RainDance Technologies Inc. et al v. 10X Genomics Inc.
MEMORANDUM OPINION providing claim construction for a single term in U.S. Patent Nos. 8,822,148, 8,329,407, 8,304,193, 8,658,430, and 8,889,083. Within five days the parties shall submit a proposed order consistent with this Memorandum Opinion. Signed by Judge Richard G. Andrews on 5/17/2017. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
RAINDANCE TECHNOLOGIES, INC., and
THE UNIVERSITY OF CHICAGO,
Civil Action No. 1:15-cv-00152-RGA
1OX GENOMICS, INC.
Jack B. Blumenfeld, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
Karen Jacobs, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE;
Edward R. Reines, Esq. (argued), WEIL, GOTSHAL & MANGES LLP, Redwood Shores, CA;
Derek C. Walter, Esq., WEIL, GOTSHAL & MANGES LLP, Redwood Shores, CA.
Attorneys for Plaintiff
Steven J. Balick, Esq., ASHBY & GEDDES, Wilmington, DE; Tiffany Geyer Lydon, Esq.,
ASHBY & GEDDES, Wilmington, DE; Andrew C. Mayo, Esq., ASHBY & GEDDES,
Wilmington, DE; David I. Gindler, Esq. (argued), IRELL & MANELLA LLP, Los Angeles, CA;
Andrei Iancu, Esq., IRELL & MANELLA LLP, Los Angeles, CA; Lauren Nicole Drake
(argued), Esq., IRELL & MANELLA LLP, Los Angeles, CA; Elizabeth Chenyi Tuan, Esq.,
IRELL & MANELLA LLP, Los Angeles, CA.
Attorneys for Defendant
Presently before the Court is the issue of claim construction of a single term in U.S.
Patent Nos. 8,822,148 ("the '148 patent"), 8,329,407 ("the '407 patent"), 8,304,193 ("the '193
patent"), 8,658,430 ("the '430 patent"), and 8,889,083 ("the '083 patent"). The Court has
considered the Parties' Joint Claim Construction Brief. (D.I. 93). The Court heard oral
argument on December 16, 2016. (D.I. 105). During argument, the Court instructed the parties
to provide expert testimony as to the meaning of the disputed term "polymerase chain
reaction"/"PCR." (D.I. 105 at 97:24-98:7). The Court issued its claim construction opinion for
all other disputed terms on January 26, 2017. (D.I. 116). The Court heard further argument,
including expert testimony, on the remaining disputed term on March 6, 2017. (D.I. 169) ("Hr'g
Plaintiffs filed this action on February 12, 2015, alleging infringement of six patents on
behalf of both Plaintiffs. (D.I. 1). Plaintiffs refer to these patents as the Ismagilov patents. On
April 23, 2015, Plaintiffs filed an amended complaint asserting an additional patent, the '430
patent, on behalf of PlaintiffRainDance only. (D.I. 12). On March 25, 2016, Plaintiffs filed a
second amended complaint in which they asserted the '430 patent and only five of the Ismagilov
patents. (D.I. 32). The '430 patent was dismissed on March 24, 2017. (D.I. 138).
"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. A WH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). "' [T]here is no magic formula or
catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
415 F.3d at 1324) (alteration in original). When construing patent claims, a court considers the
literal language of the claim, the patent specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), ajf'd, 517 U.S. 370
(1996). Of these sources, ''the 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."
Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
"[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 (citations and internal quotation marks omitted). "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321
(internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the application of the widely accepted
meaning of commonly understood words." Id. at 1314.
When a court relies solely upon the intrinsic evidence-the patent claims, the
specification, and the prosecution history-the court's construction is a determination oflaw.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also
make factual findings based upon consideration of extrinsic evidence, which "consists of all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips, 415 F .3d at 1317-19 (internal quotation marks
omitted). Extrinsic evidence may assist the court in understanding the underlying technology,
the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic
evidence, however, is less reliable and less useful in claim construction than the patent and its
prosecution history. Id.
"A claim construction is persuasive, not because it follows a certain rule, but because it
defines terms in the context of the whole patent." 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 GMBHv. Int'/ Trade
Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation and internal quotation marks omitted).
CONSTRUCTION OF DISPUTED TERM
The patents-in-suit were described and representative claims provided in the Court's first
claim construction opinion. (D.I. 116). There is only one disputed term left to construe.
"polymerase chain reaction"/"PCR"
Plaintiffs 'proposed construction: "a method of amplifying nucleic acids that
involves repeated cycles of DNA replication, wherein the replicated DNA serves
as a template for additional replication using a polymerase"
Defendant's proposed construction: "Polymerase chain reaction (PCR) refers to
methods by K. B. Mullis (U.S. Patent Nos. 4,683,195 and 4,683,202, hereby
incorporated by reference) for increasing concentration of a segment of a target
sequence in a mixture of genomic DNA without cloning or purification." In the
alternative: "methods for increasing concentration of a segment of a target
sequence in a mixture of genomic DNA without cloning or purification
comprising three basic steps: (1) denaturing the strands of DNA so that the single
strands can be used as a template; (2) treating the sample with oligonucleotide
primers selected to be substantially complementary to a specific sequence on each
strand to be amplified; and (3) synthesizing a primer extension product using each
of the single strands as a template. These steps are repeated until the desired level
of sequence amplification is obtained."
Court's construction: "Method of amplifying a target sequence of nucleic acids
that involves repeated cycles of DNA replication, wherein 1) strands of DNA are
denatured to form single-strand templates; 2) the templates are treated with
oligonucleotide primers and a polymerase enzyme is used to extend the primers to
produce replicated double-stranded DNA; 3) the replicated DNA then serves as a
template for additional replication. The target sequence need not be specifically
identified as a target in advance of the reaction."
As an initial matter, I told the parties during oral argument in December that I would adopt
the express definition referencing the Mullis patents provided in the specification of the nowdismissed' 430 patent at least for that patent. (D.I. 105 at 98:2-5). My opinion on this construction
has not changed. As the Ismagilov patents do not define PCR with respect to the Mullis patents, I
decline to adopt such a limited construction for these patents.
The parties dispute whether the target sequence, or portion of DNA to be replicated, must
be known prior to the reaction. I agree with Plaintiffs that the target sequence need not be known
in advance. Defendant argues that techniques such as Random PCR in which the target sequence
is not known in advance are not PCR as a person of ordinary skill understands it. (D.I. 93 at 63;
Hr'g Tr. at 89:7-90:3). Plaintiffs contend that Random PCR is simply a specific type of reaction
that falls under the broad umbrella of PCR. (D.I. 93 at 65; Hr'g Tr. at 24:10-21). Plaintiff's expert,
Dr. Furneaux, testified extensively about why Random PCR is simply one of many "different
flavors" of PCR. (Hr'g Tr. at 23:8-31:4). I find Dr. Furneaux's testimony on this point credible.
It seems to me that techniques involving Random PCR or any other techniques where the targets
are unknown in advance of the reaction are not distinct from generalized PCR; rather, they are
simply a specific sub-type of PCR.
As to the remaining points of dispute, it seems to me that Defendant is essentially arguing
that Plaintiffs' proposed construction is too broad, while Plaintiffs counter that Defendant's
proposed alternate construction is too narrow.
(D.I. 131 at 4; D.I. 132 at 2).
I agree that
Defendant's construction is too narrow. It seems to me that Defendant is essentially offering the
Mullis method as its alternate construction. (Hr'g Tr. at 17:17-18:15). I have already rejected this
construction. Plaintiffs have provided substantial evidence that a person of ordinary skill in the
art would understand PCR to encompass many techniques that all share a common thread: repeated
cycles of DNA replication using a polymerase enzyme. (D.I. 132 at 6). Defendant does not dispute
that this broadly describes PCR. (Hr'g Tr. at 84:6-17). Plaintiffs' expert, Dr. Fumeaux, provided
a detailed critique of why the elements of Defendant's proposed construction unreasonably limit
the meaning of this term. (D.I. 169 at 18:16-39:22). I find Dr. Fumeaux's critique credible.
On the other hand, I agree with Defendant that Plaintiffs' proposed construction lacks
sufficient detail about the three basic steps of PCR. (D.I. 131 at 4). Therefore, I will construe the
term "PCR" in the Ismagilov patents to mean "Method of amplifying a target sequence of nucleic
acids that involves repeated cycles of DNA replication, wherein 1) strands of DNA are denatured
to form single-strand templates; 2) the templates are treated with oligonucleotide primers and a
polymerase enzyme is used to extend the primers to produce replicated double-stranded DNA; 3)
the replicated DNA then serves as a template for additional replication. The target sequence need
not be specifically identified as a target in advance of the reaction."
Within five days the parties shall submit a proposed order consistent with this
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