PerkinElmer Health Sciences, Inc. v. Agilent Technologies, Inc.

Filing 106

Judge Nathaniel M. Gorton: ORDER entered. MARKMAN ORDER(Patch, Christine)

United States District Court
District of Massachusetts
________________________________
)
PERKINELMER HEALTH SCIENCES,
)
INC.,
)
Plaintiff,
)
)
Civil Action No.
v.
)
12-10562-NMG
)
AGILENT TECHNOLOGIES, INC.,
)
Defendant.
)
________________________________ )
MARKMAN ORDER
GORTON, J.
Plaintiff instituted this action for patent infringement and
breach of contract after defendant stopped paying royalties under
a license agreement between the parties.

The Court now construes

certain claims within the patents-in-suit following extensive
briefing and a Markman hearing.
I.

Background
A.

The Parties

Plaintiff PerkinElmer Health Sciences, Inc. (“PerkinElmer”)
is a Delaware Corporation with its principal place of business in
Waltham, Massachusetts.

As described in the Court’s prior order

denying defendant’s motion to dismiss (Docket No. 62), Yale
University granted a broad, exclusive license to plaintiff to use
United States Patent No. 5,130,538 (“the ‘538 Patent,” now
expired) and the related patents, United States Patent Nos.
5,686,726 (“the ‘726 Patent”) and 5,581,080 (“the ‘080 Patent”).
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As explained further infra, all three patents pertain to the
analysis of charged ions through a form of mass spectrometry.
Defendant Agilent Technologies, Inc. (“Agilent”) is a
Delaware Corporation with its principal place of business in
Santa Clara, California.

A predecessor-in-interest to plaintiff

granted a non-exclusive sublicense (“the Sublicense Agreement”)
to a predecessor of defendant.

Defendant made substantial

royalty payments under the Sublicense Agreement for several years
until June, 2011, at which time it informed plaintiff that it
would no longer make such royalty payments because the ‘726 and
‘080 Patents were believed to be invalid due to double-patenting.
B.

The Technology

The two patents-in-suit concern a method for conducting
“mass spectrometry,” a technique used to determine the molecular
weight of a chemical compound.

Mass spectrometry begins when the

subject compound is ionized, i.e. electrically charged, and then
exposed to magnetic and/or electrical fields.

The ionized

particles move differently when exposed to such fields depending
upon their mass, i.e. depending upon the ratio of mass to the
charge (referred to as the “m/z ratio”).

The movements are then

charted and the molecular weight of the subject compound can be
determined.
The asserted patents specifically teach a method of mass
spectrometry involving the use of electrospray ionization (“ESI”)

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on large, biological molecules.

In general terms, the process

involves infusing the subject compound with a higher charge (the
“z” in the “m/z ratio”) by charging the subject ions multiple
times, for example, by first charging the compound in a liquid
and then again in a gaseous state.

Plaintiff asserts that the

patented invention permits scientists to study pertinent
molecules without destroying the subject compounds, a problem
associated with earlier methods.

The ‘080 Patent describes the

method by which the ESI technology works while the ‘726 Patent
describes the composition of the matter created during the ESI
process which the patentee claims to have invented.
II.

Claim Construction
The parties submitted six terms for the Court’s

consideration.

They have stipulated to the construction of three

terms but dispute how the other three terms should be construed.
A.

Legal Standard

In analyzing a patent infringement action, a Court must 1)
determine the meaning and scope of the patent claims asserted to
be infringed and 2) compare the properly construed claims to the
infringing device. Markman v. Westview Instruments, Inc., 52 F.3d
967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
The first step, known as claim construction, is an issue of law
for the court to decide. Id. at 979.
determined by the finder of fact. Id.

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The second step is

The claims themselves define the scope of the patented
invention.

See Phillips v. AWK Corp., 415 F.3d 1303, 1312 (Fed.

Cir. 2005) (en banc).

Claim terms are generally given their

“ordinary and customary meaning”, which is the meaning that a
person skilled in the art familiar with the specification and
prosecution history would attribute to the claim term. See id. at
1312-13.

The patent specification is “the single best guide to

the meaning of a disputed term” because it may reveal “a special
definition given to a claim term that differs from the meaning it
would otherwise possess” or contain “an intentional disclaimer,
or disavowal, of claim scope by the inventor.” Id. at 1314.

The

Court should also consult the prosecution history to see how the
inventor and PTO understood the patent and to make sure that
patent owner does not argue in favor of an interpretation it has
already disclaimed during the prosecution stage. Id. at 1317.
In the rare event that analysis of the intrinsic evidence
does not resolve an ambiguity in a disputed claim term, the Court
should turn to extrinsic evidence, such as inventor and expert
testimony, treatises and technical writings. Id. at 1314.
Although extrinsic evidence may be helpful in construing claims,
the intrinsic evidence should be afforded the greatest weight in
determining what a person of ordinary skill would have understood
a claim to mean. Id. at 1324.

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B.

Disputed Claim Terms

The disputed terms appear within several claims of both the
‘080 and ‘726 Patents.

For purposes of context, some of the

disputed terms are set forth as they appear in two representative
claims, with the disputed terms highlighted:
U.S. Patent No. 5,686,726 (Claim 1)
A composition of matter comprising a population of
multiply charged polyatomic ions derived from a distinct
polyatomic parent molecular species, all molecules of
said distinct polyatomic parent molecular species having
substantially the same molecular weight and chemical
identity, the number of charges on each ion in said
population of multiply charged polyatomic ions defining
that ion’s charge state number, said population of
multiply charged polyatomic ions comprising a plurality
of sub-populations of ions, all the ions of each of said
sub-populations having the same charge state number, said
same charge state number differing from the charge state
numbers of the ions in the other sub-populations of said
plurality
of
sub-populations,
said
plurality
of
sub-populations comprising one sub-population for each
value of charge state number beginning with a smallest
value not less than three and extending to a largest
value not less than five.
U.S. Patent No. 5,581,080 (Claim 50)
A method for determining the molecular weight of
molecules by producing a population of multiply charged
ions for detection by a mass analyzer, wherein all
members of said population with a molecular weight
greater than 5000 have at least three charges per ion,
comprising the steps of:
supplying a solution containing as a solute at least one
distinct polyatomic parent molecular species with a
molecular weight greater than 5000 daltons, all molecules
of each of said distinct polyatomic parent molecular
species having substantially the same molecular weight;
dispersing said solution into a gas in the presence of an
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electric field to form charged droplets; and,
evaporating said charged droplets until at least some
molecules of at least one of said distinct polyatomic
parent molecular species become dispersed as multiply
charged ions in a gaseous phase.
C.

Construction of Disputed Terms

As noted supra, the parties have proposed stipulated
constructions for three claim terms.
constructions will be adopted.

Those stipulated

The Court construes the remaining

disputed terms as follows:
1.

“multiply charged”

The parties agree that the term “multiply charged,” which
appears throughout both of the patents-in-issue, requires
construction but disagree on that construction in two material
respects: 1) whether “multiply” should be construed as “three or
more charges” or does not need to be construed at all and 2)
whether “charged” refers only to “ions” or also refers to “polar
atoms or groups bearing charge or bearing charged species.”

The

Court adopts the latter construction in both instances.
The prosecution histories of both the ‘726 and ‘080 Patents
contain statements by the inventor and the examiner that the
claimed inventions concern sub-populations of ions with three or
more charges, distinguishing it from the prior art that concerned
subgroups with only one or two charges.

That evidence persuades

the Court that the inventors disclaimed application of the
inventions to sub-populations of one or two charges and thus
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plaintiff is foreclosed from arguing to the contrary. See
Phillips, 415 F.3d at 1317 (as discussed supra).
Plaintiff’s disclaimer is, however, reflected in other
language within the claim term and does not need to be imported
into the meaning of “multiply.”

Claim 1 of the ‘726 Patent,

reproduced supra, specifies that the invented matter comprises
sub-populations of charged atoms having a minimum “charge state
number ... not less than three.”

Claim 1 of the ‘080 Patent

similarly specifies that the charged sub-populations do not have
a charge state number “less than three.”

The prosecution history

and the claim terms are thus in alignment, rendering construction
of the term “multiply” unnecessary and contrary to the
established canon that construction should give meaning to every
limitation of a claim. See Bicon, Inc. v. Straumann Co., 441 F.3d
945, 950-51 (Fed. Cir. 2006) (reading limitations out of claim
violates principle that “claim language should not be treated as
meaningless” and contravenes specification).
The second debate concerns whether “multiply charged” refers
solely to ions or to ions and “polar atoms.”

Convoluted as it

may seem, the intrinsic evidence supports the latter
construction.

When summarizing the invention in the

specification, the ‘726 Patent teaches that “this multiple
charging phenomenon” can be produced from large and complex
molecules, other than proteins, provided that, if the subject

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molecules are not themselves ions, they “contain polar atoms or
groups . . . to which the charge bearing species can attach”.
The same language is repeated in the specification of the ‘080
Patent.

In light of the description in the specifications of

both patents, the ordinary and customary meaning of “multiply
charged” fairly encompasses both ions and “polar atoms.” See
Phillips, 415 F.3d at 1312-13.

The Court will therefore adopt

plaintiff’s proposed construction.
2.

Molecular Weight Descriptions

Defendant argues that the descriptions of molecular weight,
used in claims of both the ‘726 and ‘080 Patents, as “not less
than 5000,” “not less than about 5000” and “greater than 5000,”
should be construed to mean that the molecular weight involved
has no upper limit.

Defendant’s position is, in essence, that

the failure to specify a maximum molecular weight is an
affirmation that none exists.

The Court disagrees.

The meaning of the claim language at issue is not informed
by the case law.

Defendant particularly relies upon MagSil

Corporation v. Hitachi Global Storage Technologies, Incorporated,
687 F.3d 1377 (Fed. Cir. 2012).

That case concerns hard disk

storage technology in which the Federal Circuit affirmed the
District Court’s grant of summary judgment on MagSil’s
infringement claims because the subject patent was not “enabling”
under 35 U.S.C. § 112. Id. at 1377.

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The District Court had

construed “a change in resistance of at least 10%” to mean at
least 10%, where the percentage was determined by a mathematical
expression and subsequently found that the term encompassed
resistance changes “up to infinity”. Id. at 1381 (citation
omitted).

The Federal Circuit approved that construction because

the term had a “lower threshold, but not an upper limit.” Id. at
1383.

The case does not, however, stand for the proposition that

“at least 10%” or other phrases identifying only a minimum value
preclude the finding of an upper limit and such an argument is
readily refuted. See, e.g. Adams Respiratory Therapeutics, Inc.
v. Perrigo Co., 616 F.3d 1283, 1291 (Fed. Cir. 2010) (noting,
without disapproval, that district court construed “at least” to
indicate “an absolute lower limit”).
Use of percentages or mathematical expressions such as “not
less than” or “greater than” can plausibly mean that there is no
upper bound with respect to a claim term but the intrinsic
evidence presented here implies the existence of some upper
limit.

The patented technology concerns mass spectrometry with a

particular focus on the measurement of biological matter, citing
proteins as an example.

The largest known proteins at the time

of patenting had a high, but definite, mass, approaching four
million daltons (the unit of measurement used in the patents) and
neither party suggests that molecules with infinite mass did, or
could, exist.

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Ultimately, the disputed terms here provide an example which
“as understood by a person of skill in the art [is] readily
apparent even to lay judges.” Phillips at 1314.

The Court

therefore rejects defendant’s proposed construction and declines
to construe the terms beyond their ordinary meaning.
3.

Terms within Preamble

Defendant asserts that two terms in the preambles of the
disputed claims, i.e. “a composition of matter” in the ‘726
Patent and “a method of determining molecular weight” in the ‘080
Patent, are not limiting as required.

The Court concludes that

the preambles to the claims of the ‘726 Patent are limiting but
the preambles to the claims of the ‘080 Patent are not.
A preamble should not be construed if it states no new
limitation outside the body of the claim but “merely states, for
example, the purpose or intended use of the invention.” Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999).

It need be construed only if it recites information

“necessary to give life, meaning, or vitality” to the claim, such
as when
1) it is essential to understanding the limitations or
terms in the claim body,
2) it recites additional structure or steps underscored
as important by the specification,
3) a party relied on it during the prosecution to
distinguish the claimed invention from prior art, or
4) it provides the antecedent basis for a limitation in
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the body of the claim in a manner that “indicates a
reliance on both the preamble and claim body to define
the claimed invention.”
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808-09 (Fed. Cir. 2002).
With respect to the ‘726 Patent, the inventors relied upon
the discovery of a “new composition of matter” during prosecution
in order to overcome an initial rejection of their application by
distinguishing the ‘726 Patent from their own prior art, namely,
the ‘538 Patent.

That prior art concerned a method for producing

multiply charged ions.

In contrast, the ‘726 Patent purports to

patent compounds as they exist while under mass analysis and in
their multiply charged state, a state which has not previously
occurred because the subject compounds have never been charged to
the degree achieved by the inventors.

While the preamble phrase

“a composition of matter” undoubtedly categorizes the patented
material, in this case the prosecution history makes clear that
the inventors have relied upon it to obtain the new patent.
Similar evidence of reliance upon “a method of determining
the molecular weight” during prosecution of the ‘080 Patent
appears lacking.

Although plaintiff argues that the preamble

provides the antecedent basis for understanding the claim terms,
invocation therein of the phrase “a mass analyzer” adds nothing
to the reference within the body of the claim to “said mass
analyzer.”

Accordingly, while it may be an antecedent basis for

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the reference, the preamble phrase does not “define the claimed
invention.”
ORDER
In accordance with the foregoing,
1)

the term “biopolymer” means: “Large molecules found in
biological systems (such as proteins, nucleic acids and
polysaccharides) that comprise linked subunits (such as
amino acids, nucleotides, and sugars)”;

2)

the term “Coherent sequence of peaks ... immediately
adjacent peak in said coherent sequence” means: “A
series of peaks of a mass spectrum corresponding to a
sequence of charge states in which each peak can be
resolved and represents ions having the same mass-to
charge ratio, where the charge state numbers of the
ions in each peak are greater than one, and the charge
states of adjacent peaks differ by one charge”;

3)

the terms “values of mass/charge (m/z)” and
“mass/charge (m/z) values” mean: “Values calculated by
dividing the mass of an ion by its charge”;

4)

the term “multiply charged” means: “With multiple polar
atoms or groups bearing charge or bearing charged
species”;

5)

the terms describing molecular weight as “not less than
5000,” “not less than about 5000” and “greater than
5000,” imply the existence of an upper bound but do not
require further construction; and

6)

the preambles to the claims of the ‘726 Patent are
limiting but the preambles to the claims of the ‘080
Patent are not.

So ordered.
/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated June 5, 2013

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