Judge Sorokin construed claim terms in this suit involving patents covering total knee replacement implants having cam and post designs. He first construed “cam” to mean “a structure that makes sliding or rolling contact with the tibial post as the knee bends.” He rejected MedIdea’s argument that the term would be discussed extensively at trial in a way that would permit the jury to discern the plain and ordinary meaning of the term, finding “cam” to be a critical term with which a lay jury would be unlikely to be familiar; moreover, it is the Court’s exclusive obligation to construe patent terms. He likewise construed related terms for which MedIdea suggested not construction was needed, indicating that the court is required to construe terms on which the parties disagree. He construed “cam mechanism” to require two or more cams, because the specification criticized one-cam structures and repeatedly referenced multiple cams. Judge Sorokin further agreed with DePuy that “early after initiation of flexion” of the knee should be construed as “prior to 30 degrees of flexion” rather than MedIdea’s proposed 60 degrees of flexion, as MedIdea’s number appeared to lack intrinsic or extrinsic support, while DePuy’s corresponded to the degree of flexion in prior art that was criticized in the patent. Finally, he refused to consider the definiteness of the terms “central cam” and terms using “superior” and “inferior,” finding that determination to be more suitably made on a fuller record at summary judgment.
NeuroGrafix accused Brainlab of infringing its U.S. Patent No. 5,560,360, which covers methods of imaging neural tissue to distinguish anisotropic nerve tracts in which water can diffuse along the length of the nerve tract but not perpendicularly to the nerve tract. A number of method claims were asserted, including a single independent claim. Brainlab sought summary judgment of non-infringement based in part on its chosen interpretation of two claim limitations – exposing a region that includes a selected structure that includes both anisotropic and non-anisotropic tissue to a magnetic polarizing field, and generating a data set that distinguishes the two structures. Brainlab contended that it cannot target the required “selected structure” because until the data is obtained, one cannot know where the anisotropic structure is, arguing that the ‘360 patent is directed to improved imaging of peripheral nerves, and that therefore the “select structure” must be limited to peripheral nerves, which Brainlab’s accused product does not track. Brainlab also asserted that its accused product does not distinguish anisotropic structure from non-anisotropic structure as required by the claims, because it does not permit the user to enter an FA Threshold value of zero, which would correspond to tissue that does not exhibit diffusion anisotropy. Judge Stearns determined that, while the motivation described for the invention was the improvement of peripheral nerve imaging, this motivation standing alone is insufficient to limit the scope of the claims. He cited language in the specification that referred to distinguishing anisotropic tissue from other structures that do not exhibit anisotrophy as referring to distinguishing tissue that had levels of anisotrophy low enough to be insignificant for imaging purposes as opposed to having an absolute absence of anisotrophy. He also criticized Brainlab’s attempt to draw limitations from dependent claims into the independent claim, the opposite of the principle of claim differentiation.
Despite ruling in NeuroGrafix’s favor on the disputed claim terms, Judge Stearns ultimately granted summary judgment of non-infringement to Brainlab. NeuroGrafix’s allegations were that Brainlab induces infringement, with the direct infringement occurring when the user images the pyramidal tract in the brain. Judge Stearns found that, depending on the purpose of the physician in imaging a patient, the accused product is capable of both infringing and non-infringing uses. Mere capability of infringement, however, is insufficient to establish liability, and NeuroGrafix could point to no record evidence that any physician had ever actually used the product in a manner that would infringe. Judge Stearns distinguished cases where direct infringement could be inferred by instructions that not only described the infringing mode, but taught or encouraged it; the marketing material for the accused product did note the possibility of delineating the pyramidal tract, but did not teach the particular settings to achieve this. Accordingly, Brainlab’s motion for summary judgment of non-infringement was allowed.
Judge Stearns construed a number of claim terms in this dispute in which Egenera accused Cisco of infringing U.S. Patent 7,231,430 (Egenera had previously voluntarily dismissed claims relating to a second patent, to avoid the case being stayed pending inter partes review of the second patent). The technology at issue relates to the creation of a virtual processing area network that simulates a network of computer processors. Judge Steans rejected Egenera’s proposed construction of “processor” as the “processing node” described in the specification, because the specification does not clearly set forth a definition of the term that is different from its plain and ordinary meaning. He also rejected Egenera’s proposed construction of “logic” as “software, firmware, circuitry, or some combination thereof.” Instead, he found “logic” as used in the claims to refer to the abstract concept of computer operations generally that perform the function recited after the term, and thus to be in means-plus-function format. Having so determined, however, he disagreed with Cisco that the terms were indefinite, finding sufficient structure in the specification for the various “logic” functions recited in the claims. Finally, he found in Egenera’s favor on “internal communication network,” determining that even though the network is described as emulating Ethernet functionality, the claimed network is not limited to a non-Ethernet physical network.
ACQIS alleges that EMC infringes eleven ACQIS patents relating to modular computer systems in which computer modules can be removed from one console (keyboard, mouse, display and disk drive) and inserted into another to form a complete personal computer. The case was initially filed in the Eastern District of Texas along with three related lawsuits against different defendants, and disputed claim terms were construed prior to the case being transferred to Massachusetts. The case was then stayed pending inter partes review of three of the asserted claims, all of which survived. Judge Burroughs noted that the prior Markman opinion, issued by the Texas court, was entitled to “reasoned deference,” but indicated that she could revisit and alter constructions as the court’s understanding of the technology evolves. Judge Burroughs then looked to the IPR proceedings with an eye on preventing the patentee from recapturing, through a broader construction, specific meanings that were disclaimed during the IPR proceedings. With respect to the term “PCI bus transaction,” which had previously been construed to require information in accordance with the PCI Standard but not necessarily to require a PCI bus, Judge Burroughs found that ACQIS’ argument in IPR that a prior art reference did not meet this limitation because it contained “no PCI bus” did not constitute a clear and unmistakable disclaimer of a broader meaning based on later statements by ACQIS clarifying that the presence of a PCI bus was not dispositive of a PCI transaction, and that the analysis of prosecution history estoppel must take the prosecution into account “as a whole.” She construed a second term, on the other hand, more narrowly than had the Texas court because ACQIS had made “numerous and repetitive statements in the IPR’s” that clearly and unmistakably showed the term to be more narrow than it had previously been construed, resulting in disclaimer of the earlier, broader scope.
The court construed claim terms from eight asserted Philips patents relating to light emitting diode (LED) technology, many of which had been through inter partes review proceedings. (As with most Markman decisions, I do not intend to get into the actual constructions so much as the legal bases for the constructions, as I believe this would be of the most interest to future litigants in this district.)
Most of the contested claim limitations were means-plus-function limitations, with the arguments being related to the means disclosed to perform agreed-upon functions. Judge Casper refused to limit the means to preferred embodiments that included structure that was not necessary to perform the recited function. Phrased another way, she refused to import additional limitations from an embodiment into the construction. Judge Casper refused to construe two term on which a construction had been sought by WAC, seemingly in contravention of many district court judges who view the Federal Circuit’s O2 Micro v. Beyond Innovation decision as compelling a construction whenever one is sought. Also of note, Judge Casper cited to case law from other districts holding that the PTAB’s constructions made in an inter partes review are persuasive authority, and she adopted constructions made by the PTAB throughout the order; she did not, however, refuse to construe terms that the PTAB had not construed, although it is unclear from the order whether construction of these terms was sought during the IPR.
Judge Gorton construed nine terms of asserted U.S. Patent 7,825,793. The patent allows for remote monitoring and control of household or building parameters, including security systems, fire alarm systems, heat, air conditioning, and other utilities, by relaying information, via ZigBee signals, from a monitoring device at the location to a remote end user through a node (or multiple nodes) mounted on a utility pole. Many of CIMCON’s proposed constructions were rejected as reading out embodiments from the specification, most notably rejecting a proposed “mechanism that activates process control equipment” construction for the term “actuator” because the claim requires the actuator to “interact with” the parameter at issue in the location, and embodiments in the specification made it clear that “interact with” includes monitoring as well as controlling. Judge Gorton refused to construe several terms, finding that the presumption that a term has its plain and ordinary meaning to one of skill in the art had not been overcome. Finally, he refused to determine whether one term was indefinite, both because the argument relied on a construction of a related term that was not adopted and because indefiniteness is inappropriate at the Markman stage and is better left for summary judgment.
Judge Saylor issued a claim construction order in this case, which involves three patents relating to abuse-deterrent and low-toxicity versions of oxycodone. The claims relating to deterrence of abuse required the inclusion of an irritant in an amount sufficient to impart an irritating sensation. Collegium first sought to require the irritant be something deliberately added to the composition for the purpose of causing irritation – in other words, that would not cover ingredients added for other purposes that happened to also be irritants. This construction was denied as improperly importing an element of intent into the claims, although Judge Saylor did note that, during prosecution, Purdue had disclaimed instances where the other recited ingredients (drug, release carrier, excipient) could also serve as the irritant, thus reducing the broadness of the scope from that sought by Purdue. Judge Saylor refused to find the term “effective amount” indefinite, finding that the term has a customary usage to a person of ordinary skill in the art and that examples were provided in the specification, providing an objective baseline through which the term would be understood. Finally, with respect to reduced toxicity, Judge Saylor rejected Collegium’s arguments that “removing” a particular impurity should be limited to removing only that particular impurity and removing it completely, as being inconsistent with the usage of the term in the specification.