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 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.