Corning Incorporated v. Wilson Wolf Manufacturing Corporation

Background

Corning brought this declaratory-judgment action after Wilson Wolf filed patent-infringement lawsuits against users of Corning’s HYPERStack product. Corning sought declarations concerning non-infringement, invalidity, and unenforceability of three patents, as well as a declaration that the defendants tortiously interfered with Corning’s business relationships. The customer lawsuits were stayed while this case proceeded.

The court had previously interpreted terms in the patents in a claim-construction order. After that order, Wilson Wolf stated that it did not intend to pursue infringement claims based on two of the patents at issue. In a November 4, 2022 order, the court denied the defendants’ motion to dismiss for lack of standing. The court found a case or controversy based on several grounds, including threats of litigation against Corning and its customers, the parties’ history of disputes, the defendants’ reliance on Corning’s instructions for using HYPERStack, and Corning’s obligation to indemnify two customers.

Motions for reconsideration

The defendants requested permission to file motions asking the court to reconsider three claim constructions: the meaning of the “more than 2.0 cm” limitations in the ’192 Patent, whether that patent claims scaffolded embodiments, and the meaning of “scaffolds/shelves” in the ’443 Patent.

Under District of Minnesota Local Rule 7.1(j), permission requires “compelling circumstances.” The defendants argued that the first construction excluded embodiments shown in the patent and resulted from factual and legal errors. They also relied on later decisions by the United States Patent and Trademark Office and the Patent Trial and Appeal Board concerning the ’192 and ’443 Patents. Corning argued that the defendants had not identified new evidence that was unavailable during claim construction and that the later agency decisions did not address, or materially undermine, the court’s interpretations.

The court concluded that the defendants had not identified new, material evidence that could not have been presented during the original claim-construction proceedings. It also concluded that the later agency decisions did not materially undermine or materially relate to the challenged constructions. The court therefore denied the defendants’ three separate requests for permission to file motions for reconsideration.

Motion for interlocutory appeal

The defendants separately sought certification under 28 U.S.C. § 1292(b). Such certification can allow an immediate appeal of an otherwise nonappealable order when the order presents a controlling legal question, there is substantial disagreement about that question, and an immediate appeal may materially advance the litigation.

The defendants proposed questions about whether Corning had standing to seek declarations that its customers did not perform steps claimed in method patents and whether Corning had standing to seek declarations that it did not directly infringe when the customers were not parties. They argued that immediate appellate review could reduce the cost and length of the case. Corning argued that the request was untimely and that the proposed questions did not support certification.

The court held that the defendants had not shown that immediate appeal was warranted. The proposed questions would not materially affect the grounds on which the court had already found standing. The court also observed that the case included claims concerning invalidity, tortious interference, and inequitable conduct, which would remain even if the standing questions were certified. The court concluded that certification would delay the proceedings and create piecemeal litigation. It therefore denied the motion for certification under § 1292(b).

Motion to file a reply and disposition

The court also denied the defendants’ motion for leave to file a reply, agreeing that the issues concerning jurisdiction and standing had been adequately briefed.

The order thus denied the defendants’ separate requests for permission to file motions for reconsideration, denied the motion for certification under 28 U.S.C. § 1292(b), and denied the motion for leave to file a reply. Judge Donovan W. Frank signed the order on May 8, 2023.