Andover Healthcare Inc. v. 3M Company

Filing 142

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 5/11/15. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

ANDOVER HEALTHCARE, INC.,
Plaintiff,

v.

Civil Action No. 13-843-LPS

3M COMPANY,
Defendant.

Arthur G. Connolly, III, Ryan P. Newell, and Mary I. Akhimien, CONNOLLY GALLAGHER
LLP, Wilmington, DE.
David Brafman, Peter A. Chiabotti, Patricia Carlson, and Amy Price, AKERMAN LLP, West
Palm Beach, FL.
Attorneys for Plaintiff.

Jack Blumenfeld, Maryellen Noreika, and Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, DE.
Michael A. Morin, Mark J. Feldstein, and Casey L. Dwyer, FINNEGAN, HENDERSON,
FARABOW, GARRETT & DUNNER, LLP, Washington, DC.
M. David Weingarten, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER,
LLP, Atlanta, GA.
Justin A. Hendrix, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP,
Palo Alto, CA.
Attorneys for Defendant.

MEMORANDUM OPINION

May 11, 2015
Wilmington, Delaware

-c~~-~
STARK, U.S. District Judge:

Plaintiff Andover Healthcare, Inc. ("Andover" or "Plaintiff') filed a patent infringement
action against Defendant 3M Company ("3M" or "Defendant"). (D.I. 1) Andover asserts U.S.
Patent No. 6,156,424 ("the '424 patent" or "the patent-in-suit") against 3M. (Id.) 1
Pending before the Court is the issue of claim construction of various disputed terms of
the patent-in-suit. The parties completed briefing on claim construction on November 4, 2014.
(D.I. 84, 85, 100, 102) In addition to the briefing, the parties submitted technology tutorials. The
Court held a Markman hearing on March 6, 2015. ("Tr.")

I.

LEGAL STANDARDS
The ultimate question of the proper construction of a patent is a question oflaw. See

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of patent law that the
claims of a patent define the invention to which the patentee is entitled the right to exclude."
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).
"[T]here is no magic formula or catechism for conducting claim construction." Phillips, 415
F.3d at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in
light of the statutes and policies that inform patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning ...
[which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."
Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a

1

The '424 patent is entitled "Cohesive Products." It was issued on December 5, 2000.
(D.I. 78, Ex. 1)

claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321
(internal quotation marks omitted). The patent specification "is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also must be considered.
Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of enlightenment ... [b ]ecause claim terms are
normally used consistently throughout the patent .... " Id. (internal citation omitted).
It is likewise true that "[ d]ifferences among claims can also be a useful guide . . . . For

example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim." Id. at 131415 (internal citation omitted). This "presumption is especially strong when the limitation in
dispute is the only meaningful difference between an independent and dependent claim, and one
party is urging that the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim

term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven
when the specification describes only a single embodiment, the claims 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." Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), ajf'd, 481

F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution

history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d
at 131 7. "[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.
In some cases, "the district court will need to look beyond the patent's intrinsic evidence

and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at
841. Extrinsic evidence "consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d
at 980. For instance, technical dictionaries can assist the court in determining the meaning of a
term to those of skill in the relevant art because such dictionaries "endeavor to collect the
accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of
the technical aspects of the patent is consistent with that of a person of ordinary skill in the art, or
to establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and
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testimony [are] generated at the time of and for the purpose oflitigation and thus can suffer from
bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be
useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90

F.3d at 1583).
Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."
Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows

that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbH v. Int'l Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).

II.

CONSTRUCTION OF DISPUTED TERMS
A.

"cohesive"

Andover
sticks to itself rather than to other materials such as skin and hair
3M
sticks to itself and not to other materials

Court
sticks to itself and not (at least to any significant degree) to other materials
As a preliminary matter, the parties disagree about whether the Court must construe
"cohesiveness" as well as "cohesive." 3M proposes that the Court do so, although it provides no
separate construction for "cohesiveness." The Court sees no need to separately construe

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"cohesiveness" - although the parties will not be permitted to present evidence or argument to
the jury that "cohesiveness" means anything other than the noun form of "cohesive."
The parties' primary dispute is whether "such as skin and hair" should be added to the
rest of the agreed-upon definition for clarification. Andover requests such clarification based in
part on the specification's explanation that "because the synthetic elastomers are cohesive, rather
than pressure sensitive, the surface of tapes 10, 40 will not stick (at least to any significant
degree) to other surfaces or materials"(' 424 patent at col. 3 11. 51-61 ), whereas 3M finds
Andover's additional phrase to be unduly narrowing, especially given the specification's
statement that "[n]atural rubber latex is inherently cohesive, meaning that it sticks to itself rather
than to other materials" (id. at 1 11. 15-17).
Andover supports its proposed construction by pointing, first, to the specification. (See
'424 patent, col. 1 11. 3-4 ("This invention is directed to cohesive products, and more particularly
to cohesive tapes and bandages ... .");id. col. 1 1.9 to col. 2 1. 9 (referring repeatedly to cohesive
bandage and tape); id. col. 3 11. 54-61 (referring to tape sticking to its own surfaces when
wrapped around an ankle but not to other surfaces)) Andover further cites to a prior art patent
listed in '424 patent, which itself refers to cohesive products sticking to themselves but not to
skin, hair, or garments. (See D.I. 78, Ex. 3 at col. I 11. 8-19)

In response, 3M observes that the '424 patent's specification states that "tape or bandage"
are merely exemplary embodiments (see '424 patent, col. 4. 11. 9-13) and, moreover, that the only
claims directed specifically to bandages - for which the skin and hair clarification would be of
particular relevance-were cancelled during prosecution (see D.I. 84, Ex. 0 at 21-25; see also
D.I. 100, Ex. U at 75:22-80:20 (Andover's expert explaining that his opinion regarding skin and

5

hair is in context of bandages)).
"Even where a patent describes only a single embodiment, claims will not be read
restrictively unless the patentee has demonstrated a clear intention to limit the claim scope."

lnnova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1117 (Fed. Cir. 2004).
Here, Andover has not demonstrated a clear intention to limit the claim scope. Although the
patentee explained that "a cohesive material is one that, as a practical matter, adheres only to

itself," it expressly qualified this statement with a quote from the specification: "a cohesive
product[] will adhere to itself, but not (at least to any significant degree) to other substrates."
(D.I. 84, Ex. A at 10 (citing '424 patent at col. 711. 36-38)) (emphasis added) The patentee
further explained that, in contrast to a cohesive material, "[aJn adhesive, on the other hand, will
adhere not only to itself, but also to other and quite different materials." (D .I. 84, Ex. A at 10)
(first emphasis in original; second emphasis added) More recently, in its Preliminary Response
to the Petition for IPR, the patentee stated that "[t]he inventor of the '424 Patent acted as his own
lexicographer by defining and consistently using 'cohesive' in the specification to mean
'adhere[ s] to itself, but not (at least to any significant degree) to other substrates."' (D .I. 84, Ex.
Eat 8)
The Court is not persuaded by 3M's extensive reliance on prosecution history for a
related, European patent. There simply is no clear and unambiguous disclaimer.
Accordingly, the Court adopts 3M's proposed construction ofthis term with the added
clarification of"at least to any significant degree" (a phrase Andover also suggested at the
hearing).

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B.

"synthetic"

Andover
does not contain natural rubber latex

3M
Plain and ordinary meaning, or in the alternative, produced by synthesis, not of natural origin.
Court
produced by synthesis, not of natural origin

The parties disagree about whether this term should be limited to excluding natural

l

rubber latex, as proposed by Andover, or given its plain and ordinary meaning, as proposed by
3M. Alternatively, 3M proposes a definition of "synthetic" which reflects dictionary definitions
of the term. (See D.I. 84, Ex.Pat 1377; D.I. 84, Ex. Q at 987; D.I. 84, Ex.Rat 1197)
Andover points out that the purpose of the invention distinguishes it from prior art using
natural rubber latex (see '424 patent, col. 1 11. 3-6), and that the specification repeatedly contrasts
synthetic materials and natural rubber latex (see id. col. 1 11. 42-49, col. 211. 10-13). Andover
further argues that if"synthetic" excludes natural materials other than natural rubber latex, then a
claimed embodiment would be excluded. According to Andover, because claim 3 states that the
"synthetic water-based cohesive comprises ... an elastomer ... [and] at least one tackifying
agent" (id. col. 12 11. 58-64), and the specification explains that the tackifying agent "includes ...
naturally occurring rosins" (id. col. 611. 58-62), it follows that naturally occurring materials other
than rubber, such as rosins, cannot be excluded by the term "synthetic."
The Court disagrees with Andover. Because the synthetic cohesive in claim 3 comprises
both an elastomer and a tackifying agent, it is "synthetic" as long as either the elastomer or the
tackifying agent are synthetic. In other words, the inclusion of a naturally occurring material
with a synthetic material does not render the resulting combination natural.

7

As 3M emphasizes, the term "synthetic" in the specification is not limited to the synthetic
cohesive, but is also used to describe the substrates. (See id. col. 4 11. 9-13 ("In embodiments in
which the cohesive product of the present invention is a tape or bandage, the substrate typically
will comprise a ... fabric such as a non-woven scrim, of either natural or synthetic fiber.")) It
would be odd, then, to limit the meaning of "synthetic" just to how the term is used in association
with cohesives.
Accordingly, the Court will adopt the plain and ordinary meaning of "synthetic" in the
context of the '424 patent, which the Court concludes is accurately reflected in the alternative
construction proposed by 3M.
C.

"comprising" I "comprises"

Andover
including but not limited to I includes but is not limited to
3M
Plain and ordinary meaning.
Court
Plain and ordinary meaning.

At the hearing, Andover agreed with 3M that jury instructions would suffice to give this
term its meaning of "including but not limited to." (Tr. at 26) Accordingly, the Court does not
need to construe this term.

8

I
D.

"an elastomer having an inherently crystalline structure" I "elastomer
inherently capable of crystallization" I "inherently crystalline elastomer"

Andover
an elastomer that crystallizes (forms ordered structures within an otherwise amorphous mass)
when the elastomer is in its natural form and is within a temperature range particular to the
elastomer I an elastomer that forms ordered structures within an otherwise amorphous mass
when the elastomer is in its stable, natural form 2
3M
the elastomer material used to make the cohesive product, when in its natural form, exhibits a
stable crystalline structure
Court
an elastomer that forms ordered structures within an otherwise amorphous mass when the
elastomer is in its stable, natural form

The parties agree that all three versions of this term should be construed synonymously.
The specification provides an express definition for an inherently crystalline structure: "As used
herein, 'inherently crystalline' or 'inherently capable of crystallization' means that a material
exhibits a microcrystalline, polycrystalline, or crystalline-like structure in a stable, natural form."
(' 424 patent, col. 5 11. 18-22) The material involved in the disputed terms is an elastomer.
However, because "microcrystalline" does not appear in the claims, Andover proposes replacing
"exhibits a microcrystalline, polycrystalline, or crystalline-like structure" with "forms ordered
structures within an otherwise amorphous mass," consistent with its proposed construction of
"crystalline structure." (Tr. at 28-29) For reasons the Court will explain below, it is adopting
Andover's proposed construction of "crystalline structure."
Accordingly, the Court construes the terms in dispute as "an elastomer that forms ordered
structures within an otherwise amorphous mass when the elastomer is in its stable, natural form,"

2

Andover proposed this alternative construction at the hearing. (See Tr. at 32)
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I

which is the proposal Andover made at the hearing.
E.

"crystalline structure" I "crystalline"

Andover
ordered structures which develop within a mass of otherwise amorphous material
3M
having ordered crystal structures observable under magnification of thin films of material
Court
ordered structure which develops within a mass of otherwise amorphous material I having an
ordered form which develops within a mass of otherwise amorphous material

The parties disagree about whether "crystalline structure" or "crystalline" should be
construed. Because neither party disputes that "structure" can be understood through its plain
and ordinary meaning, the Court will only construe the adjective "crystalline."
Andover points out that 3M's definition is based on the specification's explicit definition
of microcrystalline, which the specification distinguishes from crystalline. (See id. col. 5 11. 8-16
("As applied to polymers, the terms crystalline, microcrystalline, and polycrystalline refer to
ordered structures which develop within a mass of otherwise amorphous polymeric material.
Certain polymers such as isotactic polypropylene develop a highly organized microcrystalline
structure due to the inherent structure of the polypropylene. The term microcrystalline, as used
herein, refers to ordered structures that can be observed under magnification of thin films of
polymer.")) 3M contends that the observability limitation placed on microcrystalline should be
imported into the term crystalline simply because a microcrystalline is smaller than a crystalline,
and therefore a crystalline must also be observable under magnification. Regardless of whether
this is factually correct - which Andover disputes, based on a book explaining that a type of
"crystalline microstructures" called "spherulites" may actually be larger than certain "crystalline

10

regions" (see D.I. 102, Ex.Bat 41-43)- the claim language does not support limiting crystalline
structures to those which would be observable under magnification. 3
Accordingly, the Court adopts Andover's proposed construction.

F.

"a cohesive elastomeric solid"

Andover
Does not need construction. If construed: a solid material that is cohesive and made from an
elastomer.
3M
a cohesive elastomer in a partial polycrystalline state

Court
a solid material that is cohesive and made from an elastomer
The parties appear to be in agreement that "cohesive" and "elastomer" do not need further
construction, but 3M urges that the combination of these terms into "a cohesive elastomeric
solid" should be construed to include the limitation of "in a partial polycrystalline state."
3M argues that, during prosecution, Andover disclaimed cohesive elastomers that are not
in a partial polycrystalline state, by telling the Examiner: "Applicant has found that cohesiveness
and crystallinity are related, i.e. that the cohesive property depends on an elastomer being in a
stable crystalline-like state." (See D.I. 84, Ex. A at 6) However, as Andover points out, this

3

3M also argues that failing to specify that the crystalline structures are observable under
magnification makes it impossible to differentiate between structures that are sufficiently
crystalline and those that are not, because Andover's expert, Dr. Storey, explained that other
detection methods may detect levels of crystallinity that would be excluded in the context of
elastomers. (See D.I. 100, Ex. U at 10:16-18:8) This, 3M contends, would render the claims
indefinite under Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014) ("[A]
patent must be precise enough to afford clear notice of what is claimed, thereby apprising the
public of what is still open to them, in a manner that avoids a zone of uncertainty which
enterprise and experimentation may enter only at the risk of infringement claims."). However,
particularly given the competing expert opinions in the record, the Court concludes that 3M has
failed to prove, by clear and convincing evidence, that the claim is indefinite.
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statement was not made with regard to the asserted claims, but rather with regard to claims that
were ultimately rejected (see D.I. 102, Ex. G), and, in any case, "Andover's expressed
understanding of the science that enables the cohesive property are not words of 'manifest
exclusion or restriction' amounting to an express disavowal of claim scope" (D.I. 102 at 84).
Andover further contends that because the "in a partial polycrystalline state" limitation
appears in claims 3, 4 and 5 but not claim 6, it cannot be read into claim 6. Andover buttresses
this argument by noting that claim 5 also includes "a cohesive elastomeric solid," which, if
construed to include "in a partial polycrystalline state," would make redundant the explicitly
included limitation of"in a partial polycrystalline state" in that claim. (See '424 patent, col. 13 1.
12 to col. 141. 4) The Court finds this adds support to Andover's proposed construction. 4
Accordingly, the Court construes this term as "a solid material that is cohesive and made
from an elastomer."
IV.

CONCLUSION

The Court will construe the disputed claim terms of the patents-in-suit consistent with this
Memorandum Opinion. An appropriate Order follows.

4

3M also contends that there is no written description or enabling support in the
specification for a cohesive elastomer that is not in a partial polycrystalline state. The Court
finds that 3M has not met its burden to show, by clear and convincing evidence, that written
description or enabling support is lacking absent adoption of3M's proposed construction of"in a
partial polycrystalline state."
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