Case 1:13-cv-23309-CMA Document 184 Entered on FLSD Docket 09/02/2014 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`CASE NO. 13-23309-CIV-ALTONAGA/O’SULLIVAN
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`ATLAS IP, LLC, a Florida LimitedLiability Corporation,
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`Plaintiff,
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`vs.
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`MEDTRONIC, INC., a Minnesota Corporation,
`MEDTRONIC USA, INC., a Minnesota Corporation, and
`MEDTRONIC MINIMED, INC., a Delaware Corporation,
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`Defendants.
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`PLAINTIFF’S REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
`THAT THE ASSERTED PATENT CLAIMS ARE NOT INVALID
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`I.
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`INTRODUCTION
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`In responding to Atlas‟ motion for summary judgment, Medtronic ignores the plain
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`meaning of the claim limitation “each,” complains about an allegedly “new” plain meaning
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`construction of this claim limitation, relies upon improper summary judgment evidence, and cites
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`to law that is no longer valid. Under the circumstances, Atlas‟ motion for summary judgment
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`should be granted.
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`II.
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`DISCUSSION
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`The subject claims are neither anticipated nor obvious
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`On the issues of anticipation and obviousness, Medtronic responds that: 1) the word
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`“each” does not really mean every; and 2) even if “each” means every, something less than every
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`is still “each.” Neither of these responses makes sense, and summary judgment on these issues
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`in Atlas‟ favor is appropriate.
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`ST. JUDE 1029
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`Case 1:13-cv-23309-CMA Document 184 Entered on FLSD Docket 09/02/2014 Page 2 of 8
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`Medtronic begins by accusing Atlas of attempting to interject a “new” construction in this
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`proceeding. Medtronic Opp. at 5. This construction is supposedly new because Atlas did not
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`identify “each” as a term requiring construction. Id. at 5-6. Of course,Atlas did not identify
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`“each” as a term requiring construction because “each” has a plain meaning that is universally
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`understood and, therefore, no construction is required. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
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`723 F.3d 1363, 1373 (Fed. Cir. 2013) (court‟sutilize a term‟s plain meaning unless a patentee
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`provides his/her own definition or disavows the full scope of a claim term).
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`Medtronic posits that construing “each” to mean “every”—i.e., the plain meaning of
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`each—conflicts with other constructions proposed by Atlas, such as “communication cycle” and
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`“transmission opportunity,” which are defined in terms of when communications or
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`transmissions “may” occur. Medtronic Opp. at 7. In the context of those definitions, however,
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`the term “may” means “is allowed to” and does not mean that those transmissions or
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`communications may or may not occur.
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`Medtronic‟s attack on the plain meaning construction offered by Atlas also includes an
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`apparent misunderstanding of such construction. The plain meaning of the limitation
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`“communication cycles, each of which has intervals during which the hub and the remotes
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`transmit and receive frames” is that each communication cycle includes at least one interval in
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`which at least one remote transmits a frame to the hub. This plain meaning does not, as
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`Medtronic intimates, require that every remote transmit frames during every communication
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`cycle.Indeed, Atlas distinguished the prior art on the basis that such art allowed for the
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`possibility of “communication cycles in which the remotes send no frames to the hub.” ECF
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`Docket No. 139-1 (emphasis added).
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`When read correctly, this plain meaning construction is entirely consistent with claims 6
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`and 11. Medtronic Opp. at 8. These claims address situations where less than all remotes
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`transmit frames (claim 6) or a predetermined number of frames (claim 11). No claim covers an
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`absence of frames transmitted to the hub by all remotes collectively during a communication
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`cycle.
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`This plain meaning construction is also consistent with the specification passages cited by
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`Medtronic, all of which address a situation in which a single remote, as opposed to all remotes,
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`fails to transmit a frame to the hub during a communication cycle. By way of example,
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`Medtronic refers to the situation in Figure 3 in which “Txop 84 is not used by the remote 66 for a
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`predefined number of communication cycles 74:”
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`Medtronic Opp. at 9.
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`In order to be correct in its specification-based challenge to this plain meaning
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`construction, Medtronic would need to point to something in the specification teaching the
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`transmission of no frames during any of Txop1 through Txopn, i.e., no remotes transmitting
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`frames to the hub. The teaching to which Medtronic refers is an absence of frames transmitted to
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`the hub during Txopn (element 84), i.e., a single remote transmitting no frame to the hub.
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`Similarly, the specification passage reading “the remote 66 may leave its Txop unused, or may
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`send a control frame” addresses an absence of frames transmitted by one remote, as opposed to
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`all remotes. See Medtronic Opp. at 9-10 (emphasis in original).
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`Medtronic also resorts
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`to quoting
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`the
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`inventor regarding
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`the scope of
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`the
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`claimsnotwithstanding that the after-the-fact testimony of an inventor is accorded little, if any,
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`weight in the claim construction inquiry. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
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`1313, 1321 (Fed.Cir. 2002). Even if the Court considers the inventor‟s testimony, that testimony
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`merelydescribes an instance in which a single remote chooses “to transmit nothing or less than
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`its full transmission opportunity.” Medtronic Opp. at 10.That testimony does not address a
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`situation in which no remote transmits a frame to the hub in a particular communication cycle
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`and, therefore, is inapposite.
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`Ironically, Medtronic ends its attack on the plain meaning construction of “each” by
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`accusing Atlasof attempting to rewrite the claims. The irony is that Medtronic seeks to have this
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`Court either ignore the word “each” in the asserted claims, or construe that term to mean
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`something other than its plain meaning of “every” or “all.”
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`Recognizing that it may indeed be confronted with the plain meaning of “each,”
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`Medtronic argues that the subject prior art references purportedly teach particular “embodiments”
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`in which remotes transmit frames to the hub in each communication cycle. Medtronic Opp. at
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`11.However, Medtronic confuses embodiments wherein the remotes transmit frames to the hub
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`in only certain communication cycleswith an embodiment where the remotes transmit frames to
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`Case 1:13-cv-23309-CMA Document 184 Entered on FLSD Docket 09/02/2014 Page 5 of 8
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`the hub in each (every) communication cycle. See id. In fact, none of the subject references
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`teaches the latter, only the former. Therefore, none of the authority cited by Medtronic regarding
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`prior art embodiments applies here.
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`As concerns the obviousness issue, Medtronic does not dispute that its expert, Mark
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`Lanning, has failed to identify any combination of references that uniquely satisfies the
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`limitation “communication cycles, each of which has intervals during which the hub and the
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`remotes transmit and receive frames.” Thus, in light of the plain meaning construction of the
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`term “each,” and the failure of the subject references to satisfy that limitation individually, no
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`combination of such references would satisfy that limitation either.
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`Finally, to identify the “repeating communication cycles” of the Baker reference,
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`Medtronic relies upon the unsworn report of its expert, Mark Lanning. See Medtronic Opp. at
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`15-16. However, an unsworn report does not meet the requirements of Fed. R. Civ. P. 56 “and
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`cannot be considered by a district court in ruling on a summary judgment motion.” Carr v.
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`Tatangelo, 338 F.3d 1259,1273, n.27 (11th Cir. 2003), citing Adickes v. S.H. Kress & Co., 398
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`U.S. 144, 158 n.17 (1970). In contrast, Atlas cited Mr. Lanning‟s sworn deposition testimony to
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`establish that he did not identify a repeating communication cycle in Baker. ECF Docket No.
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`140, ¶ 20, citingLanning Dep. Tr. at 70:2-5.
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`Again grasping at straws, Medtronic notes that Atlas‟ expert does not “dispute this
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`disclosure of Baker in [Mr. Lanning‟s] expert report.” Medtronic Opp. at 16.Not only does this
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`argument ignore (again) that expert reports are not evidence for purposes of resolving motions
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`for summary judgment, it fails to recognize that Medtronic, not Atlas, has the burden of proof on
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`this issue. The fact that Atlas‟ expert did not expressly refute this issue in his report does not
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`create a genuine issue of material fact.
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`Case 1:13-cv-23309-CMA Document 184 Entered on FLSD Docket 09/02/2014 Page 6 of 8
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`The specification provides adequate written description
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`Medtronic does not dispute that claim language contained in the original patent
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`application can, and in many cases does, satisfy the written description requirement. See ECF
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`Docket No. 139-1 at 6. Medtronic also does not dispute that the four claim limitations that form
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`the basis of its written description challenge were part of the original application. See id. The
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`only “evidence” that Medtronic cites to rebut the proposition that such original language satisfies
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`the written description requirement in this case is the unsworn report of Mr. Lanning. Medtronic
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`Opp. at 17-19. As noted above, the report is not to be considered in a summary judgment
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`context, and summary judgment on the written description requirement should be granted in
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`Atlas‟ favor.
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`The patent provides sufficient description for enablement
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`Recognizing the fatal flaw in Mr. Lanning‟s enablement analysis, given his failure to
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`have even considered the amount of time it would have taken one of ordinary skill in the art to
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`practice the claimed invention, Medtronic is forced to shift its approach by tying enablement to
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`the written description requirement, positing that such issues “usually rise and fall together.”
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`Medtronic Opp. at 20.Medtronic cites to the Federal Circuit‟s decision in LizardTech, Inc. v.
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`Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) for this “rise and fall
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`together” proposition. Medtronic Opp. at 20. Since that decision, however, the Federal Circuit,
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`in its en banc decision in Ariad Pharms., Inc. v. Eli Lilly & Co., made clear that the first
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`paragraph of 35 U.S.C. § 112 “contains two separate description requirements: a „written
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`description [i] of the invention, and [ii] of the manner and process of making and using [the
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`invention].‟” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en
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`banc). Therefore, it would be incorrect as a matter of law to resolve one of these defenses
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`Case 1:13-cv-23309-CMA Document 184 Entered on FLSD Docket 09/02/2014 Page 7 of 8
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`simply by resolving the other defense. As this erroneous “rise and fall together” theory is
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`Medtronic‟s only response on this issue, Atlas is entitled to summary judgment thereon.
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`III. CONCLUSION
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`For the foregoing reasons, and for the reasons stated in Atlas‟ original summary judgment
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`submissions, the instant motion should be granted.
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`Respectfully submitted,
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`/s/ Curtis Carlson
`Curtis Carlson
`CARLSON & LEWITTES, P.A.
`One Southeast Third Avenue
`1200 SunTrust International Center
`Miami, Florida 33131
`(305) 372-9700
`Carlson@carlson-law.net
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`Counsel for Plaintiff
`Atlas IP, LLC
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`Date: September 2, 2014
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`OF COUNSEL:
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`Rolf O. Stadheim
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`George C. Summerfield
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`Kyle L. Harvey
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`STADHEIM & GREAR, LTD
`400 North Michigan Avenue
`Suite 2200
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`Chicago, Illinois 60611
`(312) 755-4400
`Stadheim@stadheimgrear.com
`Summerfield@stadheimgrear.com
`Harvey@stadheimgrear.com
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`Case 1:13-cv-23309-CMA Document 184 Entered on FLSD Docket 09/02/2014 Page 8 of 8
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on September 2, 2014, the foregoing document was served on
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`all counsel of record who are deemed to have consented to electronic service via the Court‟s
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`CM/ECF system, either via transmission of Notices of Electronic Filing generated by CM/ECF
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`or in some other authorized manner for those counsel or parties who are not authorized to receive
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`Luke L. Dauchot
`Email: luke.dauchot@kirkland.com
`SharreLotfollahi
`Email: sharre.lotfollahi@kirkland.com
`Kirkland & Ellis, LLP
`333 South Hope Street
`Los Angeles, CA 90071
`Telephone: 213-680-8400
`Facsimile: 213-680-8500
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`electronically Notices of Electronic Filing.
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`Janet T. Munn
`Florida Bar No. 501281
`E-mail: jmunn@rascoklock.com
`RascoKlock Perez Nieto
`283 Catalonia Avenue, Suite 200
`Coral Gables, FL 33134
`Telephone No. (305) 476-7101
`Facsimile No. (305) 476-7102
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`Jeanne M. Heffernan
`Email: jeanne.heffernan@kirkland.com
`Akshay S. Deoras
`Email: akshay.deoras@kirkland.com
`Beatrice Hahn
`Email: Beatrice.hahn@kirkland.com
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, NY 10022-4611
`Telephone No. (212) 446-4800
`Facsimile No. (212) 446-4900
`Email: Medtronic_Atlas@kirkland.com
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`By: /s/ Curtis Carlson
`Curtis Carlson
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`8
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