TSI Incorporated v. Azbil BioVigilant Incorporated

Filing 123

ORDER re 100 Memorandum filed by TSI Incorporated, 98 Memorandum filed by Azbil BioVigilant Incorporated. Signed by Judge David G Campbell on 3/19/2013. (NVO)

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1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 TSI, Incorporated, a Minnesota Corporation, No. CV12-0083-PHX-DGC ORDER 10 Plaintiff, 11 v. 12 Azbil BioVigilant, Inc., a Delaware Corporation, 13 Defendant. 14 15 16 The Court held a Markman hearing on March 18, 2013. This order will set forth the Court’s rulings. A. 17 18 Plaintiff TSI, Incorporated asks the Court to construe two phrases from Claims 1, 19 17, and 20 of the ‘279 Patent: “operative to excite biomolecules contained therein to 20 produce fluorescence,” and “so as to excite biomolecules contained in a contacted 21 particle to produce fluorescence.” Doc 101-1 at 30, 31. TSI asks the Court to construe 22 the first phrase to mean “operative to excite intrinsically fluorescing biological molecules 23 native to the contacted particles to produce fluorescence,” and the second phrase to mean 24 “so as to excite intrinsically fluorescing biological molecules native to a contacted 25 particle to produce fluorescence.” The Court agrees with TSI’s proposed construction. 26 Claim 1 includes “a solid state excitation source” that contacts “particles or the 27 particle population” and “is operative to excite biomolecules contained therein to produce 28 fluorescence.” Id. at 30 (emphasis added). This statement makes clear that the 1 biomolecules are contained within the particles contacted by the light source. The 2 language cannot reasonably be read to include a biomolecule or other substance outside 3 of the particle or a non-biomolecule artificially introduced into the particle. Nothing in 4 the claim language or the specification suggests such artificial introduction. Thus, the 5 Court concludes that the claim clearly refers to biomolecules that naturally are contained 6 within the particle contacted by the light source. Claim 17 contains virtually identical 7 language. Id. Claim 20 is even more specific, referring to “biomolecules contained in a 8 contacted particle.” Id. at 31. 9 Other language in the ‘279 Patent supports this conclusion. Language in the 10 background section explains that a light source is used to detect “a specific biomolecule 11 present only in bio-viable particles.” Id. at 23. The use of the word “only” suggests that 12 the patent applies to biomolecules naturally occurring with such particles, not 13 biomolecules artificially introduced into such particles and therefore not “present only” in 14 the particles. The background section goes on to discuss a biomolecule, NADP, that is 15 contained in “[m]ost living cells.” This reference, and the language that follows, clearly 16 shows that the biomolecule occurs naturally within the living cells. 17 The patent later refers to use of a laser to “detect biomolecules in particles of 18 interest.” Id. at 29 (emphasis added). This reference, and various references to “intrinsic 19 fluorescence” in particles, again confirms that the patent is focusing on biomolecules 20 already contained within particles of interest. Id. 21 Finally, the ‘279 patent specifically incorporates the ‘012 Patent. Id. at 2. The 22 ‘012 Patent, in turn, clearly teaches away from tagging, stating that “fluorescent tagging 23 is not practical for aerosol sampling as one cannot tag all the incoming airborne particles 24 on a real-time basis.” Doc. 101-3 at 12. The ‘012 Patent further states that “[t]he 25 invention arises from the discovery that a single particle, compromising one or more 26 biological cells, bacteria or spores, contains sufficient intrinsically fluorescing biological 27 matter (biomolecules) to enable one to establish whether the particle is viable 28 (biologically alive), and thus potentially hazardous.” Id. at 12-13. This statement, -2- 1 consistently with the other statements discussed above, clearly shows that the excited 2 biomolecules at issue in both patents are those naturally occurring within biological 3 matter and that fluoresce upon contact with a laser. 4 Thus, the Court construes the disputed language in Claims 1 and 17 to mean 5 “operative to excite intrinsically fluorescing biological molecules native to the contacted 6 particles to produce fluorescence.” 7 Claim 20 to mean “so as to excite intrinsically fluorescing biological molecules native to 8 a contacted particle to produce fluorescence.” 9 B. The Court construes the language at issue in 10 Defendant Azbil Bio Vigilant, Inc. (“BioVigilant”) argues that several phrases in 11 Claims 1, 17, and 20 – “viable biological particles,” “biologically viable … particles,” 12 “biologically viable particle,” and “particle is biologically viable” – should be construed 13 to mean “biologically alive” particles. TSI argues that no construction of these phrases is 14 necessary. Similarly, BioVigilant argues that the phrases “biologically inert particles” 15 and “inert particle” in these same claims mean particles that are “not biologically alive.” 16 TSI again argues that no construction is necessary. 17 The discussion at the Markman hearing made clear that construction of these terms 18 is necessary. The parties vigorously disagree on the meaning of “viable” and its corollary 19 “inert.” The parties intend to make various arguments to the jury depending on how 20 these words are construed. 21 construction is necessary because these phrases will not be at issue during trial. Thus, the Court cannot accept TSI’s argument that no 22 Nor can the Court accept TSI’s suggestion that these phrases be construed at the 23 close of trial. Claim construction is necessary for the parties to produce relevant expert 24 reports, file relevant motions for summary judgment, and prepare relevant evidence and 25 arguments for trial. 26 evidence of the patent, as well as such extrinsic evidence as is appropriate under Federal 27 Circuit case law. The largely factual and opinion testimony to be given at trial will not 28 necessarily shed light on this claim-construction task. Moreover, claim construction must be based on the intrinsic -3- 1 The Court agrees with BioVigilant’s proposed construction. Indeed, TSI has not 2 produced an alternative construction of the words “viable” and “inert.” TSI instead urges 3 the Court to make no construction. 4 Language from the ‘279 Patent makes clear that references to “viable biological 5 particles” mean living biological particles. The background section states that intrinsic 6 fluorescence of biological matter can be used “to enable one to establish whether the 7 particle was viable (biologically alive), and thus potentially hazardous.” Doc. 101-1 at 8 23. The example section states that “[t]he rate of increase of fluorescence using the 9 Nichia laser roughly paralleled that of live particles.” Id. at 27. Statements by the 10 inventor of the ‘279 Patent and TSI’s expert similarly equate viable particles with living 11 particles. See Docs. 99-8 at ¶ 44, 99-9 at ¶ 4. 12 The language in Claims 1, 17, and 20 also make clear that an inert particle is the 13 opposite of a viable particle – the patent uses a microprocessor to make comparisons and 14 establish “whether that particle is a biologically viable particle or an inert particle.” Id. at 15 30, 31. If a viable particle is an alive particle, then an inert particle would be one that is 16 not alive. This interpretation is consistent with TSI’s repeated reference to inert particles 17 as dust, engine exhaust, and water droplets. See Docs. 99-8 at ¶ 45, 99-9 at ¶ 5. 18 19 20 The Court construes “viable” in Claims 1, 17, and 20 as meaning “alive.” The Court construes the word “inert” in those claims as meaning “not alive.” C. 21 Claim 1 of the ‘279 Patent includes “a photon counter for measuring the intensity 22 of fluorescence emitted from each contacted particle and producing a signal indicative 23 thereof.” Id. at 30. Claim 18 states that “the intensity measuring means comprise a 24 photon counter.” Id. TSI contends that the phrase “photon counter” should be construed 25 to mean “a photon detector such as a PMT.” BioVigilant asserts that “photon counter” 26 should be construed as a “device that counts photons.” 27 Words of a claim are generally given their ordinary and customary meaning, 28 which is the meaning the term would have to a person of ordinary skill in the pertinent art -4- 1 at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2 2005) (en banc). 3 something that counts. A “photon counter,” therefore, would be something that counts 4 photons. The ordinary and customary meaning of the word “counter” is 5 In support of its argument that the phrase “photon counter” is not limited to a 6 device that counts photons, TSI points to the following sentence in the ‘279 patent: 7 “Fluorescence is detected using a photon counter such as a PMT.” Doc. 101-1 at 25. The 8 parties appear to agree that a PMT is a photomultiplier tube, and that some PMTs count 9 photons while others do not. TSI argues that the ‘279 Patent, by identifying a PMT as a 10 type of “photon counter,” makes clear that a photon counter can be a device that counts 11 photons or a device that does not. Given that some types of PMTs count photons, 12 however, a more natural meaning of the phrase is that photon-counting PMTs are an 13 example of a kind of “photon counter” described in the patent. Stated differently, the key 14 phrase to be construed – “photon counter” – has a plain and ordinary meaning that is not 15 altered by reference to an example – “such as a PMT” – that itself can be configured to 16 count photons. 17 TSI argues that the very next sentence in the ‘279 Patent refers to “the Ho 18 Patents,” a reference to, among others, the ‘012 Patent that in turn makes clear that 19 photon-counting and non-photon-counting devices can be used. Doc. 101-3 at 7-15. But 20 when the relevant diagram in the ‘012 Patent distinguishes between photon-counting 21 devices and non-photon-counting devices, it refers to them, respectively, as a “photon 22 counter” and an “integrator for amplitude.” Id. at 7, Fig. 6. Thus, the phrase “photon 23 counter” in the ‘012 Patent appears to mean a device that counts photons. Although the 24 text expands on the phrase by referring to a “photon pulse counter” (Id. at 15), the ‘012 25 Patent does not clearly suggest that the phrase “photon counter” also applies to non- 26 photon-counting devices. 27 TSI argues that the use of a “photon counter” described in Claim 1 is “for 28 measuring the intensity of fluorescence emitted from each contacted particle.” Doc. 101-5- 1 1 at 30. TSI agreed at the Markman hearing, however, that a photon-counting device 2 does just that. Thus, the fact that the device is to be used for measuring the intensity of 3 fluorescence does not make clear that the “photon counter” referred to does something 4 other than count photons. 5 Finally, the Court notes that the ‘279 Patent, in Claim 20, refers to a “detector to 6 measure the intensity of fluorescence from the contacted particle.” Id. at 31 (emphasis 7 added). Thus, the authors of the ‘279 patent were familiar with the word “detector” and 8 used it in one of the specific claims. The fact that the authors chose not to use the word 9 in the phrase “photon counter” appearing in Claims 1 and 17 must be regarded as a 10 deliberate choice that argues against TSI’s construction of “photon counter” as a “photon 11 detector” such as a PMT. 12 13 14 The Court construes the phrase “photon counter” in Claims 1 and 18 to mean “a device that counts photons.” D. 15 Claim 17 of the ‘279 Patent includes a “means for measuring the intensity of 16 fluorescence emitted from each particle and producing a signal indicative thereof.” Id. at 17 30. The parties agree that this term is a means-plus-function term governed by 35 U.S.C. 18 § 112 ¶ 6. The parties also agree that the function associated with this term is “measuring 19 the intensity of florescence emitted from each particle and producing a signal indicative 20 thereof,” but disagree as to the corresponding structure for this term. TSI argues that the 21 corresponding structure is “a photon detector such as a PMT, and equivalents thereof.” 22 BioVigilant contends that the corresponding structure is “a photo-multiplier tube 23 configured to count photons.” For the reasons described above with respect to the phrase 24 “photon counter,” the Court agrees with BioVigilant. 25 E. 26 BioVigilant claims that several phrases in the ‘279 Patent are indefinite. To 27 prevail on this argument, BioVigilant must present clear and convincing evidence that the 28 phrases are not amenable to construction or are insolubly ambiguous. Haemonetics Corp. -6- 1 v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010). 2 BioVigilant claims that “means for comparing” in Claim 17 is indefinite because, 3 although the ‘279 Patent clearly refers to a microprocessor, it fails to disclose the 4 algorithm that would be used by the microprocessor. The Court does not agree. The 5 algorithm in a patent may be expressed in any understandable terms including a 6 mathematical formula, prose, a flow chart, or in any other manner that provides sufficient 7 structure. Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1383 (Fed. Cir. 8 2011). The patent need only disclose sufficient structure for a person of skill in the field 9 to provide an operative software program for the specified function. Id. 10 The description in the ‘279 Patent satisfies this requirement. Claim 17 states that 11 the required “means” is used to compare each particle’s fluorescence intensity signal 12 against predetermined criteria. Thus, the microprocessor is to compare the intensity of 13 the signal received from the photon counter against predetermined criteria such as the 14 background. 15 “whether that particle is a biologically viable or an inert particle.” Id. at 30. This 16 determination obviously is made on the basis of whether the measured signal is greater 17 than or equal to the predetermined value. Claim 17 goes on to say that the microprocessor thereby establishes 18 The process is explained in greater detail earlier in the ‘279 Patent: “a 19 microprocessor compared each contacted particle’s fluorescent intensity signal against 20 predetermined criteria for establishing whether that particle is a biologically viable 21 particle or an inert particle.” Id. at 25. This is not a complicated process. Two values 22 are compared, and the device reports whether one value exceeds the other. A person of 23 ordinary learning in the field could readily write computer code to accomplish this 24 function. BioVigilant has not shown by clear and convincing evidence that the “means 25 for comparing” in Claim 17 is indefinite. 26 BioVigilant also argues that the reference to “a wavelength above about 320 nm” 27 in Claims 1 and 17 is indefinite. The Court does not agree. The phrase clearly specifies 28 wavelengths above 320 nm, and the word “about” merely recognizes that the precise -7- 1 wavelength of the laser may vary somewhere around 320 nm. BioVigilant argues that the 2 phrase has no upper bound, but the sentence goes on to say that the laser must be 3 “operative to excite biomolecules contained therein to produce fluorescence.” Id. at 30. 4 Thus, the entire phrase refers to a laser with a wavelength above approximately 320 nm 5 and within the range sufficient to excite biomolecules to produce fluorescence. 6 BioVigilant has not shown by clear and convincing evidence that this phrase is indefinite. 7 Finally, BioVigilant argues that the phrase “contacting the laser beam and particles 8 of the population” in Claim 20 is indefinite. Id. at 31. Again, the Court does not find that 9 BioVigilant has met its burden of proof. The very next phrase in Claim 20 refers to “the 10 intensity of fluorescence from the contacted particle.” Id. It is evident from this phrase, 11 and from the context of Claim 20 and the ‘279 Patent generally, that the claim is referring 12 to particles in the relevant population that fluoresce after being contacted by the laser 13 beam. BioVigilant has not shown by clear and convincing evidence that the phrase in 14 question is indefinite. 15 Dated this 19th day of March, 2013. 16 17 18 19 20 21 22 23 24 25 26 27 28 -8-

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