Pall Corporation v. 3M Purification, Inc., 2:03-cv-00092

Background

Pall Corporation obtained U.S. Patent No. 5,543,047 (the #047 patent); litigation between Pall and 3M Purification Inc. involves alleged infringement and 3M’s inequitable conduct defenses.
On March 31, 2015 the Court granted summary judgment to Pall on 3M’s inequitable conduct defenses and denied 3M summary judgment on Pall’s willful infringement and lost profits claims; 3M moved for reconsideration and requested oral argument.
3M’s reconsideration asks (1) whether Pall’s HDC-II filter was “but-for” material that should have been disclosed to the PTO during original prosecution (inequitable conduct issue), and (2) whether the Court should adopt 3M’s proposed construction of the h_max formula used in the #047 patent claim language.
The Court corrected a factual omission in its March 31 Order regarding the PTO’s re-examination certificate for the #047 patent (certification and its correction; list of confirmed, canceled, amended, and unaffected claims).
The Court denied reconsideration as to 3M’s proposed construction of the h_max formula (finding the formula unambiguous in the patent and 3M’s authorities insufficient), but deferred decision on the HDC-II “but-for” materiality issue and scheduled oral argument.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the HDC-II filter was "but-for" material that Pall should have disclosed to the PTO (inequitable conduct)	Pall contends no genuine issue of material fact that requires denying 3M relief on inequitable conduct	3M argues HDC-II was material and nondisclosure supports inequitable conduct; sought reconsideration of Grant of summary judgment to Pall	Decision deferred; Court will hear oral argument and reconsider only after argument (hearing set)
Proper construction of the h_max formula in the #047 patent claims	Pall argues h_max is unambiguous as written in the patent and should control claim scope	3M argues h_max must be construed to require pleats tightly packed around the core (invoking specification and rolling claim construction)	Reconsideration denied; Court rejects 3M’s proposed construction and finds no basis to alter prior ruling
Whether the Court erred by declining claim construction at this stage	Pall argues Court properly interpreted the formula on the merits and did not improperly refuse to construe claims	3M contends district court may perform rolling claim construction and should reassess h_max before trial	Court finds 3M miscues the Order; it did construe and reject 3M’s reading on merits and denial of reconsideration is appropriate
Whether 3M presented new controlling law, evidence, or clear error warranting reconsideration	Pall asserts 3M failed to meet the strict standard for reconsideration	3M points to Federal Circuit authority on claim construction timing and additional documents supporting its construction	Court holds 3M failed to meet stringent reconsideration standard for h_max construction; relief denied

Key Cases Cited

Virgin Atl. Airways, Ltd. v. Nat’l Mediation Bd., 956 F.2d 1245 (D.C. Cir. 1992) (grounds for reconsideration include intervening law, new evidence, or need to correct clear error)
Shrader v. CSX Transp., Inc., 70 F.3d 255 (2d Cir. 1995) (reconsideration is granted only for matters the court overlooked that could alter its conclusion)
Analytical Surveys, Inc. v. Tonga Partners, L.P., 684 F.3d 36 (2d Cir. 2012) (motion for reconsideration is not a vehicle to relitigate or take a second bite at the apple)
Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349 (Fed. Cir. 2006) (district courts may engage in rolling claim construction as understanding evolves)
Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352 (Fed. Cir. 2002) (discusses district courts’ ability to revisit claim constructions)
Caribbean Trading & Fid. Corp. v. Nigerian Nat’l Petroleum Corp., 948 F.2d 111 (2d Cir. 1991) (arguments raised first on reconsideration are improper)