DUSA Pharmaceuticals, Inc. v. Biofrontera Inc. et al. (18-cv-10568).

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.

Crane Security Technologies, Inc. et al. v. Rolling Optics AB (14-cv-12428).

Crane sued Rolling Optics, asserting infringement of five patents relating to micro-optics systems that project synthetically magnified images. They accuse Rolling Optics of infringing directly and inducing infringement through sales of micro-optic foils that are formed into 3-D holographic-style labels.  The patents cover planar arrays of image icons and focusing elements, with an optical spacer or substrate therebetween.  Judge Sorokin ruled in Crane’s behalf on a series of summary judgment motions filed by the parties.  He denied Rolling Optics’ argument that two claim terms were indefinite, finding that the claims, specification and prosecution history provided enough specificity to survive.  Instead, he sua sponte granted summary judgment that the terms are definite, despite Crane not having so moved, noting that the briefing provided adequate notice to Rolling Optics, there was ample discovery on the issue, and there were no factual disputes relevant to the issue.  Judge Sorokin denied summary judgment of invalidity over prior art, in part because assumptions of Rolling Optics’ expert regarding spacing of critical elements taken from figures in the prior art were disregarded because the prior art figures were not drawn to scale.  While finding the patents in suit were not entitled to claim priority to a provisional application that was not specifically referenced in the patent applications, Judge Sorokin denied summary judgment of invalidity due to the on-sale bar due to the existence of fact issues relating to whether potentially prior uses were experimental or were on-sale bars.  Summary judgment of infringement was granted as to certain products that Rolling Optics failed to provide evidence of non-infringement due to the low volume of potentially infringing sales, and as to other products on which Rolling Optics’ claim construction arguments did not prevail.  Rolling Optics’ motion for summary judgment was denied with respect to induced infringement, because the evidence laid forth a factual dispute over whether Rolling Optics knew that labels it sold were being applied to products sold in the United States.  Finally, Judge Sorokin found factual issues in dispute regarding the language of an early notice letter regarding the patents and denied Rolling Optics’ motion for summary judgment with respect to notice and damages.

Sunrise Technologies, Inc. v. CIMCON Lighting, Inc. (15-cv-11545).

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.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (15-cv-13099).

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.

Amax, Inc. v. ACCO Brands Corporation (16-cv-10695).

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.

Swingline Stapler

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.