Masimo Corporation v. Philips Electronics North America Corporation et al
ORDER ADOPTING REPORT AND RECOMMENDATION for 210 Report and Recommendation (except to the extent stated in section 2). Signed by Judge Leonard P. Stark on 1/17/12. (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
C.A. No. 09-80-LPS-MPT
PHILIPS ELECTRONICS NORTH
AMERICA CORPORATION and
PHILIPS MEDIZIN SYSTEME BOBLINGEN
PHILIPS ELECTRONICS NORTH
WHEREAS, Magistrate Judge Mary Pat Thynge issued a Report and Recommendation
("Report"), dated February 18, 2011, providing construction of the parties' disputed claim terms
WHEREAS, PlaintiffMasimo Corporation ("Masimo") submitted objections concerning
the Report (D.I. 219);
WHEREAS, Defendants Philips Electronics North America Corporation and Philips
Medizin Systeme Boblingen Gmbh (collectively, "Philips") submitted objections to the Report
WHEREAS, the Court has considered the parties' claim construction disputes de novo,
see St. Clair Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., Ltd., 691 F.
Supp. 2d 538, 541-42 (D. Del. 2010); 28 U.S.C. § 636(b)(l); Fed. R. Civ. P. 72(b)(3);
WHEREAS, the Court concludes that, with the exception ofthe one dispute discussed in
section 2 below, the Report should be adopted for the reasons stated by Magistrate Judge Thynge
in her Report (D.I. 210);
NOW THEREFORE, IT IS HEREBY ORDERED that:
Other than to the extent stated in section 2 below, Masimo's objections (D.I. 219)
are OVERRULED, Philips' objections (D.I. 218) are OVERRULED, and Magistrate Judge
Thynge's Report (D.I. 210) is ADOPTED.
Masimo objects to the Report's construction of"a signal processor," as that term
is used in claim 17 ofMasimo's U.S. Patent No. 6,263,222 (the "'222 patent"), 1 as "a processing
unit which determines either a secondary reference n'(t) or a primary reference s'(t) for use in a
correlation canceler, such as an adaptive noise canceler." Masimo proposes, instead, that "a
signal processor" either needs no construction or, alternatively, be construed as "a device that
processes an input or output signal." The Court agrees with Masimo's alternative construction.
The parties are in agreement that the ordinary meaning of "a signal processor" is "a
device that processes an input or output signal." (See D.I. 184, Hr'g Tr., Dec. 1, 2010
(hereinafter "Tr. ") at 82-83, 108-09; D .1. 164 at 7 n.1) Their dispute is whether the specification
limits the patentee's claimed invention (in claim 17) to embodiments involving a correlation
The '222 patent can be found in D.I. 166 at Ex. 1.
canceler. Masimo finds no such restriction (see D.I. 219 at 4-7), while Philips does (see D.I. 230
at 3, 5-6; see also Tr. at 102-03 ("They invented removing the noise using a correlation canceler.
That's how they removed the noise .... That's what we think their claims need to be limited
The '222 patent states that "[t]he signal processor may comprise a correlation canceler,
such as an adaptive noise canceler." ('222 patent, col. 6lines 30-32) (emphasis added) The
patent further states: "The present invention may be applied in any situation where a signal
processor comprising a detector receives a first signal which includes a first primary signal
portion and a first secondary signal portion and a second signal which includes a second primary
signal portion and a second secondary signal portion." ('222 patent, col. 50 lines 47-52)
(emphasis added) The patent's title is broad: "Signal Processing Apparatus." (D.I. 166 Ex. 1 at
MASP0000205) All of this is in tension with a reading of the patent that restricts claim 17 to a
signal processor involving a correlation canceler.
The Report cites three portions of the specification for the conclusion that the claimed
invention is limited to "use in a correlation canceler." (See D.I. 210 at 3-4 (citing '222 patent,
col. 12lines 61-64 ("Detailed Description ofthe Invention"); id. col. 4lines 54-57 ("Summary of
the Invention"); id. col. 5 lines 30-36 (same))) The Court concludes, however, that none of these
three portions of the specification contain words or expressions of manifest exclusion or
otherwise clearly disclaim or disavow any claim scope. See Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2008) ("[C]laims of the patent will not be read restrictively,
unless the patentee has demonstrated a clear intention to limit the claim scope using words or
expressions of manifest exclusion or restriction.") (internal quotation marks omitted; emphasis
added); id. at 908 ("Those passages [ofthe patent], although focusing on the use ofthe invention
in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a
pressure jacket."); Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094-95 (Fed. Cir. 2003)
("While clear language characterizing 'the present invention' may limit the ordinary meaning of
claim terms, such language must be read in context of the entire specification and prosecution
history," to determine whether the patentee "clearly disclaim[ed] or disavow[ed] such claim
scope.") (internal citations omitted; emphasis added). While these statements describe features
of an embodiment of the patent's claims, they do not, in context, clearly and unambiguously
disavow other types of signal processors. This conclusion is further supported by the fact that, as
Masimo emphasizes, the '222 patent uses the term "present invention" pervasively, in many
varied contexts. See Honeywell Int'l, Inc. v. Nikon Corp., 589 F. Supp. 2d 433, 443 (D. Del.
2008) (rejecting attempt to read "present invention" limitation from specification into claims).
Masimo's construction is further supported by prior decisions considering the '222
patent. In resolving a similar claim construction dispute, the Central District of California
concluded that the term "signal processor" as used in claim 17 of the '222 patent did not require
construction. See Mallinckrodt, Inc. v. Masimo Corp., 254 F. Supp. 2d 1140, 1151 (C.D. Cal.
2003). On appeal, the Federal Circuit rejected the argument that the district court's decision had
been in error. See 147 Fed. Appx. 158, 2005 WL 2139867 at *8-9, 12-14 (Fed. Cir. Sept. 7,
2005). The Court recognizes that the accused infringer in Mallinckrodt presented a different
argument - contending that the signal processor of claim 17 was more narrowly limited to use of
an adaptive noise canceler, as opposed to Philips' contention that the signal processor of claim 17
is merely limited to use of any type of correlation canceler -yet, still, the prior litigation
decisions support Masimo's position, not Philips'. See generally Markman v. Westview
Instruments, Inc., 517 U.S. 370, 390 (1996) (noting "the importance of uniformity in the
treatment of a given patent" and application of stare decisis to claim construction disputes).
The Court has also considered Philips' argument regarding the Federal Circuit's decision
in Masimo Corp. v. Mallinckrodt Inc., 18 Fed. Appx. 852 (Fed. Cir. 2001), in which that Court
construed a related term of a related patent. (See D.I. 230 at 4-5) The Court concludes that this
decision does not alter the outcome here.
In the briefing before Magistrate Judge Thynge, Philips argued that "the patent explicitly
defines the invention as a signal processor that acquires two measured signals." (D.I. 163 at 8
(citing '222 patent, col. 3 lines 56-58 ("The invention is a signal processor which acquires a first
signal and a second signal that is correlated to the first signal."))) Yet the construction Philips
proposed - and the Report adopted -was a different purported "express definition of the
invention given in the specification," which Philips finds elsewhere in the patent. (D.I. 163 at 8
(citing '222 patent, col. 12 lines 61-64)) Philips is of the view that "the '222 Patent specification
repeatedly defines the invention to be a signal processor that determines a primary or secondary
reference signal for use in a correlation canceler." (D.I. 172 at 4) (emphasis added) In the
Court's view, in the context ofthe '222 patent, the purported multiplicity of definitions (which
are not identical) instead indicates that in no one place does the patent expressly define "signal
processor" in a restrictive fashion that should be imported to limit the scope of claim 17.
For these reasons, the Court will construe "a signal processor," as used in claim 17 of the
'222 patent, to mean "a device that processes an input or output signal."
January 17, 2012
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?