United States District Court, D. Delaware
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE
before the Court is Plaintiff Pacific Biosciences of
California, Inc.'s ("PacBio" or
"Plaintiff') Motion for Reconsideration (D.I. 156)
of a portion of the Court's Claim Construction Order
(D.I. 153; see also D.I. 152). By its motion,
PacBio asks the Court to reconsider its ruling that the term
"kinetic step" is indefinite. (D.I. 152, 153)
Defendant Oxford Nanopore Technologies, Inc. ("ONT"
or "Defendant") opposes the motion. (D.I. 188)
IT IS HEREBY ORDERED that PacBios motion is
to Local Rule 7.1.5, motions for reconsideration should be
granted only "sparingly." The decision to grant
such a motion lies squarely within the discretion of the
district court. See Dentsply Infl, Inc. v. Kerr Mfg.
Co., 42 F.Supp.2d 385, 419 (D. Del. 1999); Brambles
USA, Inc. v. Blocker, 735 F.Supp. 1239, 1241 (D. Del.
1990). These types of motions are granted only if the Court
has patently misunderstood a party, made a decision outside
the adversarial issues presented by the parties, or made an
error not of reasoning but of apprehension. See Shering
Corp. v. Amgen, Inc., 25 F.Supp.2d 293, 295 (D. Del.
1998); Brambles, 735 F.Supp. at 1241. "A motion
for reconsideration is not properly grounded on a request
that a court rethink a decision already made." Smith
v. Meyers, 2009 WL 5195928, at *1 (D. Del. Dec. 30,
2009); see also Glendon Energy Co. v. Borough of
Glendon, 836 F.Supp. 1109, 1122 (E.D. Pa. 1993). It is
not an opportunity to "accomplish repetition of
arguments that were or should have been presented to the
court previously." Karr v. Castle, 768 F.Supp.
1087, 1093 (D. Del. 1991).
motion for reconsideration may generally be granted only if
the movant can show at least one of the following: (i) there
has been an intervening change in controlling law; (ii) the
availability of new evidence not available when the court
made its decision; or (iii) there is a need to correct a
clear error of law or fact to prevent manifest injustice.
See Max's Seafood Cafe by Lou-Ann, Inc. v.
Quinteros, 176 F.3d 669, 677 (3d Cir. 1999). However, in
no instance should reconsideration be granted if it would not
result in amendment of an order. See Schering, 25
F.Supp.2d at 295.
claim construction opinion, the Court determined that the
term "kinetic steps" in claim 1 of the '056
patent is indefinite. (D.I. 152 at 19-21) The Court concluded
that claim 1 "requires that the enzymatic reaction be
able to be characterized in terms of a precise number of
steps," but that a POSA would not "be able to
determine the number of kinetic steps and each step's
rate constant... with reasonable certainty."
(Id. at 20-21)
contends that reargument is appropriate because the Court
misapprehended the claim language, failed to consider Dr.
McHenry's expert opinions and ONT's IPR petition, and
lacked the opportunity to consider a newly-produced ONT
document. Upon another careful review of all the evidence
presented to date, the Court concludes that it misapprehended
certain factual arguments and would benefit from the
presentation of additional evidence before making a final
determination on indefiniteness. Accordingly, the Court is no
longer persuaded that a POS A necessarily must be able to
determine the number of kinetic steps in a reaction as well
as each step's rate constant.
of the '056 patent requires that "the translocating
enzyme and the reaction conditions are selected such that the
translocating enzyme exhibits two kinetic steps wherein each
of the kinetic steps has a rate constant, and the ratio of
the rate constants of the kinetic steps is from 10:1 to
1:10." PacBio argues, and as the Court recognized,
"[t]he actual observed behavior of an enzyme is
independent of the underlying theoretical model one uses to
describe the steps by which that enzyme operates, which can
include countless inconsequential steps that do not impact
the behavior the enzyme actually 'exhibits.'"
(D.I. 156 at 2) It is also true that "[t]he claims only
require that the enzyme 'exhibit' two kinetic steps
in actual operation." (Id.) However, there is a
factual dispute regarding whether a POSA would be able to
determine, with reasonable certainty, which two steps of the
reaction are the "two kinetic steps" cited in the
states that all of the steps in an enzymatic reaction, such
as depicted in Figure 32 of the patent, are kinetic steps,
but that the two kinetic steps
exhibited by the reaction are
"two or more kinetically observable or slow steps,"
or those that "will contribute to the kinetics of the
reaction." (Id. at 4-5; see also Tr.
at 129; '056 patent at 26:22-27, 26:54-57) In other
words, PacBio contends that the claims "are not
concerned with the total number of possible kinetic steps . .
., but only whether the enzyme 'exhibits' two
steps." (D.I. 156 at 5) PacBio further argues that a
POSA may make this determination by simply observing the
reaction and plotting it on a probability density for
residence time graph, such as the one in Figure 33. (See
Id. at 6) Citing Dr. McHenry's declaration, PacBio
contends that "[i]f the enzyme exhibits a peaked double
exponential curve .. ., then a [POSA] would understand that
the enzyme 'exhibits' two kinetic steps with rate
constants within the ratio of 10:1 to 1:10," but
"[i]f the enzyme exhibits a single exponential curve,
then it does not." (Id. at 7)
points out, the phrase "kinetic step" does not
appear in the specification, and the description of Figure 33
in the patent does not use the term "kinetic steps"
nor does it specify a ratio of rate constants. (See
D.I. 188 at 5-6) ONT also notes that, at his deposition, Dr.
McHenry was not able to determine with reasonable certainty
whether there would be infringement when in the "gray
area" between a single exponential curve and a
bell-shaped curve. (See Id. at 6; D.I. 133-1 at
189-92) ONT's contentions implicate factual disputes,
including whether the infringing ratio can be determined with
context of the patent, the term "kinetic steps" has
both broad and narrow meanings. The patent often uses the
word "kinetic" narrowly with "slow" or
"observable" (see, e.g., '056 patent
at 24:35-36, 25:12-13, 26:23-24, 26:41-66), noting that
"[f]or the current invention, the slow, or kinetically
observable steps, need not be the slowest step or the
rate-limiting step of the reaction" (id. at
26:63-66). PacBio asserts that all steps in the reaction are
kinetic steps (see Tr. at 129), so its expert coined
the phrase "two dominant kinetic steps" to refer to
the "important" steps discussed in the claim
element at issue (see, e.g., D.I. 125-4 at 12).
ONT's IPR petition referred to different steps for
different references, sometimes referring to the fastest
steps as one of the two kinetic steps. (See D.I. 188
at 8; D.I. 125-6) The newly-produced document also refers to
kinetic steps more broadly, as it discusses changing the
distribution of events by "either adding in additional
kinetic steps or by altering the rates of existing kinetic
steps." (D.I. 157-1 at 2)
on the foregoing, the Court concludes that the claim is
referring to a particular pair of "two kinetic
steps." The patent often uses the word
"kinetic" to refer to the particularly slow and
observable steps, though not necessarily the two slowest
steps. The parties' arguments, and much of the evidence,
discuss "kinetic steps" more broadly to relate to
all of the steps in the reaction. With this being the state
of the record, the Court, on further consideration, is unable
to find that ONT has proven by clear and convincing evidence
that a POSA would lack reasonable certainty as to the
"kinetic steps" of the claim. Further proceedings
will be necessary to resolve this indefiniteness dispute.
present record also now leaves the Court uncertain as to
whether a POSA would need to be able to identify the two
kinetic steps in the reaction in order to assess
infringement. PacBio argues that the ratio of rate constants
of the two kinetic steps and, therefore, infringement, can be
determined without isolating the two kinetic steps and
without knowing the value of their rate constants.
(See Tr. at 146-48) While Dr. McHenry opines that
the kinetics of the claimed system "necessarily results
in behavior as described by Fig. 33" (D.I. 125-4 at 10),
he does not clearly opine (despite PacBio's
attorneys' insistence) that observation of a peaked
double exponential curve necessarily results in a ratio of
rate constants between 10:1 and 1:10. While ONT's expert
agrees that "one can know the ratio without knowing
individual values," he (like Dr. McHenry) also does not
explain how the ...