Mere "incorporation by reference" of the titles of prior art in the specification cannot disclose corresponding structure if the title itself does not disclose the prior art structure to a person or ordinary skill. See Atmel, 198F.3d at 1382; see also Pressure Products Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317 (Fed. Cir. 2010) ("Trial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation."). In Pressure Products, 599 F.3d at 1317, the Federal Circuit reiterated its holding from Amtel, stating:
According to the Federal Circuit, a "trial court should grant leave to file absent a substantial reason for denial . . . ." Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1319 (Fed. Cir. 2010). 5. Rule 16(b) of the Federal Rules of Civil Procedure provides that after the entry of a scheduling order, the "schedule may be modified only for good cause and with the judge's consent."
To the extent this implies a modification of the Court's prior term construction, the Federal Circuit has made clear that "district courts may engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves." Pressure Prod. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir. 2010) (quoting Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir. 2005) ). Moreover, because IBM explicitly relies on the Court's construction of "selectively storing" as "prefetching," see ECF No. 150 at 9-10, and argues for infringement even on the assumption that "prefetching" involves retrieving prior to a user's request for the page, see id. at 10, there can be no argument that any implied "adjustment [to the claim construction] prejudiced [IBM's position or] compromised its ability to respond."
Indeed, the Federal Circuit has repeatedly upheld a district court's decision to revisit claim construction as the case progresses, including at trial. See, e.g., Pressure Prod. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1315-16 (Fed. Cir. 2010) (not improper for district court to supplement claim construction in the midst of a jury trial where parties were given opportunity to consider new construction and present arguments accordingly); CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed. Cir. 2005) (as long as conflicting constructions are not presented to the jury, not erroneous for district court to resolve claim construction disputes at the close of evidence because "the district court has considerable latitude in determining when to resolve issues of claim construction"). Regarding revisions during trial, the Federal Circuit has noted that "a trial judge may learn more about the technology during the trial that necessitates some clarification of claim terms before the jury deliberates."
The Court disagrees. To support its argument, Defendant relies on Atmel Corp. v. Info. Storage Devices, 198 F.3d 1374 (Fed. Cir. 1999) and Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308 (Fed. Cir. 2010). Defendant's reliance on Pressure Prods. is misplaced.
The Federal Circuit has repeatedly endorsed "rolling claim construction" by district courts—that is, the practice of "revisit[ing] and alter[ing]" the court's "interpretation of the claim terms as its understanding of the technology evolves." Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd. , 599 F.3d 1308, 1316 (Fed. Cir. 2010) (citing cases). Multiple courts in this district have concluded that the law-of-the-case doctrine's "presumption is weak when it comes to motions to reconsider claim constructions."
Thus, the generic incorporation by reference is insufficient to provide proper notice of additional structures sought to be included in the means-plus-function claim limitation in the '016 Patent. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317 (Fed. Cir. 2010) ("Trial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation. . . . Simply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references."). Thus, in light of the "quid pro quo" nature of plaintiffs' reliance on a means-plus-function limitation, and the accompanying duty of a patentee to draft the specification to specifically disclose the claimed structures, discussed above, the court cannot construe the claim term at issue to encompass structures that are not specifically disclosed in the '016 Patent.
........................................... 26 Nickson Indus., Inc. v. Rol Mfg. Co., Ltd., 847 F.2d 795 (Fed. Cir. 1988) ........................................................................................... 16 NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) ......................................................................................... 36 Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) ......................................................................................... 25 Peters v. Active Mfg. Co., 129 U.S. 530 (1889) .......................................................................................................... 33 Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364 (Fed. Cir. 2005) ..................................................................................... 2, 19 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ....................................................... 18, 19, 28, 29 Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308 (Fed. Cir. 2010) ......................................................................................... 19 Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992) ..................................................................................... 11, 15 Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (2000) ............................................................................................................ 4 Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) ......................................................................................... 19 Smith ex rel. Smith v. Cook County, No. 05 C 1264, 2009 WL 961234 (VI). Ill. Apr. 8, 2009) ................................................. 8 Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347 (Fed. Cir. 1999) ......................................................................................... 34 Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989 (Fed. Cir. 2003) .......
Such disputes over the scope of claims must be resolved by the court and not left to the jury to determine. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir. 2010) ("[W]hen the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve the dispute.") (internal quotations omitted). Here, the Court agrees with Nintendo's proposed construction.
The Court finds that Greatbatch's inclusion of the phrase "and structural equivalents thereto" is inappropriate because identification of corresponding structure includes only structure disclosed in the specification, and the question of statutory equivalents is a separate inquiry under § 112, ¶ 6 reserved for the finder of fact. See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999) (reciting test for statutory equivalents); see also Pressure Products Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317 (Fed. Cir. 2010) ("Although many of the disclosed alternatives may well be determined to be structural equivalents permitted by section 112, paragraph 6 - a question of fact for the jury - these alternative methods of splitting or peeling cannot be treated as the disclosed structures for the removal means."). The parties agree this is a means-plus-function limitation subject to 35 U.S.C. § 112, ¶ 6 and appear to have no genuine dispute over the claimed function.