The opinion of the court was delivered by: James F. Holderman, Chief Judge:
Consolidated for Discovery
MEMORANDUM OPINION AND ORDER
Before the court are two motions by Tellabs Operations, Inc. that relate to its '772 patent. On Oct. 27, 2011, Tellabs asked this court to reconsider its construction of two claim terms used in the '772 patent. (Case No. 08 C 3379, Dkt. No. 432 ("Mot. to Reconsider.").) Subsequent developments in the inter partes reexamination proceeding involving this patent have prompted Fujitsu to ask that this court stay its ruling on the motion to reconsider, Fujitsu's pending motion for summary judgment of non-infringement of that patent (Case No. 09 C 4530, Dkt. No. 419), and the discovery deadlines and expert reports related to that patent. (Case No. 08 C 3379, Dkt. No. 453. ("Mot. to Stay.").) After careful review and for the reasons stated herein, Tellabs' Motion to Stay is denied, except to the extent that the court will stay any issues remaining after its ruling on the motion for summary judgment. Further, after reviewing the parties filings and hearing their counsel in oral argument, for the reasons stated herein, Tellabs' Motion to Reconsider the court's claim construction rulings is denied.
On Sept. 29, 2011, this court issued its claim construction
determinations regarding 19 disputed claim terms found in five of the
patents at issue in this case. Fujitsu Ltd. v. Tellabs Operations,
Inc., --- F. Supp. 2d ---, 2011 WL 4578207 (N.D. Ill. Sept. 29, 2011)
(Dkt. No. 427 in 08 C 3379, Dkt. No. 379 in 09 C 4530).*fn1
Those determinations followed a multi-day tutorial and
Markman hearing in which counsel for the parties were fully heard. The
court's 2011 claim construction ruling was preceded by the court's
2009 preliminary claim construction ruling addressing certain claim
terms in three of the patents, including the '772 patent, based on the
intrinsic evidence. Tellabs Operations, Inc. v. Fujitsu Ltd., No. 08 C
3379, 2009 WL 1329153
(N.D. Ill. March 13, 2009). Tellabs, through its motion for
reconsideration, seeks to have this court reconsider its claim
construction determinations of Sept. 29, 2011 relating to two claim
terms in Tellabs' '772 patent: "optical line interface" and "optical
As to "optical line interface," the court determined that to a person of ordinary skill in the art at the time of the invention, this term meant: "an interface adapted for transmitting/receiving wavelength division multiplexed optical communication signals on a single optical fiber (where 'transmitting/receiving' means 'transmitting and receiving'). " Fujitsu, 2011 WL 4578207, at *17.
This court construed the second term "optical demultiplexer," as meaning, to a person of ordinary skill in the art at the time of the invention:
A device that receives N optical wavelengths multiplexed together as an optical signal on a single optical waveguide and outputs the N wavelength channels on individual optical waveguides, where the device outputs each of the N wavelengths as at least one of the following: (a) individual wavelengths, (b) bands of wavelengths or (c) a combination of bands and individual wavelengths.
Tellabs contends that both these definitions are incorrect in light of the intrinsic record and urges this court to reinstate its preliminary claim constructions as to these terms. (Mot. to Reconsider 12). Before turning to the Motion to Reconsider the court's claim term constructions, however, the court must address Tellabs' subsequent request for a stay of the litigation as relates to the '772 patent.
While this litigation has been pending, so too has a parallel reexamination of the '772 patent before the United States Patent and Trademark Office ("PTO"). On July 6, 2009, Fujitsu filed a request for an inter partes reexamination of the patent, and on Dec. 9, 2009, Fujitsu filed a request for an ex parte reexamination of the patent. During the inter partes reexamination, Tellabs cancelled claims 1 and 3-5 of the '772 patent, and during the ex parte reexamination, it cancelled claims 14-16. Claims 2, 6-13, and 17-24 remained at issue.
During the inter partes reexamination, the examiner confirmed the patentability of claims 2 and 6-24. Fujitsu appealed that decision to the Board of Patent Appeals and Inferences ("BPAI"), which on Dec. 12, 2011, reversed the examiner's decision and rejected all the asserted claims. On Jan. 12, 2012, Tellabs requested a reopening of the prosecution before the examiner and presented new claims 25-41. At this point in time, Tellabs asserts, all issued claims of the '772 patent are either cancelled or amended as a result of the pending reexamination. (Mot. to Stay 2.)
The court turns first to the motion to stay.
Tellabs contends that a severance and stay of the claims related to the '772 patent will serve judicial economy because it is unclear what claims of the '772 patent will go forward. (Id. at 4.) Tellabs suggests that when the '772 patent emerges from reexamination, the parties can litigate the claims involving it in a separate suit. Additionally, Tellabs informs the court that its expert on the '772 patent has suffered a stroke which prevents him from continuing to serve in that capacity, so it would need additional time to respond to the pending summary judgment motion on the '772 patent.*fn2
Fujitsu does not object to Tellabs receiving additional time to get a new expert up to speed, nor does it object to a stay of any remaining issues involving the '772 patent once the court has decided the motion to reconsider and the motion for summary judgment. But Fujitsu contends that it would be prejudiced by any stay of the pending motions, given that this case is (in its view at least) on the eve of resolution. Additionally, Fujitsu notes that the amended claims pending in reexamination include the terms "optical line interface" and "optical demultiplexer." Because Tellabs cannot broaden the scope of the claims in reexamination, see 35 U.S.C. § 305, the court's construction of these terms should apply to any claims that survive reexamination, Fujitsu argues. (Case No. 08 C 3379, Dkt. No. 459 ("Fujitsu's Resp. to Mot. to Stay" 8.).) Fujitsu contends that Tellabs is attempting to "undo" the court's Markman constructions by adding dependent claims to the '772 patent in reexamination that contain the limitations that Tellabs wants to remove from this court's constructions of the terms "optical line interface" and "optical demultiplexer." If these dependent claims are allowed, ...