Case 3:16-cv-00661-JLS-BGS Document 34 Filed 04/14/17 PageID.228 Page 1 of 13
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`THE SCRIPPS RESEARCH
`INSTITUTE,
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`v.
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`ILLUMINA, INC.,
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` Case No.: 16-cv-661 JLS (BGS)
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`ORDER DENYING DEFENDANT’S
`MOTION TO DISMISS
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`Plaintiff,
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`(ECF No. 30)
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`Defendant.
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`Presently before the Court is Defendant Illumina, Inc.’s (“Illumina”) Motion to
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`Dismiss. (“MTD,” ECF No. 30.) Also before the Court are Plaintiff The Scripps Research
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`Institute’s (“Scripps”) response in opposition to, (“Opp’n,” ECF No. 31), and Defendant’s
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`reply in support of, (“Reply,” ECF No. 33), Defendant’s MTD. The Court vacated the
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`hearing on the MTD and took it under submission pursuant to Civil Local Rule 7.1(d)(1).
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`(ECF No. 32.) After considering the parties’ arguments and the law, the Court DENIES
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`Defendant’s Motion to Dismiss.
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`Case 3:16-cv-00661-JLS-BGS Document 34 Filed 04/14/17 PageID.229 Page 2 of 13
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`Plaintiff Scripps is a California non-profit engaged in medical research. (First Am.
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`BACKGROUND
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`Compl. (“FAC”) ¶ 1, ECF No. 27.) Defendant Illumina is a genomics tool company that
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`develops and markets, among other things, array-based systems and assays for genotyping,
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`gene expression, and epigenetics. (Id. ¶ 2.)
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`Plaintiff is the owner of U.S. Patent No. 6,060,596 (the “’596 patent”) entitled
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`“Encoded Combinatorial Chemical Libraries.” (Id. ¶¶ 10–11.) As described by Plaintiff,
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`the ’596 patent
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`pertains to a “bifunctional molecule” used in the manufacture of
`DNA microarrays. DNA microarrays are used in the genetic
`analysis, cancer characterization, and diagnosis of many
`diseases. Each DNA substrate or bead in a microarray product
`contains hundreds of thousands of copies of specific DNA
`sequences, known variously as “probes,” “oligonucleotides” or
`“oligos” for short. These probes can be a short section of a gene
`or other DNA element, and they can be used to detect a
`complimentary DNA or RNA sample, known as a “target probe”
`in an assay. Associated with each target probe is an “encoded
`probe” that identifies the specific sequence of the target probe.
`The target probe and the encoded probe are linked together to
`make up the bifunctional molecule.
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`(Id. ¶ 8.)
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`Representative asserted claim 1 of the ’596 patent is reproduced below:
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`1. A bifunctional molecule according to the formula A—B—C,
`wherein
`A is a polymer comprising a linear series of chemical units
`represented by the formula (Xn)a, wherein X is a single chemical
`unit in polymer A,
`B is a linker molecule operatively linked to A and C, and
`identifier oligonucleotide C is represented by the formula (Zn)a,
`wherein a unit identifier nucleotide sequence Z within
`oligonucleotide C identifies the chemical unit X at
`position n; and
`wherein n is a position identifier for both X in polymer A
`and Z in oligonucleotide C having the value of 1+i where
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`i is an integer from 0 to 10, such that when n is 1, X or Z
`is located most proximal to the linker, and
`a is an integer from 4 to 50.
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`’596 patent, at 43:2–14 (emphasis relevant to the present motion added).
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`Plaintiff filed its Complaint against Defendant on March 17, 2016, which the Court
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`dismissed because it failed to plausibly allege that Defendant’s product infringed each
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`element of at least one claim. (See First MTD Order, ECF No. 26.) Plaintiff filed its FAC
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`on December 12, 2016, again asserting that Defendant has infringed one or more claims of
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`the ’596 patent. (ECF No. 27.) Defendant moved to dismiss Plaintiff’s FAC on January 17,
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`2017, arguing that Plaintiff has not pled a plausible claim of infringement. (See generally
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`MTD, ECF No. 30-1.)
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`LEGAL STANDARD
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`Pursuant to Federal Rule of Civil Procedure 12(b)(6), courts must dismiss
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`complaints that “fail[] to state a claim upon which relief can be granted.” The Court
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`evaluates whether a complaint supports a cognizable legal theory and states sufficient facts
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`in light of Federal Rule of Civil Procedure 8(a), which requires a “short and plain statement
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`of the claim showing that the pleader is entitled to relief.” In patent cases, courts previously
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`looked to Federal Rule of Civil Procedure 84, which in turn referred to “forms in the
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`Appendix.” See Rembrandt Patent Innovations LLC v. Apple Inc., Nos. C 14-05094
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`(WHA), C 14-05093 WHA, 2015 WL 8607390, at *2 (N.D. Cal. Dec. 13, 2015); In re Bill
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`of Lading, 681 F.3d 1323, 1334 (Fed. Cir. 2012) (“[T]o the extent the parties argue that
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`Twombly and its progeny conflict with the Forms and create differing pleadings
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`requirements, the Forms control.”). One form in the Appendix was Form 18, an example
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`complaint for patent infringement that “merely included an allegation that the defendant
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`infringed the asserted patent by making, using, or selling ‘electric motors’ without
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`specifying the model of the accused motors.” Rembrandt Patent, 2015 WL 8607390, at *2.
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`The 2015 Amendments to the Federal Rules, which the Supreme Court submitted to
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`Congress in April 2015 pursuant to 28 U.S.C. § 2072, abrogated Rule 84, with the notation
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`that it was “no longer necessary.” See Fed. R. Civ. P. 84 advisory committee’s note to 2015
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`amendment; RAH Color Techs. LLC v. Ricoh USA Inc., 194 F. Supp. 3d 346, 348–50 (E.D.
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`Pa. 2016). The 2015 Amendments took effect December 1, 2015. See Fed. R. Civ. P. 84;
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`RAH Color Techs., 194 F. Supp. 3d at 349.
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`The abrogation of Rule 84 means that the Rule 8 pleading standards as construed by
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`the Supreme Court in Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atlantic Corp. v.
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`Twombly, 550 U.S. 544 (2007) govern in patent cases. See, e.g., Rembrandt Patent, 2015
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`WL 8607390, at *2; Rah Color Techs., 194 F. Supp. 3d at 350 (“Following the reasoning
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`of In re Bill of Lading, it appears the Federal Rules’ amendment abrogating both Rule 84
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`and the Appendix of Forms means that claims of direct infringement are now also subject
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`to the Twombly/Iqbal pleading standard.”).
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` Although Rule 8 “does not require ‘detailed factual allegations,’ . . . it demands
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`more than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Iqbal, 556
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`U.S. at 678 (quoting Twombly, 550 U.S. at 555). In other words, “a plaintiff’s obligation
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`to provide the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than labels and
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`conclusions, and a formulaic recitation of a cause of action’s elements will not do.”
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`Twombly, 550 U.S. at 555 (alteration in original). “Nor does a complaint suffice if it tenders
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`‘naked assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 556 U.S. at 678
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`(alteration in original) (quoting Twombly, 550 U.S. at 557).
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`“To survive a motion to dismiss, a complaint must contain sufficient factual matter,
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`accepted as true, to ‘state a claim to relief that is plausible on its face.’” Id. (quoting
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`Twombly, 550 U.S. at 570); see also Fed. R. Civ. P. 12(b)(6). A claim is facially plausible
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`when the facts pleaded “allow[] the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). That
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`is not to say that the claim must be probable, but there must be “more than a sheer
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`possibility that a defendant has acted unlawfully.” Id. (citing Twombly, 550 U.S. at 556).
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`“[F]acts that are ‘merely consistent with’ a defendant’s liability” fall short of a plausible
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`entitlement to relief. Id. (quoting Twombly, 550 U.S. at 557). Further, the Court need not
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`accept as true “legal conclusions” contained in the complaint. Id. at 678–79 (citing
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`Twombly, 550 U.S. at 555). This review requires “context-specific” analysis involving the
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`Court’s “judicial experience and common sense.” Id. at 679. “[W]here the well-pleaded
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`facts do not permit the court to infer more than the mere possibility of misconduct, the
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`complaint has alleged—but it has not ‘show[n]’—‘that the pleader is entitled to relief.’”
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`Id. (quoting Fed. R. Civ. P. 8(a)(2)).
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`In patent cases, purely procedural issues of law are governed by the law of the
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`regional circuit. K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1282
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`(Fed. Cir. 2013). In the Ninth Circuit, to be entitled to the presumption of truth, a complaint
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`“must contain sufficient allegations of underlying facts to give fair notice and to enable the
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`opposing party to defend itself effectively.” Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir.
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`2011), cert. denied, 132 S. Ct. 2101 (2012). The Court will grant leave to amend unless it
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`determines that no modified contention “consistent with the challenged pleading . . . [will]
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`cure the deficiency.” DeSoto v. Yellow Freight Sys., Inc., 957 F.2d 655, 658 (9th Cir. 1992)
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`(quoting Schriber Distrib. Co. v. Serv-Well Furniture Co., 806 F.2d 1393, 1401 (9th Cir.
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`Defendant argues that Plaintiff has not plausibly alleged direct infringement because
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`ANALYSIS
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`(1) Plaintiff’s FAC rests on an implausible interpretation of the parameter “a” as used in
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`the patent, and (2) under the correct interpretation of parameter “a,” Plaintiff fails to
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`plausibly plead infringement. (See generally MTD, ECF No. 30-1.) Notably, Defendant
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`does not argue that Plaintiff fails to state a claim for direct infringement under its own
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`construction of parameter “a.” (See FAC ¶¶ 14–15, ECF No. 27 (noting that the patent
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`generally defines parameter “a” as the length of polymer A or oligonucleotide C).)
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`Accordingly, the Court considers each of Defendant’s arguments in turn.
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`To state a claim for direct patent infringement, a plaintiff must allege that the
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`defendant, “without authority[,] makes, uses, offers to sell, or sells any patented invention.”
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`35 U.S.C. § 271(a); see also Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993)
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`(citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990),
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`cert. denied, 493 U.S. 1076 (1990)). “To prove infringement, the patentee must show that
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`an accused product embodies all limitations of the claim either literally or by the doctrine
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`of equivalents.” Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir.
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`2013). “To establish literal infringement, every limitation set forth in a claim must be found
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`in the accused product, exactly.” Advanced Steel Recovery, LLC v. X-Body Equip., Inc.,
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`808 F.3d 1313, 1319 (Fed. Cir. 2015) (citing Southwall Techs., Inc. v. Cardinal IG Co., 54
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`F.3d 1570, 1575 (Fed. Cir. 1995)). “Under the doctrine of equivalents, ‘a product or process
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`that does not literally infringe upon the express terms of a patent claim may nonetheless be
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`found to infringe if there is ‘equivalence’ between the elements of the accused product or
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`process and the claimed elements of the patented invention.’” DePuy Spine, Inc. v.
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`Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1016 (Fed. Cir. 2006) (citing Warner–
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`Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997)). “Under the ‘all
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`elements’ rule, ‘the doctrine of equivalents must be applied to individual elements of the
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`claim, not to the invention as a whole.’” E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213,
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`1221 (Fed. Cir. 2007) (citing Warner–Jenkinson, 520 U.S. at 29). Thus, “in order to
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`properly plead direct infringement under Twombly and Iqbal, a plaintiff must plausibly
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`allege that a defendant directly infringes each limitation in at least one asserted claim.”
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`Scripps Research Inst. v. Illumina, Inc., No. 16-CV-661 JLS (BGS), 2016 WL 6834024, at
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`*5 (S.D. Cal. Nov. 21, 2016).
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`As a threshold matter, Plaintiff argues that Defendant’s motion to dismiss is
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`premature because it is based entirely on a claim construction argument. (Opp’n 7,1 ECF
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`No. 31.) Plaintiff opposes Defendant’s construction in its pleadings, sets forth its own
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`construction of parameter “a,” and thereafter pleads how Defendant’s products infringe the
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`asserted claims of the ’596 patent under its view of the claims. (Id. (citing, e.g., FAC ¶¶ 15–
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`1 Pin citations to docketed material refer to the CM/ECF numbers electronically stamped at the top of each
`page.
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`17, 20, ECF No. 27).) Thus, Plaintiff argues that claim construction will be required, and
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`urges the Court to postpone consideration of Defendant’s arguments until claim
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`construction. (Id.)
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`The Court partially agrees with Plaintiff. Claim construction at the pleading stage
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`may be inappropriate where, for instance, the meaning of a claim term is unclear from the
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`intrinsic evidence, or more generally where the Court finds that it would benefit from
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`additional briefing and evidence presented at the claim construction phrase. Cf. Palomar
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`Techs., Inc. v. Mrsi Sys., LLC, No. 15-CV-1484 JLS (KSC), 2016 WL 4496838, at *5 (S.D.
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`Cal. Mar. 11, 2016) (concluding, in the context of a Section 101 analysis, that “‘claim
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`construction will aid the Court’s Section 101 analysis in a number of respects’” (quoting
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`Cave Consulting Grp., Inc. v. Truven Health Analytics Inc., No. 15-CV-02177-SI, 2016
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`WL 283478, at *3 (N.D. Cal. Jan. 25, 2016))).
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` But the Court concludes that it may properly construe a claim term at the pleading
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`stage in certain circumstances. The purpose of a 12(b)(6) motion is, after all, to determine
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`whether a plaintiff states a legally cognizable claim for relief. And as one court recently
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`explained:
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`Claim construction “may be based on underlying findings of fact” (Wi–Lan,
`811 F.3d at 461), but as recently reiterated by Trs. of Columbia Univ., 811
`F.3d at 1362, “[c]laim construction is ultimately a question of law,” and
`determinations grounded solely on the claim language, the specification and
`the prosecution history (as opposed to the extrinsic record) are purely legal in
`nature. Atlas is therefore entirely incorrect in stating that claim construction
`cannot be engaged in at all at the motion to dismiss stage, at least when it is
`based on facts alleged in or reasonably inferable from the complaint.
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`Atlas IP, LLC v. Exelon Corp., 189 F. Supp. 3d 768, 774 (N.D. Ill. 2016); see also id. at
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`778 (dismissing complaint where the plaintiff’s action depended “on a claim construction
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`that is wrong as a matter of law”). Thus, claim construction at the pleading stage may be
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`appropriate, at the very least, where the Court can construe a claim term “based on the
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`claim language, the specification, and the prosecution history.”2 Trs. of Columbia Univ. in
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`City of N.Y. v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016). Because such
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`constructions would be “legal determinations,” id., these constructions could be case
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`dispositive at the outset, determining whether a plaintiff can legally state a claim for relief
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`before the parties engage in expensive and ultimately unnecessary discovery. See Twombly,
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`550 U.S. at 560 (discussing the importance of pleading a plausible claim for relief as a
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`safeguard against expensive and abusive discovery practices); see also Commil USA, LLC
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`v. Cisco Sys., Inc., 135 S. Ct. 1920, 1930 (2015) (“Some companies may use patents as a
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`sword to go after defendants for money, even when their claims are frivolous. . . . [I]t is
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`still necessary and proper to stress that district courts have the authority and responsibility
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`to ensure frivolous cases are dissuaded.”).
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`Here, Defendant’s argument is premised on what is perhaps one of the most
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`appropriate exercises of claim construction at the pleading stage: a claim of lexicography;
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`that is, that the ’596 patent itself allegedly provides an explicit definition of parameter “a.”
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`If true, the patent’s definition would control, Plaintiff’s infringement theory based on
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`another construction would be erroneous, and reliance on extrinsic evidence would be
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`inappropriate. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.
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`Cir. 1996) (“In most situations, an analysis of the intrinsic evidence alone will resolve any
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`ambiguity in a disputed claim term. In such circumstances, it is improper to rely on
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`extrinsic evidence.”). Accordingly, the Court considers Defendant’s proposed construction
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`of parameter “a” in order to determine whether Plaintiff has pled a plausible claim of direct
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`infringement.
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`2 Of course, this is in no way an invitation for either party to contest the meaning of various terms at the
`pleading stage as an end-run around the typical claim construction phase of the case. Courts should be
`wary of this strategy, and thus limit claim construction at the pleading stage to those terms that would
`truly be case dispositive. And, as discussed, courts should decline to conduct early claim construction if
`they find that they would benefit from further briefing or evidence at the usual claim construction phase
`of the case, regardless of whether any party argues that further briefing would be unnecessary.
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`Words of a claim are “generally given their ordinary and customary meaning.” Id.
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`at 1582. But when a patentee “chooses to be his own lexicographer and use terms in a
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`manner other than their ordinary meaning,” the court can use the patentee’s meaning “as
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`long as the special definition of the term is clearly stated in the patent specification or file
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`history.” Id. at 1582. The Federal Circuit has explained that “[t]he standards for finding
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`lexicography and disavowal are exacting. To act as its own lexicographer, a patentee must
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`‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to
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`define the term.’” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
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`2014).
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`In examining the claims themselves, “the context in which a term is used can be
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`highly instructive.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
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`Moreover, “[o]ther claims of the patent in question, both asserted and unasserted can . . .
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`be valuable sources of enlightenment as to the meaning of a claim term.” Id. (citing
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`Vitronics, 90 F.3d at 1582). “Because claim terms are normally used consistently
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`throughout the patent, the usage of a term in one claim can often illuminate the meaning of
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`the same term in other claims.” Id. Conversely, under the doctrine of claim differentiation,
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`“‘different words or phrases used in separate claims are presumed to indicate that the claims
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`have different meanings and scope.’” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d
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`1361, 1369 (Fed. Cir. 2007) (quoting Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177
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`F.3d 968, 971–72 (Fed. Cir. 1999)).
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`Patent claims should ordinarily be construed to encompass the preferred
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`embodiments described in the specification, for “[a] claim construction that excludes a
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`preferred embodiment . . . ‘is rarely, if ever, correct.’” SanDisk Corp. v. Memorex Prods.,
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`Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005) (quoting Vitronics, 90 F.3d at 1583). However,
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`a court should not import limitations from the specification into the claims, Phillips, 415
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`F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of
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`the invention, we have repeatedly warned against confining the claims to those
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`embodiments.”), absent a specific reference in the claims themselves, Reinshaw PLC v.
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`Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (“[A] party wishing to
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`use statements in the written description to confine or otherwise affect a patent’s scope
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`must, at the very least, point to a term or terms in the claim with which to draw in those
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`statements.”).
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`The parties’ dispute centers on the meaning of parameter “a” as used in several
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`equations in the claimed invention. See, e.g., ’596 patent, claim 1 (claiming a bifunctional
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`molecule with a polymer A represented by the formula (Xn)a); id. (claiming a bifunctional
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`molecule with an identifier oligonucleotide C represented by the formula (Zn)a). Defendant
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`argues that the “patent expressly defines the parameter ‘a’ to be the number of chemical
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`units (X) in polymer A and the number of corresponding unit identifiers (Z) in
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`oligonucleotide C that are in the bifunctional molecule.” (MTD 14–15, ECF No. 30-1.)
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`Plaintiff responds that parameter “a” is not necessarily limited to the total number of
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`chemical units—though it can be; rather, parameter “a” generally refers to the length of
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`polymer A and oligonucleotide C. (Opp’n 11–16, ECF No. 31.)
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`The Court finds that there is merit to both parties’ arguments and thus the Court
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`cannot say at this stage that Defendant’s construction is correct as a matter of law. As to
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`polymer A, both parties agree that the specification defines parameter “a” as “the length of
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`the polymer.” ’596 patent, at 4:39–40. And, as claimed, parameter “a” is simply measured
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`as “an integer from 4 to 50.” E.g., id. at 43:13–14.
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`But Defendant further argues that “a” must be the number of chemical units because,
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`according to the specification, in the formula Va,“‘a’ is an exponent to V and represents
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`the number of chemical units of X forming the polymer A, i.e., the length of polymer A.”
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`Id. at 9:7–11 (emphasis added); (see also MTD 15, ECF No. 30-1). The Court disagrees.
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`While this passage illustrates that parameter “a” can be defined by the number of chemical
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`units, it does not specify that it must be so defined. Specifically the phrasing of the passage
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`suggests that “a” is defined as the number of chemical units which in this formula—not
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`categorically—connotes the length of polymer A. The Court’s conclusion might be
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`different if the passage instead read, for instance, that “‘a’ is an exponent to V and
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`represents the length of polymer A, i.e., the number of chemical units of X forming the
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`polymer A.” Defendant’s other citations to the specification also illustrate that parameter
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`“a” can be defined by chemical unit length, not that it must be. (See MTD 15, ECF No. 30-
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`1 (citing, e.g., Fig. 2 and accompanying description).) Because, at this juncture, the Court
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`does not find that these citations expressly define parameter “a,” the Court will not import
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`these limitations from the specification into the claim language. See Phillips, 415 F.3d at
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`1323 (“[A]lthough the specification often describes very specific embodiments of the
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`invention, we have repeatedly warned against confining
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`the claims
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`to
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`those
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`embodiments.”).
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`Furthermore, dependent claim 11 specifically claims that, in the formula Va, “a is an
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`exponent to V and represents the number of chemical units of X forming polymer A.” ’596
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`patent, at 44:10–12. Claim 11 depends on claim 10, which itself depends on claim 1, see
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`id. at 44:4–5 (“A library comprising a plurality of species of bifunctional molecules
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`according to claim 1.”). Thus, parameter “a” in claim 11, the dependent claim, represents
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`“the number of chemical units of X forming polymer A,” whereas parameter “a” in claim
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`1, the independent claim, only requires “an integer from 4 to 50.” The doctrine of claim
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`differentiation operates as a presumption that if a dependent claim has a particular
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`limitation, its independent claim does not. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 910 (Fed. Cir. 2004) (“As this court has frequently stated, the presence of a dependent
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`claim that adds a particular limitation raises a presumption that the limitation in question
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`is not found in the independent claim.”). “Although that presumption can be overcome if
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`the circumstances suggest a different explanation, or if the evidence favoring a different
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`claim construction is strong,” id., here the Court finds that, at this juncture, Defendant fails
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`to rebut the presumption.
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`In sum, while the specification does contemplate that parameter “a” can represent
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`the number of chemical units in polymer A, the patent also generally defines parameter “a”
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`as the length of polymer A, only strictly requires that parameter “a” is “an integer from 4
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`to 50,” and contains Defendant’s definition of parameter “a” in a claim dependent on a
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`claim without that definition. Given this ambiguity, and based solely on the evidence thus
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`far presented, the Court cannot at this point say that Defendant’s definition of parameter
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`“a” is as a matter of law the correct construction. See GE Lighting, 750 F.3d at 1309 (noting
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`that “[t]he standards for finding lexicography and disavowal are exacting. To act as its own
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`lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’
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`and ‘clearly express an intent to define the term’”).
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`Defendant’s argument as to parameter “a” with regard to oligonucleotide C fares no
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`better. Specifically, Defendant argues that the specification plainly states that, regarding
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`the formula including oligonucleotide C, “a is an integer as described previously to connote
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`the number of chemical unit identifiers in the oligonucleotide.” (MTD 15, ECF No. 30-1
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`(citing ’596 patent, at 5:59–65 (emphasis added by Defendant)).) However, as just
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`discussed, other citations to the specification illustrate that the length of parameter “a” can
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`be, not that it must be, measured by the number of chemical units; this statement would
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`more forcefully support Defendant’s point if it appeared without the phrase “as described
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`previously.” Without more, this arguable definition of parameter “a” is undercut by the
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`reference to parameter “a” as previously described. See, e.g., Blast Motion, Inc. v. Zepp
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`Labs, Inc., No. 15-CV-700 JLS (NLS), 2017 WL 476428, at *11 (S.D. Cal. Feb. 6, 2017)
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`(“And even if the Applicant explicitly intended to define avatar in this statement, that
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`definition is made ambiguous by the citation to the Merriam-Webster Dictionary definition,
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`which further requires that the image ‘is manipulated by the user.’ Defendant’s definitional
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`argument fails for the same reason (that is, the dictionary definition is undercut by
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`Plaintiff’s description of the term without a user’s manipulation). Given this ambiguity, the
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`Court cannot say that the Applicant clearly defined ‘avatar’ in the cited passages of the
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`prosecution history.”).
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`In sum, at this juncture, the Court declines to hold that Defendant’s construction of
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`parameter “a” is based on a definition in the ’596 patent that is clearly set forth, thus
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`rendering it the correct construction as a matter of law.3 Accordingly, the Court finds that
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`Plaintiff’s construction of parameter “a” is, at this pleading stage, a plausible construction
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`based on the intrinsic evidence and argument thus far presented. Both parties will, of
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`course, have another opportunity to contest the meaning of parameter “a”—if they so
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`desire—at the claim construction phase.4
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`CONCLUSION
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`As discussed above, Defendant does not appear to contest the sufficiency of
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`Plaintiff’s allegations assuming the Court were to credit the plausibility of Plaintiff’s
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`construction of parameter “a.” (See generally MTD, ECF No. 30-1; see also Reply 14, ECF
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`No. 33 (“What’s more, Scripp’s infringement case fails if either part of Illumina’s
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`construction is adopted . . . .” (emphasis removed)).) And Plaintiff’s FAC sets forth how
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`the accused products allegedly meet each element of the asserted claims under its theory
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`of infringement. (See FAC ¶¶ 20–23, ECF No. 27.) Thus, having found that Plaintiff’s
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`construction of parameter “a” is plausible, the Court DENIES Defendant’s MTD.
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`IT IS SO ORDERED.
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`Dated: April 14, 2017
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`3 For this reason the Court need not reach Defendant’s alternative argument that Plaintiff’s claim for literal
`infringement based on the doctrine of equivalents is barred. (MTD 18–19, ECF No. 30-1.)
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` 4
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` And at that juncture the Court will adopt Defendant’s, Plaintiff’s, or another appropriate construction of
`parameter “a.”
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