Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 1 of 9 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

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1 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 1 of 9 COBRA INTERNATIONAL, INC., a Florida corporation, vs. Plaintiff/Counter-Defendant, BCNY INTERNATIONAL, INC., a New York corporation, et al., Defendant/Counter-Plaintiff. / UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA CASE NO CIV-MARRA OMNIBUS ORDER DENYING MOTIONS FOR RECONSIDERATION This cause comes before the Court upon Plaintiff s Motion for Partial Reconsideration of Court s March 27, 2012, Order Granting In Part and Denying In Party Defendants Motion for Summary Judgment (DE 360), and Defendants Motion for Reconsideration of Order Denying Summary Judgment as to Infringement or, in the Alternative, Renewed Motion for Summary Judgment (DE 364). These matters are now fully briefed and ripe for review. I. Introduction This is a patent infringement case brought by Plaintiff Cobra International, Inc. ( Cobra ) against Defendants BCNY International, Inc., Jordara Far East, Inc., Fred s Stores of Tennessee, Inc., Family Dollar Stores, Inc., Dollar General Corporation, Inc., Bruce Cagner, and Larry Roth (collectively BCNY or Defendants ) for an alleged infringement of claim 9 of U.S. Patent No. 5,821,858 ( 858 Patent or Patent ). On August 30, 2011, Defendant moved for summary judgment on the issues of infringement and intervening rights. DE 320. On March 27, 2012, the Court granted summary judgment on the issue of intervening rights and denied summary judgment on the issue of infringement. DE 357, Opinion and Order Granting In Part and

2 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 2 of 9 1 Denying In Part Defendants Motion for Summary Judgment ( March 27 Order ). Both parties now move the Court to reconsider its ruling. II. Legal Standard A motion for reconsideration is appropriate where (1) an intervening change in controlling law has occurred, (2) new evidence has been discovered, or (3) there is a need to correct clear error or prevent a manifest injustice. Williams v. Cruise Ships Catering & Serv. Int l, N.V., 320 F. Supp. 2d 1347, (S.D. Fla. 2004); Sussman v. Salem, Saxon & Nielsen, P.A., 153 F.R.D. 689, 694 (M.D. Fla. 1994). The moving party must set forth facts or law of a strongly convincing nature to induce the court to reverse a prior decision. Williams, 320 F. Supp. 2d at Reconsideration of a previous order is an extraordinary remedy to be employed sparingly. Sussman, 153 F.R.D. at 694. III. Intervening Rights Plaintiff seeks reconsideration of the March 27 Order for three reasons: (1) an intervening change in case law; and (2) the availability of new evidence; and (3) a need to correct clear error or prevent manifest injustice. The Court finds none of these arguments to be persuasive. A. March 27 Order In its March 27 Order, the Court concluded that the addition of the language logically directly to Claim 9 of the 858 Patent in the Second Reexamination resulted in a substantive change to the patent. March 27 Order at The Court held: This conclusion is supported by the prosecution history of the 858 Patent. When the Patent Office rejected the 858 Patent as being obvious in 2009, the Examiner expressly stated it is noted that the features upon which applicant relies 1 The Court refers to the March 27 Order for a more detailed recitation of the facts, arguments, and legal conclusions articulated in that order. 2

3 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 3 of 9 (i.e., the switch directly to the OR gate) are not recited in the rejected claim(s)... If Patent Owner feels that the switch connected directly to the OR gate the patentable feature, this feature should be more actively claimed. 9/19/09 Final Office Action at 4 (emphasis in original). Only after the Patent Holder amended Claim 9 to include the term logically directly did the Patent Office allow the 858 Patent. In fact, as stated above, the Examiner held that the 858 Patent was allowable because: none of the references of record disclose or teach alone in combination the limitation: a clock input terminal logically directly connected to said Or gate output terminal for generating a step output signal when said Or gate output is on and having a clock output terminal in combination with OR gate, a first counter, a plurality of And gates and a cycle restarting means as called for in amended claim 9. 10/4/10 Notice at 5 (emphasis in original). March 27 Order at 15. The Court then rejected an argument raised by Plaintiff: Plaintiff asserts that the added language amounts only to clarifying language, relying exclusively on the description of the Interview Summary provided by the Examiner. That description provided: Discussed for clarifying the language of the claims to avoid the prior art of record and put case in condition for allowable. Exr. and Att. agreed upon changed. See the attached examiner s amendment. 10/4/10 Summary. This Court agrees with the rationale articulated by the United States District Court for the Central District of California in rejecting this identical argument: Cobra relies far too heavily on the Examiner s use of the word clarifying in the Interview Summary, in reference to the purpose of the amendments. This word may not be read alone. In context, it is part of a sentence explaining that the amendments were discussed for clarifying the language of the claims to avoid the prior art of record and [to] put [the] case in condition for allowab[ility]. Taking this sentence as a whole, it is clear that the amendments not only clarified the language of Claims 7 and 9, but they altered rejected claims so that they distinguished from prior art. Cancaribe Ltd. v. Cobra Int l, Inc., Case No. 07-CV GAV-E at *11 (C.D. Cal. Feb. 13, 2012) (DE 90). 3

4 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 4 of 9 Id. at B. Intervening Change in Case Law Plaintiff now asserts that the Federal Circuit s recent decision in Marine Polymer Techs. v. HemCon, Inc., 672 F.3d 1350 (Fed. Cir. Mar. 15, 2012), warrants reversal of the March 27 Order. Plaintiff argues that because the court from the Central District of California discussed the Marine Polymer decision, and this case relied upon the Central District of California s decision, the Marine Polymer reversal affects this Court s ruling. DE 360 at 1. The Court rejects Plaintiff s argument. The Marine Polymer decision is completely inapplicable to the intervening rights argument addressed in the underlying motion. The crux of the Marine Polymer decision was that intervening rights do not apply to claims that have not been amended and are not new. 672 F.3d at 1354 (emphasis supplied). Here, unlike the Claim at issue in Marine Polymer, Claim 9 of the 858 Patent was amended by the addition of the logically directly language to that claim. The amendment of Claim 9 in this case does not fall within the scope of the Marine Polymer decision. Further, the only connection between the Marine Polymer decision and the present matter is that in an unrelated portion of the hearing in Cancaribe there was a discussion of the underlying Marine Polymer decision. However, in its Order on the issue of intervening rights, the Central District of California held: Claim 1 was discussed, but was not amended, during reexamination. (See Examiner s Interview Summary; Notice of Intent at 4.) Cobra insists that, thus, by definition [C]laim 1 cannot trigger intervening rights. (Opp. at 3, 10.) In their briefs and at the hearing on this motion, Movants relied heavily on the Federal Circuit s recent decision in Marine Polymer for the proposition that a claim may be substantively changed by an unambiguous disavowal of scope in 2 The Cancaribe decision also involved the 858 Patent at issue here. 4

5 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 5 of 9 arguments made during reexamination, triggering intervening rights. (See Reply at (citing Marine Polymer Tech., Inc. v. HemCon, Inc., 659 F.3d 1084 (Fed. Cir. 2011)); Hearing Tr. at 24:12 26:10.) The Marine Polymer decision has since been vacated and will be reheard en banc. Marine Polymer Tech., Inc., No , 2012 WL , at *1 (Fed. Cir. Jan. 20, 2012.) As a result, this Court cannot presently conclude that intervening rights apply to Claim 1, and the Motion for Partial Summary Judgment is DENIED as to this Claim. DE (Intervening Rights Order, Feb. 13, 2012). The court from the Central District of California not only acknowledged that the original Marine Polymer decision had been vacated, its ultimate decision was consistent with the decision of the Federal Circuit. Further, the court referenced the Marine Polymer decision in the context of Claim 1 which was not a new or amended claim, compared with Claim 9 which was amended. Accordingly, the Court concludes that Plaintiff has failed to introduce an intervening change in case law that warrants reconsideration. B. Availability of New Evidence Plaintiff also asserts that there is new evidence available with regard to the definition of the newly added term logically directly. The construction of the term logically directed, however, is a wholly distinct issue from whether the addition of that term constitutes a substantive change for purposes of an intervening rights analysis. Even if the Court was to conclude that Plaintiff can introduce additional extrinsic evidence that affects the definition of the term logically directly, such new evidence would not affect the Court s reliance of the 858 Patent s prosecution history and its conclusion that the added language constituted a substantive change. Accordingly, the Court concludes that Plaintiff has failed to set forth any new evidence that warrants reconsideration. 5

6 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 6 of 9 3. Clear Error or Manifest Injustice Finally, Plaintiff seeks reconsideration of the March 27 Order because, according to Plaintiff, the Court has missed Cobra s denial of [Defendant s] Statement of Fact 15. The Court respectfully disagrees. Defendants characterization of Frank Kubler s communication with the Examiner has no effect on the actual, tangible documents that compromise the prosecution history. As stated above, the Court relied on the prosecution history to conclude that the addition of the language logically directly to Claim 9 in the Second Reexamination resulted in a substantive change to the patent. Plaintiff has failed to identify any error in the March 27 Order that would warrant reconsideration. For all the aforementioned reasons, Plaintiff s Motion for Partial Reconsideration of Court s March 27, 2012, Order Granting In Part and Denying In Party Defendants Motion for Summary Judgment (DE 360) is DENIED. IV. Infringement Defendants also move for the Court to reconsider its March 27 Order on the basis of clear error. In its March 27 Order, the Court denied Defendant s Motion for Summary Judgment (DE 320), because it determined that there is a genuine question of material fact with regard to whether the BCNY circuits are in the accused products. March 27 Order at 19. This conclusion was based exclusively on the testimony of Mr. Anthony. Id. at In their briefs for their Motion for Summary Judgment, Defendants vehemently challenged the credibility of Mr. Anthony, an issue the Court refused to resolve on summary judgment. Id. at 19 (citing Crystal th Entertainment & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320 (11 Cir. 2011)). Defendants now argue, for the first time in their Motion for Reconsideration (DE 364), that Mr. Anthony s 6

7 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 7 of 9 testimony is inadmissible under Rule 702 of the Federal Rules of Evidence or the Daubert 3 standard. DE 364 at 2. Defendants, concurrent with their Motion for Reconsideration (DE 364), have also filed a Motion to Exclude Testimony Concerning One Opinion of Plaintiff s Expert Witness, Michael Anthony, About Defendants Circuit Diagrams (DE 365). A motion for reconsideration cannot be used to raise argument or present evidence that could have been raised prior to the entry of judgment. Arthur v. King, 500 F.3d 1335, 1343 th (11 Cir. 2007). Had Defendants filed their Daubert motion concurrent with their Reply Memorandum relatively to their Motion for Summary Judgment (DE 320), instead of with their Motion for Reconsideration (DE 364), the Court could have either ruled on the admissibility of that testimony in connection with the summary judgment motion or denied their motion for summary judgment without prejudice pending resolution of the Daubert motion. See Connectel, LLC v. ITXC, Inc., 2004 WL , *1 (E.D. Pa. 2004) ( Because we conclude that resolution of the motion for summary judgment upon the issues of infringement and patent validity requires a hearing upon Daubert issues and upon alleged violations of Rule 26(a) of the Federal Rules of Civil Procedure, we deny defendant s motion for summary judgment without prejudice to refile pending a hearing on those issues. ). However, Defendants did not file, or even reference, a Daubert challenge in their underlying Motion for Summary Judgment. Nor have Defendants asserted any reason whatsoever for their failure to raise such a challenge at the summary judgment stage. If Defendants wanted the Court to consider a Daubert challenge at the same time it decided Defendants Motion for Summary Judgment they should have filed such a challenge concurrently with their reply memorandum relative to the September 20, Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). 7

8 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 8 of 9 summary judgment motion. The Court will not consider such an argument for the first time on a motion for reconsideration. See King, 500 F.3d at Because Defendants have not set forth a proper basis for the Court to reconsider its conclusion that there is a genuine question of material fact with regard to whether the BCNY circuits are representative of the accused products, the Court need not consider any of Defendants 4 remaining arguments that are contingent on the question of representativeness. Moreover, Defendants have failed to seek leave to file a Renewed Motion for Summary Judgment. Accordingly, Defendants Motion for Reconsideration of Order Denying Summary Judgment as to Infringement or, in the Alternative, Renewed Motion for Summary Judgment (DE 364) is DENIED. V. Conclusion For all the aforementioned reasons, it is hereby ORDERED AND ADJUDGED that Plaintiff s Motion for Partial Reconsideration of Court s March 27, 2012, Order Granting In Part and Denying In Party Defendants Motion for Summary Judgment (DE 360) is DENIED and Defendants Motion for Reconsideration of Order Denying Summary Judgment as to 4 In their Motion for Consideration, Defendants preface their remaining five arguments with the following statement: On a record where there is no genuine dispute that the BCNY Circuit Diagrams are representative of the circuit in the accused products, each of the following five issues provide a basis for summary judgment as to non-infringement, as they are not subject to any legitimate factual dispute and are case dispositive... DE 364 at 3. 8

9 Case 0:05-cv KAM Document 408 Entered on FLSD Docket 09/24/2012 Page 9 of 9 Infringement or, in the Alternative, Renewed Motion for Summary Judgment (DE 364) is DENIED. DONE AND ORDERED in Chambers at West Palm Beach, Palm Beach County, st Florida, this 21 day of September, KENNETH A. MARRA United States District Judge 9