Brain Synergy Institute LLC v. UltraThera Technologies, Inc. et al

Filing 90

ORDER Adopting and Affirming 69 December 5, 2014 Recommendation of United States Magistrate Judge. UltraThera's objection (Doc. # 73 ) is OVERRULED. By Judge Christine M. Arguello on 01/11/2016. (athom, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Christine M. Arguello
Civil Action No. 13-cv-01471-CMA-BNB
BRAIN SYNERGY INSTITUTE, LLC, d/b/a CARRICK BRAIN CENTERS,
Plaintiff,
v.
ULTRATHERA TECHNOLOGIES, INC., and
KEVIN MAHER,
Defendants.
ORDER ADOPTING AND AFFIRMING DECEMBER 5, 2014
RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE
This case was referred to United States Magistrate Judge Boyd N. Boland
pursuant to 28 U.S.C. § 636 and Fed. R. Civ. P. 72. (Doc. # 5.) On December 5, 2014,
Judge Boland issued a Recommendation construing fifteen patent claim terms at the
center of this dispute. (Doc. # 69.) The Recommendation is incorporated herein by
reference. See 28 U.S.C. § 636(b)(1)(B); Fed. R. Civ. P. 72(b). On December 19,
2014, Defendants UltraThera Technologies, Inc. and Kevin Maher (hereinafter
“UltraThera”) filed timely objections. (Doc. # 73.) Plaintiff Brain Synergy Institute, LLC
(hereinafter “BSI”) filed a response to the objections on January 5, 2015. (Doc. 74.)
I. BACKGROUND
This case arises out of a patent dispute between BSI and UltraThera. In
accordance with the order of this Court (Doc. # 52) and Markman v. Westview

Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996),
Magistrate Judge Boland held a hearing to construe patent claim terms relevant to the
disposition of this litigation. (Doc. # 63.) After careful consideration of the parties’ claim
construction briefs and the evidence presented during the Markman hearing, Magistrate
Judge Boland issued his Recommendation construing fifteen terms of the disputed
patent. (Doc. # 69.) UltraThera lodged two objections, specifically to the recommended
constructions of Terms 3 and 10 (Doc. # 73.) The original claim terms and the
corresponding constructions recommended by Magistrate Judge Boland are reproduced
below:
Term

Original Claim Language
(emphasis added)

Recommended Construction
(emphasis added)

Term 3

information that effectively describes
the de facto pattern and current
condition of the chosen subject’s
spatial orientation

Term 10

information that effectively describes
the then de facto pattern and current
state of the chosen subject’s spatial
orientation

Information that effectively
describes a subject’s pattern of
dynamic movement in any direction
or plane of motion and/or current
static disposition in threedimensional space
Information that effectively
describes a subject’s pattern of
dynamic movement in any direction
or plane of motion and/or current
static disposition in threedimensional space

UltraThera’s two objections have the same substantive basis: Magistrate Judge Boland
“improperly substituted the conjunctive phrase ‘and’ with the disjunctive phrase ‘and/or,’”
enlarging the scope of the terms beyond their original meanings. (Doc. #73 at 4-5.) For
the reasons discussed below, this Court agrees with the Recommendation, and
overrules UltraThera’s objections.

II. APPLICABLE AUTHORITY
When a magistrate judge issues a recommendation on a dispositive matter, Fed.
R. Civ. P. 72(b)(3) requires that the district judge “determine de novo any part of the
magistrate judge’s [recommended] disposition that has been properly objected to.” In
conducting its review, “[t]he district judge may accept, reject, or modify the
recommended disposition; receive further evidence; or return the matter to the
magistrate judge with instructions.” Id. This standard is consistent with that which is
applied in the review of claim constructions made pursuant to Markman. PC Connector
Solutions LLC v. Smartdisk Corp., 406 F.3d 1359, 1362 (Fed. Cir. 2005) (“Claim
construction is a question of law that we review without deference.” (citing Cybor Corp.
v. FAS Tech, Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998))).
Claim construction is the first step in the two-part analysis to determine patent
infringement. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581–82 (5th Cir.
1996). Patent claims that are asserted to be infringed are first construed in order to
determine their true meaning and scope. Markman, 52 F.3d at 976. Then, the properly
construed claims are compared against the device accused of infringing. Id.
Claim construction is simply a way of elaborating the normally terse claim
language in order to understand and explain, but not to change, the scope of the claims.
Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000). The analysis
begins with the language of the claim itself. Vitronics, 90 F.3d at 1582. Absent an
express intent to impart a novel meaning, terms in a claim are to be given their ordinary
and accustomed meaning. Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1373 (Fed. Cir.

2004); Vitronics, 90 F.3d at 1582. However, a patentee may choose to be his own
lexicographer and use terms in a manner other than their ordinary meaning, as long as
the special definition of the term is clearly stated in the patent specification or file
history. Vitronics, 90 F.3d at 1582.
Thus, it is always necessary to review the specification to determine whether the
inventor has used any terms in a manner inconsistent with their ordinary meaning. Id.
Furthermore, the words of the claim must be construed in light of the specification,
which contains a written description of the invention that must be clear and complete
enough to enable those of ordinary skill in the art to make and use it. Id. The
specification is always highly relevant and the single best guide to the meaning of a
disputed term. Id.
III. ANALYSIS
UltraThera objects to Magistrate Judge Boland’s substitution of “and/or” for “and”
in the claim language reproduced supra. (Doc. # 73 at 4-5.) UltraThera reasons that
the substitution impermissibly broadens the scope of the claim language by changing a
specification requiring both elements (“and”) into something merely requiring either
element (“and/or”). A careful review of the claim language and patent specification
demonstrates that the argument is without merit.
Though the analysis of patent language begins with the claim itself, a patentee
can be his own lexicographer, assigning special meaning to terms as long as the
definition is clearly stated in the patent specification or file history. Vitronics, 90 F.3d at

1582. In the instant case, the patentee acted as his own lexicographer with respect to
the term “spatial orientation.” The patent specifications state:
Incidentally, where references are made herein to
positions, positionings, orientations, and spatial
orientations, those references are intended to involve either
a subject’s static disposition in three-dimensional space,
and/or a subject’s dynamic movement, in any direction or
plane of motion, toward, through, and/or beyond one, or
several, of such dispositions.
(Doc. # 54-1 at 3:28-34 (emphasis added).) The Recommendation appropriately
identifies the construction of “spatial orientations” in the patent specifications and uses
the patentee’s definition to give meaning to the terms under review. (Doc. # 69 at 8-9.)
See Vitronics, 90 F.3d at 1582 (“The specification is always highly relevant to the claim
construction analysis” and “is the single best guide to the meaning of a disputed term.”)
With respect to the recommended construction of Terms 3 and 10, the clauses
“and current [condition/state] of the chosen subject’s spatial orientation” are merely
replaced by the definition of the term “spatial orientation,” a construction including the
disjunctive phrase “and/or” and explicitly enunciated by the patentee in his
specifications. Accordingly, this Court agrees with Magistrate Judge Boland’s
construction of Terms 3 and 10.
BSI raises a number of issues concerning timeliness and waiver of the
UltraThera objections. (Doc. # 74 at 1-5.) Because this Court has overruled
UltraThera’s objections on the merits, we need not consider BSI’s arguments.
The Court has conducted a de novo review of this matter, including reviewing
all relevant pleadings, the Recommendation, UltraThera’s objection thereto, and BSI’s

response. Based on this de novo review, the Court concludes that Magistrate Judge
Boland’s Recommendation is correct and is not called into question by UltraThera’s
objection. Accordingly, it is hereby ORDERED that UltraThera’s objection (Doc. # 73) is
OVERRULED. It is
FURTHER ORDERED that the Recommendation of United States Magistrate
Boyd N. Boland (Doc. # 69) is AFFIRMED and ADOPTED as an order of this Court.
DATED: January 11, 2016
BY THE COURT:

_______________________________
CHRISTINE M. ARGUELLO
United States District Judge