded generally must show good cause for the argument's late inclusion.
Here, Judge Wilken found that Defendants' late disclosure of their indefiniteness theory was substantially justified because the Supreme Court only recently released its opinion. And it was harmless because Tessera has already filed its own motion for summary judgment on indefiniteness, so Judge Wilken felt that it should be prepared to argue the issue.
This appears to be one of the first cases to be rocked by Nautilus's change in the indefiniteness standard. Don't be surprised, though, if are many more attempts like this to add the more liberalized defense to existing cases where indefiniteness had not previously been raised or argued. However, under Judge Wilken's reasoning, a defendant seeking to take advantage of the new law should consider moving quickly.
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