| Neutral
`|
`As of: December 9, 2014 3:47 PM EST
`
`Wonderland Nurserygoods Co. v. Thorley Indus., LLC
`
`United States District Court for the Western District of Pennsylvania
`
`October 20, 2014, Decided; October 20, 2014, Filed
`
`Civil Action No. 12-196
`
`Reporter
`2014 U.S. Dist. LEXIS 148788
`
`WONDERLAND NURSERYGOODS CO., LTD., Plaintiff,
`vs. THORLEY INDUSTRIES, LLC, d/b/a 4MOMS,
`Defendant.
`
`Opinion
`
`MEMORANDUM ORDER
`
`Prior History: Wonderland Nurserygoods Co. v. Thorley
`
`Indus., LLC, 858 F. Supp. 2d 461, 2012 U.S. Dist. LEXIS
`
`34049 (W.D. Pa., 2012)
`
`Counsel:
`
`[*1] For WONDERLAND NURSERYGOODS
`CO., LTD., Plaintiff: Avrum Levicoff, LEAD ATTORNEY,
`Edward I. Levicoff, Levicoff, Silko & Deemer, Pittsburgh,
`PA; Daniel A. Tallitsch, LEAD ATTORNEY, PRO HAC
`VICE, Baker & McKenzie, Chicago, IL; David I. Roche,
`LEAD ATTORNEY, PRO HAC VICE, Baker & McKenzie,
`LLP, Chicago, IL; Yi Fang, PRO HAC VICE, Washington,
`DC.
`
`For THORLEY INDUSTRIES, LLC, doing business as
`4MOMS, Defendant: Anthony W. Brooks, Bryan P. Clark,
`Kent E. Baldauf, Jr., LEAD ATTORNEYS, Ryan J. Miller,
`The Webb Law Firm, Pittsburgh, PA.
`
`For THORLEY INDUSTRIES, LLC, Counter Claimant:
`Anthony W. Brooks, Bryan P. Clark, Kent E. Baldauf, Jr.,
`LEAD ATTORNEYS, The Webb Law Firm, Pittsburgh, PA.
`
`For WONDERLAND NURSERYGOODS CO., LTD.,
`Counter Defendant: Avrum Levicoff, LEAD ATTORNEY,
`Edward I. Levicoff, Levicoff, Silko & Deemer, Pittsburgh,
`PA; Daniel A. Tallitsch, LEAD ATTORNEY, Baker &
`McKenzie, Chicago,
`IL; David
`I. Roche, LEAD
`ATTORNEY, Baker & McKenzie, LLP, Chicago, IL; Yi
`Fang, PRO HAC VICE, Washington, DC.
`
`Judges: Nora Barry Fischer, United States District Judge.
`
`Opinion by: Nora Barry Fischer
`
`Pending before the Court is the Plaintiff’s ″Motion for
`Certification Under 28 U.S.C. 1292(b).″ (Docket No. 260).
`Upon consideration [*2] of the parties’ briefs, (Docket Nos.
`261, 263), the Court’s order regarding supplemental briefing,
`(Docket No. 264), and said supplemental briefing, filed on
`September 22, 2014, (Docket Nos. 265, 266), for the
`following reasons, the Motion [260] is DENIED.
`
`I. Introduction1
`
`The pending motion arises in the wake of the Court’s order
`denying determination under Rule 54(b) and ordering that
`the motion be re-filed as one seeking certification under 28
`U.S.C. § 1292(b). (Docket No. 259). Pursuant to that order,
`Plaintiff seeks certification of the Court’s construction of
`claims 1-3 and 12-14 of U.S. Patent No. 8,047,609 (″the
`’609 patent″), (Docket No. 59) and the Court’s order to stay
`the case pending appeal of the reexamination of the ’609
`patent,
`(Docket No. 234). Specifically, Plaintiff seeks
`certification of the following questions:2
`
`1. Did the district court err in construing the term
`″crank″ to mean: ″an arm attached at a right angle
`to a shaft which turns about the axis of the shaft?″
`
`2. Did the district court err in construing the term
`″connected fixedly″ to mean: ″separate pieces
`joined or linked securely to one another?″
`
`3. Did the district court err as [*3] a matter of law
`in granting summary judgment of non-infringement
`of claims 12 and 14 based on a construction the
`term [sic] ″first driving mechanism″ that necessarily
`includes a gear and a link, when the claim does not
`call for such elements?
`
`1 Familiarity with the general factual and procedural background of this case is presumed. (See Docket Nos. 58, 157).
`
`2 Each question will hereinafter be referenced by the following number, as ″Question(s) 1-5.″
`
`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Ex. 2001 - Page 1
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`

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`2014 U.S. Dist. LEXIS 148788, *4
`
`4. Did the district court err as a matter of law in
`granting summary judgment of non-infringement
`of claim 14 based on a construction of the term
`″guiding elements″ that requires a track that is
`more than a surface by which the wheels are
`guided vertically?
`
`5. Whether the district court may properly defer to
`a Patent Office reexamination for the determination
`of patent validity when the district court and the
`Patent Office have adopted directly opposite views
`on a question of claim construction of the same
`patent, i.e., whether the preamble of a claim is a
`limitation?
`
`(Docket No. 261 at pp. 2, 4). As the parties addressed
`Questions 1-4 together and Question 5 separately, the Court
`will do the same.
`
`II. Legal Standard
`
`Title 28 U.S.C. § 1292(b) allows for certification of a
`question for interlocutory appeal if the order at issue ″(1)
`involve[s] a ’controlling question of law,’ (2) offer[s]
`’substantial [*4] ground for difference of opinion’ as to its
`correctness, and (3) if appealed immediately ’materially
`advance[s] the ultimate termination of the litigation.’″ Katz
`v. Carte Blanche Corp., 496 F.2d 747, 754 (3d Cir. 1973)
`(quoting 28 U.S.C. § 1292(b)). Even if the moving party
`satisfies the statutory criteria, the district court ″possesses
`discretion to deny certification of an appeal.″ In re Chocolate
`Confectionary Antitrust Litig., 607 F.Supp.2d 701, 708
`(M.D. Pa. 2009). However, such discretion should not be
`exercised when ″certification will materially advance the
`instant matter and bring clarity to a still-developing area of
`law.″ Id.
`
`In determining whether an order presents a controlling
`question of law, the Court must look to whether (1) an
`incorrect disposition would constitute reversible error if
`presented on final appeal or (2) if the question is ″serious to
`the conduct of the litigation either practically or legally.″
`Katz, 496 F.2d at 755. The clearest evidence of ″substantial
`grounds for difference of opinion″ is where ″there are
`conflicting interpretations from numerous courts.″ Beazer
`E., Inc. v. Mead Corp., No. 91-408, 2006 U.S. Dist. LEXIS
`
`74743, 2006 WL 2927627, at *2 (W.D. Pa. Oct. 12, 2006)
`(Diamond, J.). And, in terms of determining whether appeal
`would materially advance the ultimate termination of
`litigation, courts look to ″(1) whether the need for trial
`would be eliminated;
`(2) whether
`the trial would be
`simplified by the elimination of complex issues; and (3)
`could be conducted more
`whether discovery [*5]
`expeditiously and at less expense to the parties.3 ″ Patrick v.
`Dell Fin. Servs., 366 B.R. 378, 387 (M.D. Pa. 2007).
`
`III. Analysis
`
`a. Claim Construction4Questions
`
`In Questions 1-4, Plaintiff generally seeks certification of
`claim construction issues. (Docket No. 261 at p. 2).
`
`i. Controlling Question of Law
`
`Plaintiff argues that, because claim construction is a matter
`of law, the Court’s claim construction ruling itself is a
`″controlling question of law″ as required by § 1292. (Docket
`No. 261 at pp. 1-2). Defendant contends that, because the
`constructions Plaintiff challenges are not present
`in all
`asserted claims, they do not present a controlling question of
`law. (Docket No. 263 at p. 2). Defendant’s argument on this
`point cannot prevail.
`
`In determining whether an order presents [*6] a controlling
`question of law, the Court considers whether an incorrect
`disposition would constitute reversible error if presented on
`final appeal or if the question is ″serious to the conduct of
`the litigation either practically or legally.″ Katz, 496 F.2d at
`755. No doubt, claim construction is a question of law.
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372,
`116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996); Cybor Corp. v.
`FAS Techs., Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en
`banc). The Federal Circuit routinely reverses and remands
`cases on the basis of the district court’s claim construction.
`See generally Brief of Professor Peter S. Menell as Amicus
`Curiae Supporting Petitioner, Lighting Ballast Control LLC
`v. Philips Elecs. N. Am. Corp., 744 F.3d 1272 (Fed. Cir.
`2014), 2013 WL 3554394 (describing reversal rates on claim
`construction as ″alarming″). Further,
`to this Court’s
`knowledge, the Federal Circuit has not once rejected a §
`1292(b) petition on the ground that claim construction is not
`
`3 Discovery in this case has concluded, so this factor is irrelevant.
`
`4 To the extent Plaintiff argues Questions 3 and 4 are not, in fact, issues of claim construction, the Court disagrees. Additionally, even
`if Plaintiff’s argument is accepted, the Court refuses to exercise its discretion to certify them for interlocutory appeal, since it would
`create the problem of piecemeal appeals, which this Court finds inappropriate for interlocutory certification. See Ultra-Precision Mfg.
`Ltd. v. Ford Motor Co., 338 F.3d 1353, 1359 (Fed. Cir. 2003); In re Kelly, 876 F.2d 14, 15 (3d Cir. 1989).
`
`Page 2 of 5
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`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Ex. 2001 - Page 2
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`

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`2014 U.S. Dist. LEXIS 148788, *6
`
`a controlling question of law. See, e.g., Portney v. CIBA
`Vision Corp., 401 F. App’x 526, 529 (Fed. Cir. 2010)
`(denying § 1292(b) petition of claim construction on
`discretionary ground). Accordingly, the Court finds that its
`claim construction order is a controlling issue of law.
`
`ii. Substantial Ground for Difference of Opinion
`
`Plaintiff points to no specific substantial grounds for
`difference of opinion on any of these issues short of quoting
`various standards and conclusorily stating that its Questions
`meet those standards. (Docket No. 261 at [*7] p. 3).
`
`Finding a substantial ground for difference of opinion does
`not require the Court question its own ruling.5 See APCC
`Servs., Inc. v. AT & T Corp., 297 F.Supp.2d 101, 107
`(D.D.C. 2003). The clearest evidence of ″substantial grounds
`for difference of opinion″ is where ″there are conflicting
`interpretations from numerous courts.″ Beazer E., Inc., No.
`91-408, 2006 U.S. Dist. LEXIS 74743, 2006 WL 2927627, at
`*2. In this case, there have been different decisions on the
`same contested issue by two different adjudicative bodies:
`this Court and the United States Patent and Trademark
`Office’s (″PTO″) Patent Trial and Appeal Board (″PTAB″),
`in the parties’ Inter Partes Reexamination6 (″IPR″), currently
`on appeal at the United States Court of Appeals for the
`Federal Circuit.
`
`There are, however, several important differences between
`the IPR and this action. First, not all of
`the claim
`constructions on which Plaintiff seeks certification were at
`issue in the IPR.7 Second, district courts interpret claims
`using the ″ordinary and customary meaning″ of the terms, as
`per the framework of Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny, whereas in PTO
`proceedings, claims are construed under the ″broadest
`reasonable interpretation″ standard. [*8] MPEP § 2111 (9th
`ed. Mar. 2014); see also Am. Acad. of Sci. Tech. Ctr., 367
`F.3d 1359, 1364 (Fed. Cir. 2004). Hence, it is not surprising
`that constructions from IPRs and other PTO proceedings
`may differ from or, indeed, be diametrically opposed to
`those of district courts, as is the case here, where, for
`example, this Court found the preambles limiting, but the
`PTO did not so find. Compare Docket No. 58 at p. 10 with
`Thorley Indus. LLC v. Wonderland Nursery Goods Co., No.
`95/001,871 at p. 5 (Feb. 14, 2013). The Federal Circuit
`distinguishes between these standards in its review of
`
`determinations of the different fora. Cf. Phillips, 415 F.3d at
`1316-17. While there are ″conflicting interpretations from″
`different adjudicative bodies, Beazer E., Inc., No. 91-408,
`2006 U.S. Dist. LEXIS 74743, 2006 WL 2927627, at *2, the
`interpretations stem from different standards. Thus,
`the
`Court does not believe that
`the instant conflicting
`determinations actually present the scenario of ″conflicting
`opinions,″ envisioned under § 1292(b).
`
`iii. Material Advancement of Litigation
`
`Beyond insufficient evidence of a substantial ground for a
`difference of opinion, historically, the Federal Circuit has
`been reluctant to entertain interlocutory appeals regarding
`claim construction. Portney, 401 Fed. Appx. at 529 (″The
`court has generally refrained from granting § 1292(b)
`petitions [*9] to resolve claim construction disputes, instead
`leaving such matters to be determined after entry of final
`judgment.″). In fact, to the Court’s knowledge, the Federal
`Circuit has done so only once, in Regents of Univ. of Cal. v.
`Dako N. Am., Inc., 477 F.3d 1335 (Fed. Cir. 2007).
`
`In Regents, the Federal Circuit accepted an interlocutory
`appeal of claim construction, certified under § 1292(b),
`because ″the district court’s claim construction [was] already
`before [that] court in the pending appeals regarding [a]
`preliminary injunction motion.″ 477 F.3d at 1336. Plaintiff
`claims that this is the same situation as in this case due to
`the fact that the ″IPR″ is currently on appeal at the Federal
`Circuit. (See Docket No. 261 at p. 3-4). However, as
`outlined above, the claim construction currently pending
`before the Federal Circuit is that of the PTO, not the Court.
`As such, the propriety of this Court’s claim constructions
`should not be at issue in the IPR appeal. Further, the Federal
`Circuit would need to undertake two wholly separate
`analyses if Plaintiff were to succeed in its quest for
`interlocutory appeal on Questions 1-4. Thus, this case is
`unlike the circumstances in Regents, where the district
`court’s entire certified claim construction was already in
`to the pending
`front of the Federal Circuit due [*10]
`preliminary injunction appeal. 477 F.3d at 1336. Although
`review of this Court’s claim construction ruling could
`materially advance the litigation, it is not before the Federal
`Circuit. Therefore, even if there were appropriate substantial
`grounds for difference of opinion as to these Questions, this
`court would not exercise its discretion to certify these
`Questions.
`
`5 And, indeed, the Court does not second guess its currently-challenged rulings.
`
`6 Reexamination Control 95/001,871, Appeal 2014-002821
`
`7 Specifically, claims 3 and 14 were not part of the reexamination.
`
`Page 3 of 5
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`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Ex. 2001 - Page 3
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`

`
`2014 U.S. Dist. LEXIS 148788, *10
`
`b. Stay Question
`
`i. Controlling Question of Law
`
`In Question 5, Plaintiff seeks certification regarding the
`Court’s Order to Stay pending the appeal of the IPR,
`(Docket No. 234), asking whether it is appropriate for a
`district court to ″defer to a Patent Office reexamination for
`the determination of patent validity when the district court
`and the Patent Office have adopted directly opposite views
`on a question of claim construction of the same patent,″
`(Docket No. 261 at p. 4). In response, Defendant points out
`that ″[t]he Court’s decision to enter the stay was entirely
`within the discretion of the Court,″ and, therefore, there is
`no controlling question of law that is appropriately certified
`under § 1292(b).8 (Docket No. 263 at p. 3).
`
`After consideration of that viewpoint, the Court ordered
`supplemental briefing on whether Fresenius USA, Inc. v.
`Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2010) raises a
`qualifying ″controlling question of law,″ on which ″there is
`a substantial ground for difference of opinion.″ (Docket No.
`264). Plaintiff asserted that Fresenius deals with finality, not
`the question on which it seeks certification, which it
`contends focuses on the different claim constructions of the
`same patent.9 (Docket No. 266 at p. 3). Defendant argues
`that, while it does not constitute a controlling question of
`law, Fresenius actually bolsters its argument that certification
`is inappropriate. (Docket No. 265 at p. 2). This is so, it
`argues, because Fresenius ″made clear that the district court
`not only may defer
`to a PTO reexamination for a
`determination of validity, but must give deference to a
`decision of the PTO that has resulted in the cancellation of
`the claims.″ (Id. (emphasis in original)). Defendant also
`contends Fresenius is not controlling because the Court has
`broad discretion in entering stay orders.10
`
`Initially, the Court notes that it has not deferred to the PTO’s
`construction of the patent-in-suit;
`it merely stayed the
`present action pending appeal of the IPR.11 (Docket No.
`234). Additionally, Plaintiff’s argument that ″Fresenius does
`not deal with the question for which [it] seeks certification,″
`(Docket No. 266 at p. 2),
`is without merit. Plaintiff’s
`
`question asks ″[w]hether a district court may properly defer
`to a Patent Office reexamination for the determination of
`patent validity.″ (Id.). That was precisely the issue in
`Fresenius. 721 F.3d at 1336 (″the question in this case is
`whether, under the reexamination statute, the cancellation of
`claims by the PTO is binding in pending district court
`litigation″). Accordingly, because,
`infringement
`in this
`context,
`this Court would be reversed if it entered an
`infringement judgment on an invalidated patent, the Court
`finds that the ruling in Fresenius presents a controlling
`question of law.
`
`ii. Substantial Ground for Difference of Opinion
`
`In Fresenius [*13] , the Federal Circuit held that a final
`determination of
`invalidity through a reexamination
`proceeding renders a claim invalid ab initio. 721 F.3d at
`1346. In other words, as Defendant stated, a ″district court
`not only may defer
`to a PTO reexamination for a
`determination of validity, but must give deference to a
`decision of the PTO that has resulted in the cancellation of
`the claims.″ (Docket No. 265 at p. 2 (emphasis in original)).
`Accordingly, under this Court’s interpretation of Plaintiff’s
`Question 5, there is a controlling question of law, but there
`is no substantial ground for difference of opinion (i.e., if
`there is a final finding of invalidity through the reexamination
`process, this Court may not enter a judgment of infringement
`as to the invalidated claims). To that end, the Court finds
`certification of Question 5 inappropriate.
`
`iii. Material Advancement of Litigation
`
`Beyond the lack of substantial grounds for a difference of
`opinion as to the controlling question of law, certification of
`the Court’s decision to stay this action pending the Federal
`Circuit’s disposition of the IPR appeal is not likely to
`materially advance this litigation. Even if this Court certified
`the Question, and even [*14] if the Federal Circuit exercised
`its discretionary authority to entertain the Question, the
`instant action would still remain on hold pending that
`decision; the timetable would likely remain the same as if
`the stay remained, unchallenged. Moreover, since this Court
`is bound by a final determination of invalidity through the
`
`8 The Court acknowledges its discretion to enter stay orders, but it also notes that Plaintiff’s framing of [*11] Question 5 is not, per
`se, directed to that discretion.
`
`9 To the extent Plaintiff argues that this question is actually a matter of claim construction, the Court declines to [*12] certify it for
`
`the same reasons outlined, supra.
`
`10
`
`See note 8, supra.
`
`11 As anticipated, ″stays in the face of reexaminations . . . will become inevitable.″ Fresenius USA, Inc. v. Baxter Intern., Inc., 733 F.3d
`1369, 1381 (Fed. Cir. 2013) (O’Malley, J., dissenting from denial of petition for rehearing en banc).
`
`Page 4 of 5
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`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Ex. 2001 - Page 4
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`

`
`2014 U.S. Dist. LEXIS 148788, *14
`
`reexamination process, see Fresenius, 721 F.3d at 1346,
`certifying Question 5 does nothing to advance this litigation;
`this Court is bound by the final determination of the IPR,
`whether or not the stay is appropriate. In other words, the
`need for or simplification of a trial does not depend on
`resolution of this question. See Patrick, 366 B.R at 387.
`Accordingly, the Court refuses to certify Question 5 for
`interlocutory appeal.
`
`IV. Conclusion
`
`With the foregoing in mind, IT IS HEREBY ORDERED
`that the Defendant’s motion [260] is DENIED.
`
`/s/ Nora Barry Fischer
`
`Nora Barry Fischer
`
`United States District Judge
`
`Date: October 20th, 2014
`
`Page 5 of 5
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`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Ex. 2001 - Page 5