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.
Judge Sorokin construed claim terms in a dispute over stencil printing screens for electronics manufacturing. While the particular constructions of the terms is of limited interest to those not involved in the litigation, the process by which the claims were construed is potentially worthwhile for future litigants to know. Here, Judge Sorokin made a point of not reading limitations from the specification into the claims. He noted that “the written description part of a specification itself does not delimit the right to exclude,” and that the specification did not expressly limit the terms in dispute. He further refused to limit a broad claim terms because “the court cannot construe a claim to add a limitation not present in the claim itself” and because such a limitation would render claim language in a related patent superfluous.
Judge Gorton issued a claim construction order in a case involving allegations that ACCO’s Swingline Quick Touch Full Strip and Quick Touch Compact staplers.
In virtually each instance, Judge Gorton refused to read limitations into the claims and sided with Amax. Of particular interest, Judge Gorton declined to consider whether the claims were indefinite at the claim construction phase of the litigation; as a part of this, it appears that Judge Gorton laid out an outdated legal standard for proving indefiniteness. Under the Supreme Court’s 2014 Nautilis decision, indefiniteness exists if a patent’s claims, “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Judge Gorton’s analysis, however, asserted that ACCO must show that a “skilled artisan could not discern the bounds of the claim,” and that to be found indefinite, “the claim must be ‘insolubly ambiguous,’” citing to the Federal Circuit’s pre-Nautilis 2008 Halliburton Energy decision. It should be interesting to see how this issue progresses.