After Plastipak accused Ice River of infringing ten patents relating to manufacturing lighter-weight plastic bottles, Ice River asserted that four limitations, present in some or all of the asserted claims, were indefinite. Judge Talwani disagreed, finding that the claims and specification adequately defined the meets and bounds of each term.
Ice River sought a finding that the term “neck portion” was indefinite because the claim language defined the portion as “including” several features but did not define where the neck portion began. Judge Talwani noted that the claims consistently indicate that the neck portion extends upwardly from a lower portion, and found the specification and figures resolved any possible ambiguity by clarifying that the neck portion did not extend below the support flange. She further noted that this limitation had been found definite in litigation against a different company by the Eastern District of Virginia, and refused to interpret the term to encompass more based on extrinsic evidence describing generic bottles, finding that Plastipak had acted as its own lexicographer in defining the term in the specification. Interestingly, Plastipak had itself initially included a portion of the bottle below the flange as a part of the neck portion in an initial patent-related disclosure filed in this litigation, and subsequently amended the disclosure to exclude the portion below the flange. Ice River asserted that this showed that Plastipak itself couldn’t discern the meets and bounds of the term, but Judge Talwani discounted it as a mistake, likely made not by Plastipak but instead by its counsel, and noted that it had been corrected without reliance or benefit on the initial disclosure.
Judge Talwani found the term “the filling occurring substantially adjacent to where the container is formed” to be definite, rejecting Ice River’s assertion that the specification must provide specific, measurable limitations to describe “substantially adjacent.” She noted that the specification described “conventional ‘blow-and-fill’ operations, including those in which a container is filled just after formation… in close proximity to where the container is formed,” which could be a single integrated machine or two machines “that are adjacent or in close proximity to one another.” This was distinguished from other conventional methods in which the formed bottles are shipped to a separate location to be filled. As these conventional methods are well-known in the art, the terms is sufficiently definite.
Finally, Judge Talwani determined that two other terms relating to portions of the bottle were, while “not a testament to clarity,” sufficiently spelled out in the specification to survive an indefiniteness challenge.
Intellectual Ventures accused NettApp’s MetroCluster Fabric Attached systems of infringing U.S. Patent No. 6,516,442, which covers aspects of symmetric multi-processor types of computer architecture by which multiple processors share a common operating system and memory. Each asserted claim required certain components of the system to “perform error correction of the data in the packets exchanged over the channels.” NettApp asserted that the MetroCluster products, which allow for continuous back-up of data to separate locations, do not satisfy this “error correction” limitation, as the term had been construed. Judge Saris granted NettApp’s motion for summary judgment of non-infringement. She had construed the term to mean “correcting errors in data by at least reconstructing erroneous data,” rejecting Intellectual Ventures proposal that the term be construed broadly enough to encompass the correction of errors using a retry request. The MetroCluster systems break down data packets into sub-packets, to which an error detection code is appended. The system discards data in which an error is detected and then retransmits the data. Once the correct data has been received, the system puts the sub-packets back together into a complete packet. Intellectual Ventures asserts that this re-assembly of the sub-packets into full packets satisfies the “reconstruction” aspect of the limitation; Judge Saris disagreed, however, finding that her construction of the “error correction” limitation unambiguously excluded a system that exclusively addressed errors through a retry procedure. She also noted that the reassembly process utilized by the MetroCluster systems was not a part of handling errors, as such reassembly occurs whether an error is detected or not.
Judge Hillman issued a claim construction order in this litigation involving tamper-resistant plastic food containers. The patents specifically describe the incorporation of a non-replaceable strip that must be severed before the cover could be removed from the container. In addition to construing seven different terms from the asserted patents, Judge Hillman addressed Lacerta’s assertions of indefiniteness involving several terms of degree, including “at least in part,” “relatively inaccessible,” and “tamper evident bridge.” Noting that such terms are not indefinite where the specification provides sufficient certainty to one of skill in the art, when read in the context of the invention, to identify the metes and bounds of the claim. He rejected Lacerta’s argument that “at least in part” was indefinite for failing to identify what else in addition to the “at least” components could form the relevant structure, noting that in such a circumstance, the claim would cover any structure incorporating the specified components. Judge Hillman rejected Lacerta’s argument that “relatively inaccessible” should be deemed indefinite because the Canadian Patent Office had so found in a related prosecution, noting both that the decision of the Canadian office is not binding on a U.S. court and that he disagreed with the Canadian decision because the specification identified the structures used to render the subject component inaccessible. Finally, he rejected Lacerta’s argument that “tamper evident bridge” was indefinite because it had no antecedent basis and was added during prosecution. Judge Hillman found that the claim itself provided sufficient detail to be definite, despite its not having been a part of the original claim language.
MedIdea accused DePuy of infringing four patents related to knee replacements in Illinois, with the case transferred to Massachusetts in light of the TC Heartland decision. MedIdea conceded non-infringement on all but one claim following claim construction. In November, Judge Sorokin granted DePuy summary judgment of non-infringement on the sole remaining claim, finding that the claims as construed required multiple cam surfaces that were absent in the accused knee prosthetics. Judge Sorokin further construed the claim over MedIdea’s objection, finding that MedIdea’s post-construction amended contentions created issues that required further construction of the claim, and that in any event if the infringement issue related to a claim construction issue that the court had not yet resolved, the court was duty-bound to construe the term. He then determined that, while the claim itself did not so require, the intrinsic evidence taken as a whole required the claimed “points of cam action” to mean “convex surfaces,” in part because every embodiment of the specification showed convex cam surfaces. He acknowledged that this, standing alone, is not sufficient to so limit the claims, but found this fact to still have a bearing on the construction of the term, and that, combined with statements made by MedIdea in both the prosecution of the patents and in their initial complaint and contentions filed in the litigation (and since abandoned for MedIdea’s current theory of infringement), the claims should be so construed. In particular, in an IPR proceeding on the patents-in-suit. MedIdea characterized the “disclosed and claimed invention” as having points of cam action with convex surfaces – the use of “disclosed and claimed invention” estopped any argument that MedIdea was discussing only non-limiting examples. Notably, Judge Sorokin did not place any estoppel on DePuy based on their statements made in the IPR, because as the non-patentee, their statements did not become a part of the prosecution history of the patents and because their positions were not adopted by the Board and thus did not create a judicial estoppel situation.
MedIdea conceded that, under this claim construction, the accused prosthesis lacks multiple convex cam surfaces and thus does not infringe, resulting in summary judgment in favor of DePuy. Judge Sorokin subsequently entered final judgment of non-infringement and dismissed DePuy’s counterclaims without prejudice.
Judge Stearns issued a claim construction order construing terms of the asserted patents, and addressed indefiniteness arguments urged by Biofrontera. The technology is directed to treating cancer by administering photoactive agents that accumulate in the tissue to be treated, and then exposing the tissue to visible light that causes the photoactive agent to chemically or biologically change and attack the target tissue in which it has accumulated. Biofrontera sought to have “illuminator” construed to require a light source that generally conforms to a contoured surface, asserting that DUSA’s specification disavowed flat illuminators by (a) consistently referring to the “present invention” as an illuminator conforming to a contoured surface; (b) including no non-contoured embodiments, and ascribes the improved performance of the claimed invention to the contoured surface of the illuminator; and (c) disparaging flat surface illuminators. Noting that there was no argument that DUSA acted as its own lexicographer, Judge Stearns determined that there was sufficient evidence to the contrary to prevent Biofrontera from meeting the “exacting” standard for a finding of disavowal. He noted that the specification provided objectives that did not require a contoured shape, and provided ways other than contouring to obtain the desired results.
Judge Stearns also determined that the phrase “all operation distances” was not indefinite. Biofrontera had argued that the specification provided no guidance on this, but Judge Stearns found that reference to a lower and upper limit in the specification set the range of distances with reasonable clarity. He rejected Biofrontera’s claim differentiation argument, noting that while a dependent claim specified the range, claim differentiation cannot be used to broaden a claim beyond its correct scope.
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.