Omni Continuum LLC v. MKT Photonics Inc. et al. (D. Mass. 24-cv-11007).

Omni asserted that NKT infringes a pair of patents related to lasers that operate over broader spectrums of light.  NKT moved to dismiss the claims as to one of the asserted patents.  The sole asserted claim in includes a limitation reciting a laser diode capable of generating a pump signal having a pulse width of “at least 100 picoseconds.”  Both accused products include are asserted to include circuitry that permits the user to control the pulse width of the pump signal, thus making them “capable” of meeting the claim limitation.

Judge Talwani denied NKT’s motion to dismiss.  The parties had proposed differing constructions of the limitation in their motion and opposition.  Judge Talwani noted that there is no blanket prohibition on construing patent claims at the motion to dismiss phase, but that case-specific circumstances may render construction improper at that early stage.  Where construction is improper, courts must (for the purpose of adjudicating the motion to dismiss only) adopt the non-movant’s claim construction.

Here, NKT says that Omni’s original complaint identified the claim’s “pump signal” as “master oscillator pulses,” but then changed the identification in an amended complaint.  Judge Talwani declined to consider the earlier pleading, as an amended complaint supersedes the original, which ceases to have any effect.  She noted caselaw cited by NKT from other jurisdictions that supported considerations of earlier-pled facts (where they are directly contradictory to those of the operative complaint), but no First Circuit caselaw to that effect was identified.

Judge Talwani further determined that it was premature to construe the disputed claim term absent discovery and claim construction briefing.  The parties contest whether the limitation can be met by a combination of components in the accused lasers or must be met by only the pump signal originally generated by the laser diode.  Accordingly, and adopting Omni’s proposed construction for the purposes of the motion, Judge Talwani declined to dismiss the claim.  The denial was without prejudice, meaning NKT could re-raise the issue following claim construction.