XY, LLC v. Trans Ova Genetics, LC

Filing 272

ORDER the Court hereby ADOPTS Plaintiffs constructions of the disputed terms and phrases, by Judge William J. Martinez on 10/7/2014. (evana, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge William J. Martínez
Civil Action No. 13-cv-0876-WJM-BNB
XY, LLC,
Plaintiff / Counterclaim Defendant,
v.
TRANS OVA GENETICS, LC,
Defendant / Counterclaim Plaintiff,
v.
INGURAN, LLC,
Third Party Defendant.

ORDER ON CLAIM CONSTRUCTION

Plaintiff XY, LLC (“Plaintiff”) brings this action for patent infringement and breach
of contract against Defendant Trans Ova Genetics, LC (“Defendant”). (ECF No. 113.)
This matter is currently before the Court for construction of the disputed terms in eight
of the eleven patents at issue in this case.
I. LEGAL STANDARD
The fundamental purpose of a patent is to give notice to others of that in which
the inventor claims exclusive rights. Oakley Inc. v. Sunglass Hut Int’l, 316 F.3d 1331,
1340 (Fed. Cir. 2003). Thus, the focus of claim construction is ascertaining how a
reasonable competitor would interpret the actual claim language, not what the inventor
subjectively intended the language to claim. Id. at 1340-41. The words used in the

patent are evaluated by employing their “ordinary and customary meaning,” as would
be understood by a person of ordinary skill in the art at the time of the invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).
In attempting to give meaning to the inventor’s language, the Court “looks to
those sources available to the public that show what a person of skill in the art would
have understood disputed claim language to mean.” Id. at 1314. Among those sources
are: (i) the words of the claims themselves; (ii) the remainder of the patent’s
specification; (iii) the prosecution history of the patent; (iv) extrinsic evidence
concerning relevant scientific principles; (v) the common meanings of technical terms
used; and (vi) the state of the art at the time of the invention. Id. Terms must be
construed in light of the entirety of the patent, not just in the context of the particular
claim(s) in which they appear. Id. at 1313. In other words, claim language must be
read in conjunction with the more general and descriptive specification portion of the
patent; indeed, the specification is often “the single best guide to the meaning of a
disputed term.” Id. at 1315. Because the patent is examined as a whole, the Court
assumes that claim terms will normally be used consistently throughout the patent, and
thus, the meaning of a term used in one claim can illustrate the meaning of that same
term used elsewhere in the patent. Id. at 1314.
II. BACKGROUND
This case deals with Plaintiff’s patented technology for identifying and sorting
sperm cells by X or Y chromosome for the purpose of sex selection in the animal
breeding industry. (Second Amended Complaint (“SAC”) (ECF No. 113) ¶ 8.) Plaintiff

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owns 11 patents relevant to this action, which can be categorized as follows:
Nozzle Patents:
1.
No. 6,263,745 (“ ‘745 patent” or “ ‘745”) - Flow Cytometer Nozzle and Flow
Cytometer Sample Handling Methods (ECF No. 151-6)
2.
No. 6,357,307 (“ ‘307 patent” or “ ‘307”) - System and Method of Flow Cytometry
and Sample Handling (ECF No. 151-5)
3.
No. 6,604,435 (“ ‘435 patent” or “ ‘435”) - Low Acceleration Method of Flow
Cytometry (ECF No. 151-7)
4.
No. 6,782,768 (“ ‘768 patent” or “ ‘768”) - Flow Cytometer Nozzle (ECF No. 151-8)
Sheath Fluid Patents:
5.
No. 6,149,867 (“ ‘867 patent” or “ ‘867”) - Sheath Fluids and Collection Sy stems
for Sex-Specific Cytometer Sorting of Sperm (ECF No. 151-11)
6.
No. 6,524,860 (“ ‘860 patent” or “ ‘860”) - Methods f or Improving Sheath Fluids
and Collection Systems for Sex-Specific Cytometer Sorting of Sperm (ECF No.
151-10)
7.
No. 7,195,920 (“ ‘920 patent”, “ ‘920”, or “Cushioning” patent) - Collection
Systems for Cytometer Sorting of Sperm (ECF No. 151-9)
Cryo-preservation Patents:
8.
No. 7,713,687 (“ ‘687 patent” or “ ‘687”) - System to Separate Frozen-Thawed
Spermatozoa into X-Chromosome Bearing and Y-Chromosome Bearing
Populations (ECF Nos. 151-1 & 151-2)
9.
No. 7,771,921 (“ ‘921 patent” or “ ‘921”) - Separation Systems of Frozen-Thawed
Spermatozoa Into X-Chromosome Bearing and Y-Chromosome Bearing
Populations (ECF No. 151-3)
10.
No. 7,820,425 (“ ‘425 patent” or “ ‘425”) - Method of Cryopreserving Selected
Sperm Cells (ECF No. 151-4)
In-Vitro Fertilization Patent:
11.
No. 8,569,053 (“ ‘053 patent” or “ ‘053”) - In-Vitro Fertilization Systems with
Spermatozoa Separated Into X-Chromosome and Y-Chromosome Bearing
Populations (ECF No. 151-12)
Of the patents at issue here, the nozzle patents all share a specification and the sheath
fluid patents share a specification.
The technology at issue involves a process of sorting non-human mammalian
sperm cells by sex chromosome by passing them through a specialized flow cytometer.
(ECF No. 151 at 2-6.) The sperm cells are stained with a fluorescent dye so that the
3

different lengths of X and Y chromosomes will result in different amounts of
fluorescence emitted by each type of sperm cell. (Id. at 3.) The cells are deposited into
a nozzle surrounded by a sheath fluid, the nozzle separates the cells into individual
droplets that exit the nozzle separately, and a sensor applied to each droplet identif ies
the sex of the chromosome in each cell based on its fluorescence. (Id.) In order for the
sensor to properly differentiate the sperm cells based on the light they emit, the flatheaded cells must all be aligned in the same orientation to prevent variations in
fluorescence based on the angle or direction of the cell relative to the sensor. (Id. at 4.)
Stress on the sperm cells during the sorting process can decrease their fertility.
(Id.) Plaintiff’s patented technology aligns the cells without unnecessarily stressing
them by using a “single torsional” orientation nozzle, which imparts a single twisting
force on the cells, and as described in two of the patents, the nozzle is fitted with “axial
motion surfaces” which slows motion of the cells while passing through the nozzle and
reduces stress on them. (Id. at 5.) One patent also describes “cushioning” the cells
from impact after exiting the nozzle, to further reduce stress. (Id.)
Plaintiff licensed its patented technology to Defendant through a Commercial
License Agreement dated April 16, 2004, and modified on March 9, 2005 and May 17,
2005 (collectively the “Agreement”). (SAC ¶¶ 4, 10.) On November 20, 2007, Plaintiff
sent a written Notice of Termination to Defendant alleging that Defendant had breached
the Agreement, and purporting to terminate the Agreement pursuant to its terms. (Id. ¶
12.) Defendant disagreed that the Agreement was terminated, and attempted to
continue paying royalties to Plaintiff for the continued use of its technology. (Id. ¶ 13.)

4

Plaintiff declined all such payments. (Id.)
Plaintiff filed this action in the Western District of Texas on March 5, 2012. (ECF
No. 1-1.) The case was subsequently transferred to this Court. (ECF No. 1.) The
operative complaint—Plaintiff’s Second Amended Complaint—brings claims for
infringement of each of the 11 patents, as well as for breach of contract, unjust
enrichment, and constructive trust. (Id. pp. 6-21.) The Second Amended Complaint
also seeks a declaratory judgment that the Agreement was validly terminated, or in the
alternative, a declaratory judgment that the Agreement expired. (Id.) Defendant
disputes that it was in breach of the Agreement, and brings Counterclaims against
Plaintiff for a declaration of invalidity of the patents, inequitable conduct with respect to
the patent applications, antitrust violations under the Sherman Act, 15 U.S.C. § 2, and
contract claims based on the Agreement. (ECF No. 123 at 32-63.) Defendant also
asserts its claims for inequitable conduct, antitrust, and breach of contract against
Third-Party Defendant Inguran, LLC, Plaintiff’s parent company. (Id. at 54-63.)
On January 27, 2014, Plaintiff filed its Opening Claim Construction Brief (ECF
No. 151), to which it attached a table of the parties’ Joint Proposed Claim
Constructions. (ECF No. 151-14.) The parties have stipulated to the construction of
the following terms and/or phrases:

5

No.

Claim Term/Phrase

Relevant Asserted
Claims

Stipulated Construction

1

“sheath fluid port”

1 (‘745),
1 (‘768)

“inlet for sheath fluid”

2

“torsional”

1-4, 20-21, 40 (‘307),
1-3, 18-21, 36 (‘745),
13 (‘435),
13 (‘768)

“imparting a twisting or
rotational force”

3

“hydrodynamic
forces”

1 (‘307),
13 (‘435)

“forces generated by a liquid”

4

“axial motion”

5 (‘307),
4-5 (‘745),
1 (‘435),
1 (‘768)

“motion generally parallel to the
axis of flow”

5

“laminar flow”

20-21 (‘745)

“generally parallel or nonturbulent flow”

6

“laminarly flowing”

22-23 (‘307)

“flowing generally parallel or
non-turbulently”

7

“smoothly varying
said ellipticity”

4, 20-21, 40 (‘307)

“gradually varying said
ellipticity”

(Id. at 2.) All seven stipulated constructions apply to one or more of the nozzle patents.
The parties have also identified 15 terms or phrases whose construction they dispute.
(Id. at 3-6.)
On February 7, 2014, Defendant filed is Claim Construction Brief in response to
Plaintiff’s proposed constructions. (ECF No. 156.) On February 14, 2014, Plaintiff filed
its Reply Claim Construction Brief. (ECF No. 157.) The Court held a half-day Markman
hearing on April 25, 2014. (ECF No. 189.)
III. ANALYSIS
The disputed terms can be grouped into three categories, as follows: (A) whether

6

the “single torsional” twisting force must be “gradual”; (B) whether a nozzle with an
interior surface of “an ellipse-shape or an oval shape” encompasses an interior surface
that is “close to a rectangular-shape”; (C) whether a “sheath fluid environment” and
“chemically coordinated” sheath fluid is limited to the specific exemplary fluids
described in the patent specification. (ECF No. 151 at 7-8.) Issues (A) and (B) relate to
Plaintiff’s four nozzle patents, while issue (C) relates to Plaintiff’s three sheath fluid
patents. (ECF No. 156 at 1.) The Court will discuss each of these issues below.
A.

“Single Torsional” (nozzle patents)
The parties’ first dispute centers on whether the “single torsional” language in the

nozzle patents requires that the single twist be “gradual”.
Claim Term

Claims

Plaintiff’s Construction

Defendant’s Construction

“single torsional
surface in a
nozzle having a
central axis
around which a
torque is
applied”

1 (‘307)

“a surface which imparts a
single twist within a nozzle
having a central axis
around which the twisting
force is imparted”

“a single torsional surface
in a nozzle having a
central axis around which
a single and gradual twist
is applied”

“single torsional
surface”

1-3
(‘307),
13 (‘435)

“a surface which applies a
single twist”

“a surface which applies a
single and gradual twist”

“single torsional
hydrodynamic
forces”

1 (‘307),
13 (‘435)

“force generated by a
liquid that imparts a single
twist”

“single and gradual
twisting forces generated
by a liquid”

“single torsional
orientation
nozzle”

1-2, 2021 (‘745),
13 (‘768)

“nozzle which imparts a
single twist”

“nozzle which applies a
single and gradual twist”

(ECF No. 151-14 at 4.) The parties agree that “torsional” means “imparting a twisting or
rotational force”. (Id. at 2.) However, while Defendant contends that a gradual modifier
is implicit from the specification, Plaintiff argues for the more general construction
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requiring only a single twist. (ECF Nos. 151 at 9-11; 156 at 7-9.) Plaintiff further points
out that the phrase “single torsional” was used to distinguish the single twisting force
created in the instant invention from a force that exerted multiple twists, and does not
indicate the speed or character of the single twist. (ECF No. 151 at 11 (citing ‘745
patent at 4:1).)
Defendant defends its argument that “gradual” is implicit in the term “single
torsional” by citing the specification, in which the torsional forces are described as
“gentle”, and the shape of the interior surface of the nozzle, which produces the forces,
is described as being “gradually tapered downstream”. (ECF No. 156 at 8; ‘745 patent
at 6:65, 7:46.) Because the purpose of the nozzle patents is to reduce stress to sperm
cells during sorting, Defendant contends that the gentleness of the twisting force
produced by a gradually tapered nozzle is the “essence of the single torsional
orientation nozzle invention.” (ECF No. 157 at 3 (quoting ECF No. 156 at 9).)
It is well-established that the specification is “the single best guide to the
meaning of a disputed term.” Phillips, 415 F.3d at 1315. However, the Federal Circuit
has held that a party confused the roles of the specification and the claims when it
argued for limits on the claims based on the “essence” of an invention contained in the
specification. Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983) (“That
claims are interpreted in light of the specification does not mean that everything
expressed in the specification must be read into all the claims”). Thus, Defendant’s
essence argument is not dispositive.
The parties’ disagreement here stems from a fundamental tension in claim
construction: the language of a claim must be considered and construed in light of the
8

specification, yet the Court cannot read limitations into the claim language based on the
specification. In Libel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904-05 (Fed. Cir.
2004), the Federal Circuit described this conundrum:
We have had many occasions to cite one or both of the twin
axioms regarding the role of the specification in claim
construction: On the one hand, claims “must be read in view
of the specification, of which they are a part.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995), aff’d, 517 U.S. 370 (1996). On the other hand, it is
improper to read a limitation from the specification into the
claims. Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345
F.3d 1318, 1327 (Fed. Cir. 2003); Gart v. Logitech, Inc., 254
F.3d 1334, 1343 (Fed. Cir. 2001). Although parties
frequently cite one or the other of these axioms to us as if
the axiom were sufficient, standing alone, to resolve the
claim construction issues we are called upon to decide, the
axioms themselves seldom provide an answer, but instead
merely frame the question to be resolved. We have
recognized that “there is sometimes a fine line between
reading a claim in light of the specification, and reading a
limitation into the claim from the specification.” Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87
(Fed. Cir. 1998); accord Anchor Wall Sys., Inc. v. Rockwood
Retaining Walls, Inc., 340 F.3d 1298, 1307 (Fed. Cir. 2003).
As we have explained, “an inherent tension exists as to
whether a statement is a clear lexicographic definition or a
description of a preferred embodiment. The problem is to
interpret claims ‘in view of the specification’ without
unnecessarily importing limitations from the specification into
the claims.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369 (Fed. Cir. 2003); accord Tex. Digital Sys., Inc. v.
Telegenix, Inc., 308 F.3d 1193, 1204-05 (Fed. Cir. 2002).
Defendant’s position is that, to interpret the claim language in light of the specification,
the Court must find that “gradual” is a necessary component of the “single torsional”
description. On the other hand, Plaintiff’s position is that the incorporation of “gradual”
into the disputed language would improperly import limitations from the specification

9

into the claims.1
Defendant correctly states that it is the interior shape of the nozzle that produces
the “single torsional” force at issue. (‘754 patent at 10:50.) W hile one of the disputed
phrases refers to “single torsional hydrodynamic forces”, which is disconnected from
any description of the nozzle’s tapered shape, two of the disputed phrases refer to the
“single torsional surface” within the nozzle, and the final disputed phrase describes the
“single torsional orientation nozzle”. (ECF No. 151-14 at 4.) Thus, it cannot be said
that the disputed language is unrelated to the shape of the nozzle.
However, even where the disputed claim language is used as an adjective to
describe the nozzle or its surfaces, “single torsional” refers to the force being exerted
when a fluid moves along such surfaces and thus describes the effect that the shape of
the nozzle will have on the fluid, not the physical shape of the nozzle itself. A gradually
tapered shape that produces a twisting force on liquid flowing through it does not imply
that the twisting force itself is necessarily gradual. Defendant’s reading imports the
term “gradual” from a description of the product shape and attempts to apply it to a
description of the force. Neither the plain language of the claims, nor the use of the
“gradual” modifier to describe the nozzle shape in the specification, support

1

The parties also argue that the doctrine of claim differentiation supports their various
positions. Claim differentiation establishes a rebuttable presumption that each claim has a
different scope, such that a dependent claim that adds a particular limitation raises a
presumption that the independent claim on which it is based does not contain that limitation.
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004); Kraft Foods, Inc. v.
Int’l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000). Plaintiff argues that the presumption
holds true here, as “gradual” appears only in dependent claims, while Defendant argues that
the presumption is rebutted by the language in the specification. Because the parties’ claim
differentiation argument will ultimately be resolved by the same analysis with respect to the role
of the specification in defining the disputed terms, the Court finds no need to discuss it further.

10

Defendant’s construction.
Thus, having reviewed the claim language and the relevant portions of the
specification, the Court adopts Plaintiff’s proposed construction of the “single torsional”
terms, and concludes that the proper construction of the phrase “single torsional” refers
to a “single twist” without any “gradual” limitation.
B.

“Elliptical-like” (nozzle patents)
The parties disagree on whether the terms “an ellipse-shape or an oval-shape”,

“elliptical-like”, and “ellipse-like” should be construed as containing only ellipse or oval
shapes (Plaintiff), or as also encompassing a shape that is “close to rectangular-shape”
(Defendant). (ECF Nos. 151 at 11; 156 at 9.)
Claim Term

Claims

Plaintiff’s Construction

Defendant’s Construction

“an ellipseshape or an
oval-shape”

3 (‘307),
3 (‘745)

No construction
necessary. This term
should be given its plain
and ordinary meaning.

“ellipse-shape, oval-shape
or even close to
rectangular-shape”

“elliptical-like” or
“ellipse-like”

21, 40
(‘307),
18-19, 36
(‘745)

“an ellipse-shape or an
oval-shape”

“elliptical, oval, or even
close to rectangular-like”

(ECF No. 151-14 at 4.)
These disputed terms describe the interior shape of the nozzle. Defendant again
relies on the specification to argue that “elliptical-like” can encompass “a rectangleshape”, despite the lack of that language in the claims. (ECF No. 156 at 10 (quoting
‘745 patent at 7:60).) The specification describes the interior shape of the nozzle as
follows:

11

This elliptical-like, single torsional interior surface may
include different shapes in its cross sections. For example,
besides being ellipse-shaped, it may be oval-shaped, or
even close to a rectangle-shape. . . . As should be
understood, each of these shapes is intended to be
encompassed by the term “elliptical-like” even though a true
mathematical ellipse is not present at a given cross section.
(‘745 patent at 7:64-8:8.) The specification then compares this variation in shape to the
use of the term “circular”, which “need not be perfectly circular—or even circular at all.
Again, it may be preferred to be circular, however, other shapes may be equivalent so
long as the appropriate function is present.” (Id. at 8:8-11.) Based on these
statements, Defendant argues that the specification defines the term “elliptical-like”
under the applicant’s own peculiar lexicography to include “rectangle-shape”. (ECF No.
156 at 10 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002).)
The Federal Circuit has held that, “[g]enerally speaking, we indulge a ‘heavy
presumption’ that a claim term carries its ordinary and customary meaning.” CSS
Fitness, 288 F.3d at 1366 (internal quotation omitted). In order to rebut that heavy
presumption and find that the applicant “acted as his own lexicographer” in defining a
term, as Defendant suggests here, the Court must find that the patentee “clearly set
forth a definition of the disputed claim term in either the specification or prosecution
history.” Id.
Plaintiff cites the prosecution history to explain why the “rectangle-shape”
language was not included in the claims, despite its appearance in the specification.
Plaintiff clarifies that claim 3 of the ‘307 patent and claim 3 of the ‘745 patent were each
originally written with the language “tapered, elliptical-like, single torsional interior
12

surface element”. (ECF No. 151 at 11 (citing ‘745 prosecution history (ECF No. 151-15)
at 2).) The patent examiner rejected the term “elliptical-like” in these claims, stating that
it rendered the claim “indefinite, as the written specification suggests meanings that are
contrary to a true ellipse,” so the applicant amended the claim in response to the
examiner’s comment. (Id. (citing ECF No. 151-16 at 5).) However, Plaintiff admits that
the applicant’s remarks to the amendment incorrectly stated that the shape description
was amended to include “an ellipse-shape, an oval-shape, or a rectangle-shape,” when
in fact the amendment contains only “an ellipse-shape or an oval-shape”, the language
ultimately included in the final claims. (ECF No. 151 at 11 n.30; compare ECF No. 15117 at 3 ¶ 3 (claim language, no mention of rectangle-shape); with id. at 4 (remarks,
reference to rectangle-shape).)
“The claim language itself controls the bounds of the claim, not a facially
inaccurate remark during prosecution.” Rambus Inc. v. Infineon Tech. Ag, 318 F.3d
1081, 1089-90 (Fed. Cir. 2003). Here, the claim language describes an ellipse-shape
or oval-shape, and does not explicitly include a rectangle-shape. Defendant asks the
Court to go beyond the plain language of the claims to the specification to find a
definition of the disputed claim term that includes “rectangle-shape”. In response to
Plaintiff’s argument citing the prosecution history, Defendant contends that when in
conflict, the specification trumps the prosecution history, which “often lacks the clarity of
the specification and thus is less useful for claim construction purposes.” Phillips, 415
F.3d at 1315, 1317.
The language Defendant cites from the specification explicitly sets forth a
definition of the term “elliptical-like” as including shapes that are not true mathematical
13

ellipses. (See ‘745 patent at 8:5.) Indeed, the specif ication goes on to refer to
“ellipticity” as “the ratio of major to minor axes—regardless of the shape involved”. (Id.
at 8:34-35.) However, it is not clear that “elliptical-like” necessarily includes “close to
rectangle-shape”, despite the inclusion of that term in a list of examples of different
shapes that may appear in the cross-section of an elliptical-like surface in particular
embodiments. (See id. at 7:64-68.) The prosecution history shows that the patentee
altered the claim language in an attempt to resolve the patent examiner’s concern that
the variable shapes included forms that were not true ellipses, and consequently
explicitly discussed and considered the inclusion of “rectangle-shape” in the claim
language. (See ECF Nos. 151-16 at 5; 151-17 at 3-4.) However, no reference to
“rectangle-shape” appears in the final claims, which contain only “an ellipse-shape or an
oval-shape”. This mixed history belies any “clearly set forth . . . definition of the
disputed claim term” that would include “close to rectangle-shape”. See CSS Fitness,
288 F.3d at 1366. Thus, even if the patentee acted as his own lexicographer in defining
“elliptical-like” to include shapes other than true ellipses, the Court cannot f ind that that
definition necessarily includes a shape that is “close to rectangle-shape”, even though
such shape is encompassed by some preferred embodiments.
Accordingly, the Court finds that the claim language itself governs the scope of
the disputed claims here, and therefore adopts Plaintiff’s construction of “elliptical-like”
as including “an ellipse-shape or an oval-shape”.

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C.

“Chemically Coordinating a Sheath Fluid” (sheath fluid patents)
Finally, the parties dispute whether the “sheath fluid” and “chemically

coordinating” language requires any particular chemical composition. (ECF Nos. 151 at
12; 156 at 10.)
Claim Term

Claims

Plaintiff’s Construction

Defendant’s Construction

“chemically
coordinating a sheath
fluid to create a
sheath fluid
environment for said
cells which is
coordinated with both
a pre-sort [and postsort] fluid
environment”

1
(‘860)

“selecting a sheath
fluid so that the cells
are presented with
pre-sort and post-sort
and sheath fluid
environments which
lessen stress on the
cells”

“chemically coordinating a
sheath fluid to create a
sheath fluid environment
for said cells by
presenting a 2.9% sodium
citrate composition for the
sorting of bovine sperm
cells or presenting a
HEPES buffered medium
for the sorting of equine
sperm cells which is
coordinated with both a
pre-sort [and post-sort]
fluid environment”

“a chemically
coordinated sheath
fluid source which
creates a sheath fluid
environment for said
cells which is selected
to be coordinated with
both a pre-sort and a
post-sort fluid
environment”

12
(‘867)

“a sheath fluid that has
been selected so that
the cells are presented
with pre-sort and postsort and sheath fluid
environments which
lessens stress on the
cells”

“a chemically coordinated
sheath fluid which creates
a sheath fluid
environment for said cells
by presenting a 2.9%
sodium citrate
composition for the
sorting of bovine sperm
cells or presenting a
HEPES buffered medium
for the sorting of equine
sperm cells which is
selected to be
coordinated with both a
pre-sort and a post-sort
fluid environment”

15

Claim Term

Claims

Plaintiff’s Construction

Defendant’s Construction

“hyper-responsive
chemical composition
to which said cells are
particularly
responsive”

21-23
(‘860);
13
(‘867)

“chemical
compositions to which
cells are particularly
responsive in terms of
their functionality
and/or the techniques
by which they were
handled”

“hyper-responsive
chemical composition to
which said cells are
particularly responsive
consisting of a citrate
constancy for bovine
sperm cells and HEPES
buffer constancy for
equine sperm cells”

“chemically
coordinating said
collector fluid with
said sheath fluid”

32
(‘860)

“selecting a collector
fluid so that the cells
are presented with
pre-sort and post-sort
and sheath fluid
environments which
lessens stress on the
cells”

“chemically coordinating
said collector fluid that
contains citrate and about
6% egg yolk with said
sheath fluid that consists
of a 2.9% sodium citrate
composition for the
sorting of bovine sperm
cells or a HEPES buffered
medium for the sorting of
equine sperm cells”

“establishing a cell
source which supplies
cells which are hyperresponsive to a
chemical composition
in a surrounding fluid
environment”

38
(‘860)

“supplying cells that
are particularly
responsive to the
chemical composition
of their surrounding
sheath fluid
environment in terms
of their functionality
and/or the techniques
by which they were
handled”

“establishing a cell source
which supplies cells which
are hyper-responsive to a
chemical composition
consisting of a 2.9%
sodium citrate
composition for the
sorting of bovine sperm
cells or a HEPES buffered
medium for the sorting of
equine sperm cells in a
surrounding fluid
environment”

“chemically
coordinated sheath
fluid source”

12, 13
(‘867)

“a sheath fluid that has
been selected so that
the cells are presented
with pre-sort and postsort and sheath fluid
environments which
lessens stress on the
cells”

“chemically coordinated
sheath fluid source
consisting of a 2.9%
sodium citrate
composition for the
sorting of bovine sperm
cells or a HEPES buffered
medium for the sorting of
equine sperm cells”

16

Claim Term

Claims

Plaintiff’s Construction

Defendant’s Construction

“said hyperresponsive chemical
composition
comprises a
metabolic chemical
composition”

14
(‘867)

“a chemical
composition of the
surrounding sheath
fluid environment, to
which cells are
particularly responsive
in terms of their
functionality and/or the
techniques by which
they were handled,
which may include a
chemical within the
citric acid cycle”

“said hyper-responsive
chemical composition
comprises a metabolic
chemical composition
consisting of a citrate
constancy for bovine
sperm cells and HEPES
buffer constancy for
equine sperm cells”

“establishing a sheath
fluid to create a
sheath fluid
environment for said
cells”

1
(‘920);
32
(‘860)

“supplying a sheath
fluid and surrounding
the sperm cells with
the sheath fluid”

“establishing a sheath
fluid to create a sheath
fluid environment for said
cells by presenting a 2.9%
sodium citrate
composition for the
sorting of bovine sperm
cells or presenting a
HEPES buffered medium
for the sorting of equine
sperm cells”

Defendant’s construction again imports information from the specification to limit
the claims, arguing that “chemically coordinated sheath fluid”, “chemically coordinating
sheath fluid”, “hyper-responsive chemical composition”, and “chemical composition . . .
[to which cells] are hyper-responsive” should all be construed as including the particular
chemical compositions referred to in the specification. (ECF No. 156 at 11.)
Defendant contends that these chemical compositions are the novel elements of
the invention, and are therefore necessarily implied in these terms, because they are
what distinguishes the inventions in Plaintiff’s patents from the prior art. (Id. at 11-13.)
Defendant explains that the technology of using particular sheath fluids that were

17

formulated to support cell viability was already established from the prior art, which was
referenced in the specification. (Id. (citing ‘867 patent at 1:66 (“This [sorting technique]
was discussed early in U.S. Pat. No. 4,362,246 and significantly expanded upon
through the techniques disclosed by Lawrence Johnson in U.S. Pat. No. 5,135,759.”)).)
In the Johnson patent, the general properties of the sheath fluid were defined as
necessarily “electrically conductive and isotonic” and “free of sugars and excess salts.”
(Johnson patent (ECF No. 156-1) at 4:44.) Because the g eneral concept of a
chemically coordinated sheath fluid was already part of the then-existing state of the
art, Defendant contends that Plaintiff’s sheath fluid patents must necessarily distinguish
themselves by covering only a newly invented subject matter, namely the specific
chemical compositions described in the patents, to which the cells have been found to
be hyper-responsive. (ECF No. 156 at 12.)
In support of this argument, Defendant contends that the prosecution history of
the sheath fluid patents reveals that the claims at issue were only allowed because of
the specific chemical compositions as defined in the specification. (Id. at 13.)
Defendant points out that the patent examiner initially rejected the relevant claims in the
‘867 patent for several reasons: the Johnson patent had already taught the use of a
particular sheath fluid to support sperm cell viability during the sorting process, the
applicants’ own prior patents had already disclosed the use of a HEPES buffered
medium, and other prior art had already disclosed the use of 2.9% sodium citrate to
increase sperm cell membrane integrity, which would have made it obvious to one of
ordinary skill to use 2.9% sodium citrate in the sheath fluid. (ECF No. 156-2 at 4-6.)
Defendant contends that the applicants then adm itted in their request for

18

reconsideration that the sheath or collector fluids would cover only certain
compositions, stating that “the claims set out the use of specific fluids” such as the
2.9% sodium citrate, but “use[] this substance in a different manner, namely as a
sheath fluid in a cell sorting system. It is this new use which is one of the aspects that
permits the new achievements of the present inventors. . . . To the extent [the prior
patents] do reference certain fluids, they are applying those fluids for a different
purpose and to achieve a result different from the uses set forth in the claims.” (ECF
No. 156-3 at 11-12.)
Similarly, Defendant argues that the examiner rejected a claim in the ‘860 patent
due to the “chemically coordinated” term being indefinite, and stated that “the chemical
formulation and/or identity of the sheath fluid should be identified and recited in the
instant claims (i.e. sodium citrate, HEPES, etc.).” (ECF No. 156-5 at 2.) The applicants
responded that “it is appropriate to maintain the generic recitation . . . because the
recitation is clearly defined by the description along with various examples of sheath
fluid environments”. (ECF No. 156-6 at 15.) Thus, Defendant argues that the claims
were accepted because, in the examiner’s view, the sheath fluid was chemically
coordinated “so as to minimize chemical changes in the cells by presenting a 2.9%
sodium citrate composition for the sorting of bovine sperm cells or presenting a HEPES
buffered medium for the sorting of equine sperm cells.” (ECF No. 156-7 at 4.)
In response, Plaintiff argues that the novelty of the invention was in chemically
coordinating the sheath fluids particularly for the purpose of reducing stress on the cells
during the various stages of sorting through a flow cytometer, and that the specified
chemical compositions—a 2.9% sodium citrate composition for bovine cells and a
HEPES buffered medium for equine cells—were exemplary compositions found to
19

reduce stress for those cells, rather than specified compositions to which the claims
should be restricted. (ECF Nos. 151 at 15, 157 at 7-8.) Plaintif f points out that the
specification repeatedly discusses the citrate and HEPES buffered compositions as
only examples of such chemically coordinated fluids, and explicitly refers to the
possibility of variation in the chemical composition. (Id. (citing ‘867 patent at 7:53, 8:3,
8:51, 11:11).) With respect to “establishing a sheath fluid” term in the ‘920 patent
specifically, Plaintiff argues that Defendant’s attempt to import particular chemical
compositions into the claim is an even more egregious stretch, as Defendant’s
construction of that claim requires reading details from the specification of one
embodiment (sheath fluid composition) into a claim of a different embodiment
(cushioning). (ECF No. 151 at 12-13.)
As to the patent prosecution history, Plaintiff interpretation differs from
Defendant’s. Plaintiff argues that the ultimate general language included in the claims
was the result of the applicants’ attempt to tread the line between an obvious
application of the prior art and a broad enough definition of the claims to permit them to
cover subsequently discovered chemical compositions. (See ECF Nos. 151 at 15-16;
157 at 8.) In the cited prosecution history from the ‘867 patent, the applicant argued
that the invention was not obvious because the sheath fluid was chemically coordinated
specifically to reduce stress on the cells during the sorting process, which differentiated
them from the uses of such fluids in the prior art. (ECF No. 156-3 at 11-12.) Plaintiff
contends that the applicant’s discussion of the specific fluid compositions was included
by way of example. (Id. at 12.)
Similarly, regarding the prosecution history from the ‘860 patent, Plaintiff
20

interprets it as the applicants’ attempt to avoid specifying chemical compositions and
instead to maintain a generic description of the chemically coordinated sheath fluid,
contending that the example fluids provided enough specificity to clarify the purpose
and type of chemical coordination that would be covered by the claims. For example,
the applicants’ request for reconsideration noted that “[t]he examiner even indicates
that the specific examples provided by the applicant in the description of using 2.9%
sodium citrate and HEPES-buffered medium as sheath fluids to illustrate the broader
generic inventive concept” were not covered by the prior art. (ECF No. 156-6 at 18
(emphasis added).) The applicant further argued that “the applicant fairly deserves the
breadth of the independent claims as originally recited”. (Id. at 19.) Plaintiff notes that
“[i]t is well settled, however, that it is the applicant, not the examiner, who must give up
or disclaim subject matter that would otherwise fall within the scope of the claims.”
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1124 (Fed.
Cir. 2004). Thus, Plaintiff argues, the examiner’s initial statement that the claim
required a recitation of specific chemical formulations does not limit the claim to those
formulations when the applicant did not accept such limits and the claim was ultimately
allowed without them. (ECF No. 157 at 9.)
Plaintiff also points out that the examiner’s references to specific chemical
compositions in stating reasons for allowing the claims (see ECF No. 156-4 at 2) can be
explained by those compositions’ overt appearances in the language of other claims,
such as ‘867 claim 1(b) (2.9% sodium citrate), ‘867 claim 4(b) (HEPES buffered

21

medium), and ‘867 claim 6(g) (citrate and 6% egg yolk)2. (ECF No. 157 at 9.) The
explicit appearance of these chemical compositions in other claim language suggests
that the examiner’s comments as to those specific compositions should not necessarily
be imputed to the definitions of the “chemically coordinated” language in ‘867 claim 12.
The Court finds Plaintiff’s reading of the prosecution history more compelling
than Defendant’s, because the patentee explicitly argued for the broader, generic terms
that were ultimately allowed in the claims. (See ECF No. 156-6 at 18-19.) This
distinguishes the instant case from those cases in which “the applicants may not have
repeated the examiner’s language verbatim et literatim, [but] it is clear that they were
limiting their invention to what the examiner believed they enabled . . . .” Biogen Idec,
Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed. Cir. 2013). W hile the patentee
made reference to the fact that the general terms were “clearly defined by the
description along with various examples of sheath fluid environments,” those specified
fluids were explicitly denominated “examples” that served to illustrate, not limit, the
scope of the invention. (See ECF No. 156-6 at 15.) The prosecution history here fails
to show that “the applicant clearly and unambiguously disclaimed or disavowed” an

2

Defendant also raises an argument with respect to the specific composition of 6% egg
yolk in a citrate solution, arguing that the term “collector fluid” should be limited to that
composition because the specification proposes such a composition and the patentee “acted as
its own lexicographer” with respect to this term. (ECF No. 156 at 22.) Defendant contends that
because the use of a collector fluid comprised of an egg yolk solution was taught by the
Johnson patent, the term has no novel meaning in Plaintiff’s patents unless it is restricted to the
particular solution described in the specification. (Id.)
As the Court has previously discussed, in order to “act as its own lexicographer,” the
patentee must have clearly set forth a definition of the term. See CSS Fitness, 288 F.3d at
1366. Defendant has not presented any support for a finding that such a clear redefinition
existed here. Accordingly, the Court finds that the “collector fluid” term should not be construed
as limited to any specific composition.

22

interpretation of the claims that could cover chemical compositions other than 2.9%
sodium citrate or HEPES buffered medium. See Salazar v. Procter & Gamble Co., 414
F.3d 1342, 1344 (Fed. Cir. 2005) (quoting 3M Innovative Props. Co. v. Avery Dennison
Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003)).
As for Defendant’s arguments that Plaintiff’s broad construction contradicts the
examiner’s reasons for allowing the claim and would make the invention obvious from
prior art, the Court finds Plaintiff’s explanations satisfactory. The examiner’s initial
reticence to allow a very broad interpretation of the chemically coordinated sheath fluid
was resolved by the inclusion of the example sheath fluid compositions in the
specification. Here, Plaintiff’s construction of “chemically coordinating” and the related
terms includes a limitation to the particular purpose of “lessen[ing] stress on the cells”,
which serves to narrow the definition and helps distinguish it from the prior art. Given
the need to consider the claim language, the specification language, and the
prosecution history as a whole, the Court is persuaded that the patentee did not “clearly
and unambiguously” disavow the broader interpretive scope of these terms, and that
they should not be limited by the two chemical compositions provided as examples in
the specification. See Salazar, 414 F.3d at 1344; Phillips, 415 F.3d at 1315 (the patent
is examined as a whole).
Accordingly, the Court adopts Plaintiff’s construction of the disputed “chemically
coordinating” and “sheath fluid” terms, and concludes that they should be construed
without any limitation to specific chemical compositions.

23

IV. CONCLUSION
For the reasons discussed above, the Court hereby ADOPTS Plaintiff’s
constructions of the disputed terms and phrases.
Dated this 7th day of October, 2014.
BY THE COURT:

William J. Martínez
United States District Judge

24