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Motion to Reconsider Claim Construction Order on Indefiniteness after Nautilus Denied Where District Court Found Term Definite

Defendant Stealth Cam, LLC (“Stealth Cam”) requested that the district court reconsider its Claim Construction Order holding that the term “extending parallel” was not indefinite.

The district court first noted that under the local rules a party must show “compelling circumstances” to obtain permission to file a motion to reconsider, D. Minn. L.R. 7.1(j), and that a motion to reconsider should not be employed to relitigate old issues, but rather to “afford an opportunity for relief in extraordinary circumstances.” Dale & Selby Superette & Deli v. U.S. Dept. of Agric., 838 F. Supp. 1346, 1348 (D. Minn. 1993).

In support of its motion, Stealth Cam relied on the Supreme Court’s recent decision in Nautilus, Inc. v. BioSig Instruments, Inc., 134 S. Ct. 2120 (2014), holding that a patent’s claims must, when viewed in light of the specification and prosecution history, “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc., 134 S. Ct. at 2129. In light of that decision, Stealth Cam argued that a stricter standard for satisfying the definiteness requirement now exists and that the term “extending parallel” was indefinite under the new standard. Accordingly, Stealth Cam requested that the district court either reconsider its ruling that the term “extending parallel” is not indefinite and find that the term is indefinite or, alternatively, allow the jury to determine the issue of definiteness. In response, the plaintiff asked the district court to maintain its original claim construction of the term “extending parallel” and asserted that the district court already applied a standard compatible with the ruling in Nautilus.

In its Claim Construction Order, the district court wrote:

After a review of the claim language and intrinsic evidence, the Court concludes that a reasonable meaning of “extending parallel” can be ascertained, and that the term should be construed as “the mounting rail has a longitudinal axis parallel to the central axis of the housing/camera body and the primary (longitudinal) dimension of the mounting rail extends in the primary (longitudinal) direction as the housing/camera body.”

The district court then agreed with the plaintiff. “In determining that the term ‘extending parallel’ was not indefinite, the Court found that a ‘reasonable meaning’ of the term could be ascertained. The Court now concludes that the standard it applied in its Claims Construction Order is in accordance with the standard articulated in Nautilus. Therefore, the Court will maintain its original construction for ‘extending parallel.'”

Accordingly, the district court denied the motion to reconsider.

Holmberg v. Stealth Cam, LLC, Case No. 11-248 (DWF/LIB) (D. Min. Nov. 6, 2014)

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