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