PureWick Corporation v. Sage Products, LLC
MEMORANDUM ORDER REGARDING CLAIM CONSTRUCTION. Signed by Judge Maryellen Noreika on 2/17/2021. (dlw)
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SAGE PRODUCTS, LLC,
C.A. No. 19-1508 (MN)
At Wilmington this 17th day of February 2021:
IT IS HEREBY ORDERED that the claim terms of U.S. Patents No. 8,287,508 (“the ’508
Patent”) and No. 10,376,407 (“the ’407 Patent) with agreed-upon constructions are construed as
follows (see D.I. 117 at 3, 11):
“an elongated exterior of the container” / “an elongated container” needs no
construction and will be given its plain meaning (’508 Patent, claims 1, 17)
“hence inward” will be given its ordinary meaning (’407 Patent, claim 2)
Further, as announced at the hearing on February 2, 2021, IT IS HEREBY ORDERED that
the disputed claim terms of U.S. Patents No. 10,226,376 (“the ’376 Patent”), No. 10,390,989 (“the
’989 Patent”), and the ’508 and ’407 Patents are construed as follows:
“the container is closed, except for having an array of openings . . . and at
least one outlet port . . .” / “container defining a chamber that is closed at
both ends . . . and having an array of openings in an elongated side of the
container . . . and at least one outlet port” need no construction. These
phrases will be given their plain and ordinary meanings with the
understanding that “closed” means “one way for liquid to come in, one way
for liquid to go out, and the container holds liquid” (’508 Patent, claims 1,
“array” means “a group of two or more” (’508 Patent, claims 1, 17)
“moisture-wicking article” / “wicking material” means “an article that
moves moisture by capillary action from one surface of the article to the
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other” (’508 Patent, claims 1, 3-6, 17-19; ’376 Patent, claim 9; ’407 Patent,
claims 1, 5, 7, 8, 10, 13-15)
“secured over the array of openings” means “held in place over the array of
openings” with the clarification that the component to be secured must be
held in place before the article is deployed and independent of deployment
(’508 Patent, claims 1, 3, 17-18)
“casing having [or defining] a fluid reservoir at a first end [and] . . ., a fluid
outlet at a second end . . .” means “an outer cover having [or defining] a
fluid reservoir at a first end and a fluid outlet at a second end” (’376 Patent,
claims 1, 11, 13, 14; ’989 Patent, claim 1)
“the chamber being defined at least partially by . . . the porous material and
the . . . layer of impermeable material” / “the chamber being [partially]
defined by a portion of the . . . porous material and a portion of the
impermeable material” will be given their plain and ordinary meanings with
the clarification to be at least partially defined by the porous material and
the impermeable layer, the porous material and the impermeable layer must
each touch the chamber at some point (’407 Patent, claims 1, 7, 13)
“a chamber [of/is void space] positioned” requires no construction and will
be given its plain and ordinary meaning (’407 Patent, claims 1, 7, 9, 13)
“opening of the cavity” will be given its plain and ordinary meaning (’407
Patent, claim 7)
The parties briefed the issues (see D.I. 105) and submitted a joint appendix that included
the patents at issue, expert declarations, excerpts from the patents’ prosecution histories and an
IPR and various types of extrinsic evidence (see D.I. 106; D.I. 107). Sage provided a tutorial
describing the relevant technology. The Court carefully reviewed all submissions in connection
with the parties’ contentions regarding the disputed claim terms, heard oral argument (see D.I. 127)
and applied the following legal standards in reaching its decision:
“[T]he ultimate question of the proper construction of the patent [is] a question of law,”
although subsidiary fact-finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 837-38 (2015). “[T]he words of a claim are generally given their ordinary and
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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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal
citations and quotation marks omitted). Although “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. Id. at 1314. “[T]he ordinary meaning of a claim term is its meaning
to the ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation marks
The patent specification “is always highly relevant to the claim construction analysis . . .
[as] 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). 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. “Even when the specification describes only a single embodiment, [however,] 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.” Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks
omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
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) (en banc), 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
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at 1317. “[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
In some cases, courts “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. 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 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.”
Phillips, 415 F.3d at 1318. Nonetheless, courts must not lose sight of the fact that “expert reports
and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer
from bias that is not present in intrinsic evidence.” Id. Overall, although 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).
THE COURT’S RULING
The Court’s ruling regarding the disputed claim terms of the ’376, ’989, ’407, and ’508
Patents was announced from the bench at the conclusion of the hearing as follows:
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Thank you for the arguments today. At issue we have four
patents and eight disputed terms or phrases.
I am prepared to rule on all of the disputes. I will not be
issuing a written opinion, but I will issue an order stating my rulings.
I want to emphasize before I announce my decisions that although I
am not issuing a written opinion, we have followed a full and
thorough process before making the decisions I am about to state. I
have reviewed the patents in dispute. I have also reviewed the
materials in the Joint Appendix, which include portions of the
prosecution history and an IPR, expert declarations, other patents,
articles and dictionary definitions. There was full briefing on each
of the disputed terms. There was also a tutorial on the technology
submitted by Sage. And there has been argument here today. All of
that has been carefully considered.
As an initial matter, I am not going to read into the record
my understanding of claim construction law and indefiniteness
generally. I have a legal standard section that I have included in
earlier opinions, including in Quest Diagnostics Investments LLC v.
Laboratory Corporation of America Holdings, No. 18-1436. I
incorporate that law and adopt it into my ruling today and will also
set it out in the order that I issue.
The parties have proposed similar proposals for the
definition of person of skill in the art. To the extent there are any
disagreements, neither party has argued that any differences in the
proposed definitions of a person of ordinary skill in the art are
relevant to the issues before me today.
Now to my rulings. The first term is two similar phrases “the container is closed, except for having an array of openings . . .
and at least one outlet port . . .” in claim 1 of the ’508 Patent and
“container defining a chamber that is closed at both ends . . . and
having an array of openings in an elongated side of the container . . .
and at least one outlet port,” in claim 17 of that patent. Plaintiff
asserts that no construction is needed. Defendant proposes that the
first phrase means “[t]he only openings on the container are the array
of openings and the outlet port(s); the container has no other
openings” and that the second means “[t]he container has no
openings on either the anterior or posterior end. The container has
The parties originally had ten disputed terms but came to an agreement on two of the terms
(“an elongated exterior of the container” / “an elongated container” and “hence inward”)
prior to the hearing.
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an array of openings in an elongated side of the container and an
Initially, let me say that today the parties agreed that closed
means there is one way for the liquid to come in and one way for it
to go out and that the container holds liquid. They also agree that the
container need not be airtight or sealed and that breaks in the surface
With that, I conclude that the meaning of the claim language
at issue is clear and the terms are used in accordance with their
ordinary meaning. No further construction is necessary. Indeed,
that also appears to be agreed-upon as in the briefing, Defendant
acknowledged that “the terms in the claim mean what they say” and
“the meaning can be ascertained from the claims themselves.”
I do not see the need to reorder the words of the term as Sage
proposes. And I will not read into the claim that the outlet port is an
opening. Neither the claims nor the specification support a
construction that defines an outlet port as an “opening.” Claim 1
distinguishes between the array of openings – referring to them as
openings – and the outlet port. This is consistent with the
specification, which in the summary of the invention states that the
array of openings is how “urine can be drawn into the chamber” and
distinguishes the openings from the “at least one outlet port through
which urine can be drawn away from the chamber.”
I also am not concluding that the array of openings must be
the only openings in the container rather than allowing them to be a
sub-group through which all liquid enters the container because that
would be inconsistent with the embodiment of the porous glass
which has pores other than those through which urine passes. But
the container must still be closed in that there must be one way for
fluid to enter, one way for it to exit and it must hold liquid.
Similarly, with respect to the second phrase in claim 17,
Sage’s proposed construction removes the word “chamber” and just
U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim
construction is a matter of resolution of disputed meanings and technical scope, to clarify
and when necessary to explain what the patentee covered by the claims, for use in the
determination of infringement. It is not an obligatory exercise in redundancy.”).
(D.I. 105 at 8).
(’508 patent, claim 1; see also 1:60-2:3).
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refers to the “container.” Different words in a patent claim are
presumed to have different meanings, however. And here, claim
17 requires “an elongated container defining a chamber that is
closed at both ends for collecting urine.” The container defines a
chamber, and it is the chamber that is “closed at both ends.”
The second term is “array,” in claims 1 and 17 of the ’508
Patent. Plaintiff’s proposed construction is “a group of two or
more.” Defendant proposes that array means “a regular
Here, I will construe “array” to mean “a group of two or
more.” As the parties have pointed out, “array” may be defined as
“a regular order or arrangement,” but it also may be defined as “a
group or collection of things.” It is this latter definition that is better
supported by the intrinsic evidence.
For example, the specification of the ’508 Patent states that
“the array of openings 16 in the container 12 are slotted perforations,
as shown in FIG 1, openings in a porous material such as frits in a
porous glass container, or openings in a mesh screen in the wall of
the container. The openings may have many different arrays, shapes
and spacings alternative to those of the openings 16 shown in FIG
1.” Thus, although the “array” in question may include an
arrangement of openings, it may also consist of an irregular series
of openings, like those in fritted glass. Defendant’s construction
would not include an irregular series of openings contemplated by
Plaintiff’s construction is also consistent with the way the
patentee used the term in the ’376 Patent, which at column 7, lines
8 through 10 states: “The permeable support 140 can define one or
more openings (e.g., an array of openings) to allow for fluid flow
from the permeable membrane 130 to the reservoir 110.” This is
extrinsic evidence to the ’508 Patent, but it is evidence of how the
term is used and understood by those of skill in the art.
See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).
(’508 Patent at 3: 38-44).
(See D.I. 107 Ex. 15 (porosity of a given “grade” is provided as a range of individual pore
sizes:“[t]his should correlate with the average pore size of the whole frit. This also says
nothing about the specific shape of the pores; some could be long and narrow, with the
same functional aperture as those that are closer to round.”))
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Defendant’s argument that Plaintiff’s construction renders
the word “array” unnecessary because “openings” is already plural,
and therefore implies two or more, does not change my construction.
The use of the plural form indicates “more than one thing,” but does
not necessarily require a “grouping” of those things, which is
required in my construction.
The third term is “moisture-wicking article” or “wicking
material,” which is in claims 1, 3 through 6, 17 through 19 of the
’508 Patent, claim 9 of the ’376 Patent and claims 1, 5, 7, 8, 10, and
13 through 15 of the ’407 Patent. Plaintiff proposes the construction:
“[a]n article that moves moisture by capillary action from one
surface of the article to the other.” Defendant proposes “an article
that includes a permeable material with a high absorption and
permeation rate, such as gauze, felt, terrycloth, thick tissue paper,
and paper towel.” The parties agree that the term means the same
thing in all three patents. And the parties agree that the ordinary
meaning of wicking includes moving moisture from one surface to
another surface by capillary action.
Here, I will construe this term consistent with its ordinary
meaning as “[a]n article that moves moisture by capillary action
from one surface of the article to the other.”
As PureWick’s expert, Dr. Collins, opined in his declaration,
a “wicking material refers to a material that moves liquid through it
from one surface to the other instead of absorbing or trapping the
liquid within the fabric’s fibers.” Therefore, a wicking material is
a permeable material that absorbs very little water into the material’s
fibers. Similarly, Sage’s expert, Dr. Newman, opined that
moisture wicking articles “broadly speaking are materials that allow
fluid to be transported from one area in the material to another area,
e.g., via capillary action.”
That is the way the term is used in the patents. For example,
the ’376 Patent states that “The permeable membrane 130 can be
configured to wick fluid away from the urethral opening and/or the
skin of the user.”
(D.I. 107 Ex. 17 at ¶ 37).
(’376 Patent at 6:28-30).
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I reject Sage’s construction that includes absorption and
permeation rate because it improperly conflates the property of
“wicking” with the separate properties of absorption and
permeation. As Dr. Collins explained, although materials can
provide for wicking, absorption and permeation, these are different
properties. And the patents treat them as different properties.
The ’508 Patent contrasts the “moisture-wicking article” of
the claimed invention with a “moisture-absorbent material”
disclosed in the prior art Kuntz reference. The ’508 Patent
describes Kuntz as disclosing a “pad containing a core of moisture
absorbent material,” and “urine that is expelled by the person is
passed into and absorbed by the moisture absorbent material.”
The invention of the ’508 Patent, however, is described as a device
that draws “urine into a moisture-wicking article” and then draws
the urine “into the urine collection device from the moisturewicking article.”
Similarly in the ’376 Patent, the specification states that
“permeable membrane” that “can be formed of a material that has
permeable properties with respect to liquids such as urine.” It
states that “[t]he permeable properties,” which “can be wicking,
capillary action, diffusion, or other similar properties or processes,”
which are referred to in the patent as “‘permeable’ and/or
‘wicking.’” And although the specification notes that “[t]he
permeable membrane 130 can have a high absorptive rate and a high
permeation rate such that urine can be rapidly absorbed by the
permeable membrane 130 and/or transported through the permeable
membrane 130,” a high absorptive rate and high permeation rate is
not required. The permeable membrane can also “be configured
(D.I. 107, Ex. 100 at ¶ 41).
(’508 Patent at 1:24-26 (distinguishing U.S. Patent No. 4,747,166 to Kuntz (Ex. 19))).
(’508 Patent at 1:15-24; see also D.I. 107 Ex. 19 at 2:48-51).
(’508 Patent at 1:53-59).
(’376 Patent at 6:12-14).
(Id. at 6:14-17).
(See also ’376 Patent at 35:39-42 (“For example, the permeable support 2840 can have an
exterior surface with wicking properties, a high absorptive rate, and/or a high permeation
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to wick fluid away from the urethral opening and/or the skin of the
user such that the dampness of the skin of the user is lessened and
infections are prevented.”
Finally, the ’407 Patent also describes the “wicking
material” as a material through which liquid moves. For example,
claim 1 discloses “a receptacle . . . configured to draw urine flowing
from said penis through the flexible wicking material and the porous
material into the chamber.” Likewise, the specification states that
the “urine . . . can be drawn through the wicking material and the
porous material into the chamber.” The ’407 Patent says nothing
about absorption and permeation.
The fourth term is “secured over the array of openings,”
which appears in claims 1, 3, 17 and 18 of the ’508 Patent. Plaintiff
proposes the construction “attached over the array of openings.”
Defendant proposes the term means “held in place over the array of
The crux of the dispute is whether the moisture-wicking
article must be secured before it is deployed. Here, I will construe
the term to mean “held in place over the array of openings” with the
clarification that it must be held in place before it is deployed and
independent of deployment.
This is supported by the intrinsic evidence. For example, at
column 4, lines 1 through 9, the patent states that the moisturewicking article can “be secured over the array of openings 16 by
applying elastic bands 22 about the moisture-wicking,” and that it
“can be secured to the container by such means as spring clips, with
water-resistant adhesive tape, Velcro fasteners, zippers, and snaps,”
or can be “in the form of a sock or sleeve that slips snugly over the
The intrinsic evidence supports a construction that requires
the securing prior to disposing or putting it by a person’s body. For
example, the claims of the ’508 Patent first claim securing the
rate such that urine can be rapidly absorbed and/or transported therethrough.”) (emphasis
(Id. at 6:17-33:14).
(’407 Patent at 3:49-60).
(See also ’508 Patent at 3:59-67; 5:3-9; claim 18).
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moisture-wicking article to the container and then disposing or
putting the secured article in contact with the body.
The specification of the ’508 Patent similarly references the
secured article being disposed into contact with a person. For
example, at column 3, lines 45 through 49, the patent states: “The
exterior of the container 12 is configured for enabling a moisturewicking article 20 to be secured over the array of openings 16 and
for enabling the secured moisture-wicking article 20 to be disposed
in contact with the region of a female body surrounding the urethral
Similarly at column 2, lines 15 through 22, the patent refers
to a method of transporting urine in the present invention. It lists
steps - step (b) is the securing step which occurs before step (c)
which is placing the secured article in contact with the person.
The fifth term is “casing having [or defining] a fluid
reservoir at a first end [and] . . ., a fluid outlet at a second end . . .,
which appears in claims 1, 11, 13, and 14 of the ’376 Patent and
claim 1 of the ’989 Patent. Plaintiff proposes the construction “an
enclosure having [or defining] a fluid reservoir and a fluid outlet.”
Alternatively, Plaintiff suggests replacing “enclosure” with “an
outer cover” within its construction. Defendant proposes the
construction “[a] casing secures a filling [in this case a permeable
support] by surrounding and enclosing it at least partially on all
sides. The casing has [or defines], among other things, a fluid
reservoir and a fluid outlet. A backing/impermeable layer in
combination with securing portions for other components is not a
Here, the parties seem to agree that the ordinary meaning of
a casing is “something that encases.” The crux of their dispute,
however, is whether a casing as claimed must include all of the
additional elements Defendant seeks to import as well as the
negative limitation that a backing layer in combination with
securing portions for other components is not a casing.
I agree with Plaintiff that the claim term does not require
reading in the limitations (or negative limitation) Defendant
proposes. And I will construe the term to mean “an outer cover
having [or defining] a fluid reservoir at a first end and a fluid outlet
at a second end.”
(See also id. at 1:64-2:3).
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This is consistent with the words of the claims. Claim 1 of
both the ’376 and ’989 Patents requires “a fluid impermeable casing
having a fluid reservoir at a first end, a fluid outlet at a second end,
and a longitudinally extending fluid impermeable layer coupled to
the fluid reservoir and the fluid outlet.”
Neither the claims nor the specification refer to a filling. The
specification has some embodiments in which the permeable
support is in the casing, but the claims do not have language that
requires that. Similarly, the specification references embodiments in
which the casing surrounds the permeable membrane, but the
claims do not require that.
Finally, I will not import Defendant’s proposed negative
limitations into the language of the claim. “Negative limitations will
generally not be added to claim terms without ‘express disclaimer
or independent lexicography in the intrinsic record that justifies
including the negative limitation.’” Here, I find no such express
disclaimer or lexicography in the pieced-together different parts of
the specification and prosecution that Defendant cites. Nor do I find
that the portions of the specification - aside from the disclaimer
require me to read in the limitation proposed if, contrary to the way
I read Defendant’s proposed language, it were not found to be a
The sixth term is “the chamber being defined at least
partially by . . . the porous material and the . . . layer of impermeable
material” / “the chamber being [partially] defined by a portion of the
. . . porous material and a portion of the impermeable material,” as
appears in claims 1, 7, and 13 of the ’407 Patent. Plaintiff contends
that no construction is necessary. Defendant has proposed that the
language be construed “[t]he chamber is defined [at least partially]
by the porous material and the impermeable layer/material. A
chamber is not defined by the porous material and impermeable
layer/material if there are other material(s) between the porous
material and impermeable layer/material.”
(E.g., ’989 Patent at 21:31-33 (“In some implementations , the impermeable casing 1504
can be configured to contain a permeable membrane disposed over a permeable support.”);
’989 Patent at 21:50-60 (“… The permeable membrane 1530 and the permeable support
1540 can be positioned within the impermeable casing ….”)).
(E.g., id. at 24:51-58).
Novartis Pharm. Corp. v. Par Pharm., Inc., C.A. No. 14-1494-RGA, 2015 WL 7566615,
at *4 (D. Del. Nov. 23, 2015).
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Here, the dispute is over adding to the construction the
sentence in Defendant’s proposal as to when a chamber is not
defined by the requisite materials which Defendant asserts is based
on disclaimers during prosecution when the patentee tried to
distinguish prior art references.
Here, I will construe the term to have its ordinary meaning
with the clarification that to be at least partially defined by the
porous material and the impermeable layer, the porous material and
the impermeable layer must each touch the chamber at some point.
I do not believe the statement of disclaimer that Defendant
proposes is appropriate as I think it is broader than what was
discussed during the prosecution and certainly broader than
anything that was clearly and unambiguously disclaimed.
Defendant’s proposed disclaimer prohibits any other material to be
between the two things defining the chamber. But as discussed
during the argument today, both the Suzuki reference and the Kuntz
reference had additional materials in the chamber itself that were in
effect between the two parts defining the chamber. Thus, in the
absence of a clear and unambiguous disclaimer supporting
Defendant’s proposal, I cannot accept it.
The seventh term is “a chamber [of/is void space]
positioned,” as appears in claims 1, 7, 9, and 13 of the ’407 Patent.
Plaintiff proposes that no construction is necessary. Defendant has
proposed construing this language to mean “[a]n enclosed space or
compartment [of void space] placed in a certain position.”
I agree with Plaintiff that no construction of this language is
necessary. The language is clear and unambiguous. Indeed, the term
chamber is used in the ’508 Patent and the parties did not seek to
construe it. Defendant’s proposed construction adds nothing in
terms of clarity or precision; in fact, by saying it’s enclosed even
though there must be inlets and an outlet, it may add ambiguity. So
I will not add that limitation.
See Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019) (“To
disavow claim scope, the specification must contain expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”) (internal quotation omitted);
see also Citrix Systems, Inc. v. Workspot, Inc., C.A. No. 18-588-LPS, 2020 WL 5634219,
at *4, 7 (D. Del. Sept. 21, 2020) (requiring “clear and unambiguous disclaimer of claim
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And finally, we have “opening of the cavity” in claim 7 of
the ’407 Patent. Plaintiff asserts that it means “opening.” Defendant
asserts that it is indefinite because the term lacks antecedent basis.
The parties agree that there is no antecedent basis to the term
as written. But Plaintiff asks me to correct the claim to remove the
reference to “the cavity” which would address the lack of antecedent
basis. I am not at this point on the record before me prepared to
conclude that correction is not subject to reasonable debate based on
a review of the specification and the claim language and the
That being said, for a claim to be held invalid for
indefiniteness, there must be clear and convincing evidence..
Here, I conclude that Defendant has not met its burden to show that
this is indefinite. And I will give the term its plain and ordinary
meaning for now.
But I will say that should there still be a disagreement
regarding the definiteness of this term in the future, Defendant may
raise the issue later, if appropriate, after full fact and expert
The Honorable Maryellen Noreika
United States District Judge
See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 912 n. 10 (2014) (citing
Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91, 95 (2011)).
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