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Rothschild v. Cree

August 1, 2008

GERTRUDE NEUMARK ROTHSCHILD, PLAINTIFF,
v.
CREE, INC., DEFENDANT.



The opinion of the court was delivered by: Conner, Senior D. J.

ECF CASE

OPINION AND ORDER

Defendant Cree, Inc. ("Cree") moves for reconsideration of this Court's Opinion and Order dated July 14, 2008 denying Cree's Motion for Partial Summary Judgment of non-infringement, contending that "the Court's Order is contrary to controlling Federal Circuit authority and overlooks critical facts . . . ." (Def. Mem. Supp. Mot. Recons. at 1 (footnotes omitted).) For the reasons stated hereinafter, the motion is denied.

BACKGROUND

The facts of this case are laid out at length in our Opinion and Order, familiarity with which is presumed. In this action for alleged infringement of plaintiff's U.S. patents Nos. 4,904,618 and 5,252,499 (the "'618 patent" and "'499 patent" respectively) by defendant Cree, Inc. ("Cree"), after a Markman hearing, the Court on May 3, 2007 filed an Opinion and Order*fn1 construing certain disputed terms of the claims of the two patents in suit. In response to a motion by plaintiff for reconsideration or clarification of the Court's construction of two of the claim terms of the '499 patent, the Court on July 2, 2007 filed a supplemental Opinion and Order*fn2 modifying its construction of one of the terms and confirming its construction of the other. Based on the Court's construction of the claims of the '499 patent, Cree moved for a partial summary judgment of non-infringement of that patent. In an Opinion and Order dated July 14, 2008 this Court denied Cree's motion for partial summary judgment of non-infringement.

DISCUSSION

I. The Standard for a Motion for Reconsideration

Cree properly "recognizes that a motion for consideration is not favored." (Def. Mem. Supp. Mot. Recons. at 3). As this Court stated in Shub v. Westchester Community College, 2008 WL 1957731, at *2 (S.D.N.Y. Apr. 28, 2008), "[w]here the movant fails to show that any controlling authority or facts have actually been overlooked, and merely offers substantially the same arguments he offered on the original motion or attempts to advance new facts, the motion for reconsideration must be denied." See S.D.N.Y. LOCAL CIV. R. 6.3. Here, Cree has not shown that any controlling authorities or critical facts were overlooked in the Court's ruling.

II. The Controlling Authorities Allegedly Overlooked

At pages 6-8 of its Opinion and Order, the Court discussed every one of the legal principles established or recognized in Federal Circuit decisions upon which Cree relied in support of its argument that the scope of a patent claim is limited by its preamble and explained why each principle is inapplicable to the present case. The Court also discussed another Federal Circuit principle that Cree did not mention, although it is applicable here: "a preamble is not limiting 'where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.'" Poly-America, L.P. v. GSE Lining Tech, Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (quoting Rowe v. Dorr, 112 F.3d 473, 478 (Fed. Cir. 1997)).

In its Memorandum in support of the motion for reconsideration, Cree relies mainly upon the identical legal principles on which it relied before, but merely cites different Federal Circuit decisions applying those principles. Those principles are still inapplicable here for the reasons previously explained.

Cree also contends that the Court "overlooked controlling decisions of the Federal Circuit which hold that when limitations of a claim derive their antecedent basis from the preamble, the preamble limits the terms throughout the claim," citing Seachange, International, Inc. v. C-COR Inc., 413 F.3d 1361 (Fed. Cir. 2005). (Def. Mem. Supp. Mot. Recons. at 10.) Although Cree did not rely on Seachange in support of its motion for partial summary judgment, the principle for which Cree now relies upon it is merely another and less precise way of stating the principle discussed at pages 6-7 of the Court's Opinion and Order, "that the preamble is limiting if it is 'essential to understand limitations or terms in the claim body.'" See NTP, Inc. v. Research In Motion, Ltd., 418 F. 3d 1282, 1305-06 (Fed. Cir. 2005). As the Court stated (Op. & Ord. at 7, 8), the mere fact that some terms appear in both the preamble and the body of a claim does not mean that the preamble limits the scope of the claim if, as here, the body of the claim describes a complete process which is understandable without reference to the preamble.

Cree further contends that "the Court overlooked a separate line of Federal Circuit authority holding that when a preamble is 'necessary to give life, meaning and vitality' to the claim, the preamble is a limitation and is not merely a statement of intended use for the invention," citing Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305-06 (Fed. Cir. 1999). (Def. Mem. Supp. Mot. Recons. at 12.) This is another decision which Cree failed to cite in support of its motion. Moreover, the principle for which it is relied upon is likewise inapplicable here where the body of the claim defines a complete process having "life, meaning and vitality" and the preamble is used "only to state a purpose or intended use of the invention."

Thus it is clear that in its Opinion and Order the Court did not overlook any controlling decisions which ...


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