Wilson et al v. Corning, Inc.

Filing 854

MEMORANDUM OPINION AND ORDER - The term "continuous flow" is construed as set forth in this Memorandum Opinion and Order. Defendant's renewed motion for summary judgment on inventorship is DENIED.(Written Opinion) Signed by Judge Donovan W. Frank on 9/16/2022.(las)

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UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
John R. Wilson and
Wilson Wolf Manufacturing Corp.,

Civil No. 13-210 (DWF/TNL)

Plaintiffs,
MEMORANDUM
OPINION AND ORDER

v.
Corning, Inc.,
Defendant.

Britta S. Loftus, Esq., Devan V. Padmanabhan, Esq., Erin O. Dungan, Esq., Mariah L.
Reynolds, Esq., Michelle E. Dawson, Esq., Paul J. Robbennolt, Esq., and Sri K.
Sankaran, Esq., Padmanabhan & Dawson, P.L.L.C., counsel for Plaintiffs.
Bradley R. Love, Esq., Jeff M. Barron, Esq., and Paul Bryan Hunt, Esq., Barnes &
Thornburg LLP; Ivan Poullaus, Esq., Kimball R. Anderson, Esq., Linda T. Coberly, Esq.,
Paula W. Hinton, Esq., and Robine Kirsty Morrison, Esq., Winston & Strawn; Kelsey
McElveen, Esq. and Lora Mitchell Friedemann, Esq., Fredrickson & Byron, P.A., counsel
for Defendant.
________________________________________________________________________
INTRODUCTION
This matter is before the Court on the issue of patent claim construction pursuant
to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The Court considers the
claim construction issue below.
BACKGROUND
The facts and background of this case have been thoroughly recited in prior orders
and will not be restated in full here. Relevant to this motion is Plaintiffs’ allegation that
John R. Wilson (“Wilson”) or employees of Wilson Wolf Manufacturing Corp. (“Wilson

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Wolf”) (together, “Plaintiffs”) should be named as inventors of U.S. Patent No. 7,745,
209 (the ’209 Patent) and U.S. Patent No. U.S. Patent No. 8,273,572 (the ’572 Patent). In
the Complaint, Plaintiffs seek to remove the named Corning, Inc. (“Defendant” or
“Corning”) scientists (Dr. Allison Tanner and Greg Martin) as inventors of the Patents
and to name Wilson as the sole inventor.1 Corning previously moved for summary
judgment on Plaintiffs’ sole inventorship claim with respect to the ’209 Patent and the
’572 Patents, arguing that the claims fail as a matter of law because the Patents
encompass perfusion devices and Wilson admitted that he did not contribute to the
concept of perfusion in the claimed inventions.2 The Court denied the motion as to the
’209 Patent without prejudice, concluding that “a proper construction of the term
‘continuous flow’ would assist a determination of inventorship of the ’209 [Patent] and
that fact issues remain as to the inventorship of the ’572 Patent.” (Doc. No. 461 at 18.)
The Court further explained that it would reconsider Corning’s motion when the term
“continuous flow” was properly construed.
The Court now addresses the construction of “continuous flow” as it is used in two
dependent claims of the ’209 Patent.

1

The ’209 Patent and the ’572 Patent share the same specification. For ease of
reference, the Court cites to the ’209 Patent (Doc. No. 670-1).
2

In an Expert Report dated November 13, 2015, John Wilson stated: “The Wilson
Wolf disclosures at issue were directed to static devices and static cell culture. The
Wilson Wolf disclosures do not teach ‘continuous flow’ if ‘continuous flow’ is construed
to mean perfusion.” (Doc. No. 671 (Expert Report of John Wilson), Ex. 3 at 11 n.2.)

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DISCUSSION
I.

Claim Construction
A.

General Principles of Claim Construction

Patent claim construction, i.e., the interpretation of the patent claims that define
the scope of the patent, is a matter of law for the court. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).
Proper claim construction requires an examination of the intrinsic evidence of record,
including the claim language, the specification, and the prosecution history. Bell Atl.
Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed.
Cir. 2001); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The starting point for claim construction is a review of the words of the claims
themselves. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(citation omitted); see also Vitronics, 90 F.3d at 1582 (“First, we look to the words of the
claims themselves, both asserted and nonasserted, to define the scope of the patented
invention.”). The words of a claim generally carry “the meaning that the term would
have to a person of ordinary skill in the art at the time of the invention.” Phillips, 415
F.3d at 1313. Claims must also be read in view of the specification. Id. at 1315. The
specification is always “highly relevant” to claim construction and “the single best guide
to the meaning of a disputed term.” Id. (citing Vitronics, 90 F.3d at 1582.) “[T]he
specification necessarily informs the proper construction of the claims.” Id. at 1316
(explaining that the claims must be construed so as to be consistent with the
specification).
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The specification may prescribe a special definition given to a claim term that
differs from the meaning it would otherwise possess, or it may reveal a disavowal or
disclaimer of claim scope by the inventor. Id. In such cases, the intention that is
expressed by the inventor in the specification is dispositive. Id. The Court may not,
however, import limitations from the specification into the claims. Id. at 1323. To avoid
importing limitations from the specification into the claims, the Court considers that “the
purposes of the specification are to teach and enable those of skill in the art to make and
use the invention and to provide a best mode for doing so.” Id.
The Court “should also consider the patent’s prosecution history,” which
“provides evidence of how the [United States Patent and Trademark Office (“USPTO”)]
and the inventor understood the patent.” Id. at 1317 (internal quotations and citation
omitted). The prosecution history “consists of the complete record of the proceedings
before the [USPTO] and includes the prior art cited during the examination of the
patent.” Id. (citation omitted). The prosecution history may “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. (citing Vitronics, 90 F.3d at 1582–83).
A court may, in its discretion, consider extrinsic evidence, though such evidence is
less reliable than intrinsic evidence. Id. at 1317-18. In most situations, intrinsic evidence
will resolve any ambiguity in a disputed term, and when it does so, the court may not rely
on extrinsic evidence. Vitronics, 90 F.3d at 1583.

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B.

Disputed Term — “continuous flow”

The parties dispute the meaning of the term “continuous flow” as it appears in
dependent claims 12 and 31 of the ’209 Patent:3
11. The apparatus of claim 2, whereby said integral unit comprises a
plurality of modules.
12. The apparatus of claim 11, wherein said plurality of modules are
interconnected in series or staggered to permit continuous flow.
...
30. The apparatus of claim 17, wherein said integral unit comprises a
plurality of modules.
31. The apparatus of claim 30, wherein said plurality of modules are
interconnected in series or staggered to permit continuous flow.
(’209 Patent at c. 13, ll:53-57; c. 14, ll:52-56) (underlining added).)
Plaintiffs contend that the phrase “continuous flow” is properly construed as not
requiring perfusion and to mean that “the modules are connected such that: a) their cell
growth chambers are in fluid communication so that medium can pass through them;
and/or b) their tracheal spaces are in fluid communication so that gas can pass through
them.” Corning, on the other hand, asserts that the term “continuous flow” is “a type of
perfusion (a perfusion that is continuous).”4 The Court briefly summarizes the parties’
arguments below.

3

The Court includes the language of Claims 11 and 30 for context.

4

In addition, Corning asserts that if the Court construes “continuous flow” to mean
a type of perfusion, it is entitled to summary judgment on Plaintiffs’ sole inventorship
claims. (Doc. No. 668 at 14.)

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In support of their definition, Plaintiffs argue that the claim language refers to a
static device and nothing in the claim language states or suggests that “flow” requires
perfusion or that anything is perfused through the device. For example, Plaintiffs point
out that the terms “perfuse” and “perfusion” do not appear in the ’209 Patent claims.
Plaintiffs further argue that the claims do not recite pumps, pressurized gas tanks, or other
equipment that Plaintiffs assert are necessary for perfusion. In addition, Plaintiffs argue
that, consistent with the ordinary meaning of “flow,” the language of the independent
claims in the ’209 Patent demonstrates that “flow” does not require perfusion. Plaintiffs
cite to independent claims 1 and 16, which recite “at least one tracheal space” and that
“gasses . . . flow” into the tracheal space. Plaintiffs submit that it is undisputed that
gasses “flow” into the tracheal space without perfusion, and because these claims
encompass a device with only one tracheal space, the use of the term “flow” rather than
“continuous flow” makes sense.
Plaintiffs also argue that the specification indicates that “continuous flow” is not
synonymous with perfusion because the specification distinguishes between continuous
flow and perfusion—with “flow” occurring in a static device. For example, Plaintiffs
argue that the following language (including the use of “continuous flow”) in the
specification makes clear that each of the multiple modules has a cell growth chamber
and a tracheal chamber and that the cell growth chambers of connected modules are in
fluid communication such that medium introduced in one chamber can continue into
another chamber:

6

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In another aspect, an integral unit of the cell culture apparatus
comprises a plurality of modules, each having a cell growth chamber
and a tracheal chamber. The plurality of modular gas permeable
substrates are utilized to permit a plurality of cell chambers and
tracheal chambers to be arranged to form one unitary apparatus of
the present invention. The plurality of layers of gas permeable
substrates are further capable of being interconnected or adjoined to
provide a multiplicity of areas for cellular growth. The plurality of
modules may be interconnected in series or staggered to permit
continuous flow. For easy assembly and disassembly, individual
units having snap-like features could be securely and easily
adjoined.
(’209 Patent at c. 3, ll:53-64.) Plaintiffs maintain that this language indicates that
multiple cell growth chambers can be filled with one continuous flow of medium without
perfusion (as opposed to each chamber needing to be filled separately).5
Plaintiffs also point out that the examples of devices in the ’209 Patent disclose
cell growth chambers that are in communication such that they can be filled by one
continuous flow of medium, as well as examples of devices where cell growth chambers
are not in communication with each other and, therefore, must be filled individually.
Plaintiffs further submit that the specification distinguishes between continuous flow and
perfusion by use of the word “or.” (See id. c. 9, ll:56-59 (“an embodiment of the present
invention incorporates a staggered configuration . . . so as to allow continuous flow or
perfusion through the vessel . . . .”) (emphasis added); c.4, ll.8-9 (“continuously flow or

5

Similarly, Plaintiffs maintain that connected tracheal spaces can be filled with one
continuous flow of gas. (See ’209 Patent, c. 11, ll:48-53.)

7

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perfuse through the apparatus”) (emphasis added).6 In short, Plaintiffs submit that the
’209 Patent specification discusses and distinguishes between perfusion and continuous
flow and between perfusion systems and static devices.
Corning submits that “continuous flow” in the ’209 Patent means “a type of
perfusion.” Corning argues that the ordinary and customary meaning of “continuous
flow” is a type of perfusion (a perfusion that is continuous), and that the Patents use that
ordinary meaning. In addition, Corning argues that, regardless of the meaning of
“continuous flow” in the two dependent claims at issue, the concept of perfusion is
indisputably within the scope of the broader, independent claims of the Patents.7
First, Corning argues that the Summary of the Invention confirms this plainlanguage construction by using the term perfuse and referencing illustrative embodiments
that include static cell culture devices, perfusion devices, and devices that can be used
either as a static or perfusion device:
While many embodiments of the present invention are suitable for
static cultures, another embodiment of the present invention staggers
the gas permeable substrates within the flask to permit continuous
flow through the cell culture chamber. The staggered layers allow
media to continuously flow or perfuse through the apparatus.

6

Plaintiffs argue that the use of the disjunctive “or” suggests that “continuous flow”
and “perfusion” are alternatives and not synonyms. See IBSA Institut Biochimique,
S.A. v. Teva Pharms. USA, Inc., 966 F.3d 1374, 1379 (Fed. Cir. 2020); SkinMedica Inc. v.
Histogen, Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013).
7

Thus, Corning maintains that it does not matter whether perfusion is defined to
include or require pumping because whatever perfusion includes, it is covered by the
claims.

8

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(’209 Patent, c. 4, ll: 4-9 (emphasis added).) Corning points to Figure 5 as a perfusion
embodiment:
FIGS. 5 and 5A illustrate another embodiment of the present
invention. As illustrated in partial internal and external crosssectional views, respectively, a multilayered culture vessel 501 of
the present invention is a perfusion system 500.
(’209 Patent at c. 9, ll:7-10.) The Patent’s Detailed Description explains that this
embodiment may be configured “to incorporate[] a staggered configuration of gas
permeable substrates . . . so as to allow continuous flow or perfusion through the vessel
501.” (Id. c. 9, ll:56-59.) Corning argues that the claims of the ’209 (and ’572) Patents
include the perfusion embodiments and points to claims 12, 15, 17, 30, and 31 of the ’209
Patent as depending on claim 2 and pointing to specific elements of the perfusion
embodiment in FIG. 5, namely the “continuous flow” of medium, the devices’ stand-offs,
the tracheal space, and the fact that a number of modules can be combined:8
12. The apparatus of claim 11, wherein said plurality of modules
are interconnected in series or staggered to permit continuous
flow.
15. The apparatus of claim 2, further comprising stand-offs rising
from an exterior surface of a top plate of the apparatus,
descending from an exterior surface of a bottom tray of the
apparatus, or both.

8

Specifically, the Patents describe aspects of the perfusion embodiment in FIG. 5:
the “raised rim 580 serving as a standoff 580” to allow the modules to be “stacked,” (id.
at c. 9, ll:33-37); the “parallel configuration permitting an airway or tracheal space 540 to
separate each cellular growth layer 550,” (id. at c. 9, ll:12-14); and the “[v]arious
arrangements of the layers 550 and stacked substrates 530 . . . permit[ting] . . . static cell
culture or cell culture in a perfusion system as discussed.” (Id. at c.9, ll:59-62.)

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17. The apparatus of claim 15, wherein said at least one tracheal
space and said plurality of cell growth chambers are combined
into at least one integral unit.
30. The apparatus of claim 17, wherein said integral unit comprises
a plurality of modules.
31. The apparatus of claim 30, wherein said plurality of modules
are interconnected in series or staggered to permit continuous
flow.
(’209 Patent at c. 13, ll:64-67; c. 14, ll:20-22; c. 14, ll:52-55 (underlining added).)
Corning further argues that the specification distinguishes between “continuous
flow” (perfusion) and static culture devices that do not, by definition, incorporate
continuous flow. Corning points to the Summary of the Invention (above) and the
Detailed Description, which Corning asserts uses the terms “continuous flow” and
perfusion interchangeably. (See, e.g., id. at c. 9, ll:58-59 (describing an embodiment that
“allow[s] continuous flow or perfusion through the vessel”).) Corning submits that the
Patents distinguish between static cell culture (where the device is filled with liquid
medium that does not flow through the device, but rather remains in the device and is
later removed) and devices that involve perfusion (where the liquid medium flows
through the device continuously).
The Court concludes that the “continuous flow” limitation in dependent claims 12
and 31 refers to a type of perfusion where liquid medium is continuously flowing through
the cell culture vessel. The claim language and specification provide that the Patents
encompass perfusion devices. Claim 1 of the ’209 Patent recites a “cell growth

10

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apparatus” comprising various elements.9 Dependent claims 12 and 31 of the ’209 Patent
both refer to an apparatus “wherein said plurality of modules are interconnected in series
or staggered to permit continuous flow.” The claim language itself – “staggered to
permit continuous flow” refers to an embodiment of the invention at FIG. 5. This
embodiment describes a “staggered configuration” of the apparatus, so as to allow
“continuous flow or perfusion through the vessel.” (’209 Patent, c. 9 at ll:7-10; c. 9,
ll:56-59.) The embodiment is described as “a perfusion system 500.” (Id.) Thus, when
the claims describe modules “staggered to permit continuous flow,” the plain and
ordinary meaning of the phrase is that it refers to the perfusion system in FIG. 5. The
specification goes on to equate “continuous flow” with “a perfusion that is continuous.”
(See, e.g., ’209 Patent at c. 4, ll:43-47 (“When gas permeable substrates are stacked, the
entry and exit portals may be positioned in a parallel or staggered assembly so as to
permit flow or perfusion through cell culture chambers within the body of the
apparatus.”)); id. at c. 10, ll:34-38 (describing Figure 6: “Additionally, an open end 633
of the frame 632 is a feature to permit fluid flow when multiple modular units 600 are
stacked and adhered together into a unitary body so as to be utilized in perfusion
devices.”). Here, the claim language and the specification demonstrate that the claims
encompass perfusion and that the term “continuous flow” refers to a type of perfusion.

9

Similarly, claim 1 of the ’572 Patent recites “[a] method of culturing cells in a cell
growth apparatus, the method comprising: . . .”

11

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The Court has considered Plaintiffs’ arguments for why the claims exclude
perfusion and respectfully finds them unpersuasive. Briefly, the Court notes that there is
no clear disclaimer of the perfusion system embodiment in the specification. Therefore,
the Court will not interpret terms so as to exclude that embodiment. See Oatley Co. v.
IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008). Second, Plaintiffs argue that the
specification distinguishes between continuous flow and perfusion and that the use of the
word “or”—continuous flow or perfusion—suggests that they are alternative systems, not
synonymous systems. The Court disagrees. Instead, in reading the language of the
claim, the Court understands the use of the word “or” to connect the terms “continuous
flow” and “perfusion” so as to indicate equivalence.
For the reasons stated above, the Court adopts Defendant’s proposed construction
and construes the term “continuous flow” as “a type of perfusion (a perfusion that is
continuous).”
II.

Sole-Inventorship Claims
In Count I of the Complaint, Plaintiffs assert a claim for declaratory judgment of

invalidity, or correction of inventorship as to the ’209 Patent. Specifically, Plaintiffs seek
to name John Wilson and/or other Wilson Wolf staff as the sole inventor(s) or, in the
alternative, invalidate the Patent on the ground that the named inventors did not
themselves invent the claimed subject matter. In Count II, Plaintiffs assert that Wilson or
Wilson Wolf staff should be named as sole or joint inventors with respect to the ’572
Patent.

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Corning argues that the Court can dispose of Plaintiffs’ sole-inventorship claims
as a matter of law as to both the ’209 and ’572 Patents because Wilson has admitted that
his disclosures were directed to static cell culture devices and did not teach the perfusion
devices claimed by these Patents. In addition, Corning submits that regardless of the
construction of “continuous flow,” the Court can grant summary judgment in its favor on
Plaintiffs’ claim of sole inventorship of the ’572 Patent and the ’209 Patent. Corning
argues that the claims of the ’572 Patent and the independent claims of the ’209 Patent do
not include the term “continuous flow,” and therefore indisputably cover perfusion
devices in addition to static devices. Corning argues that in order to maintain any sole
inventorship (as opposed to a joint inventorship) claim related to the Patents, Plaintiffs
must show that Wilson conceived of every feature encompassed by the claims. Because
Wilson has acknowledged that he did not invent a perfusion device, Corning submits that
there are no material issues of fact remaining on Wilson’s sole-inventorship claims and
asks the Court to enter judgment in favor of Corning on those claims.
Plaintiffs argue that Corning’s arguments on summary judgment are premature
and wrong. Plaintiffs stress that the only issue before the Court is claim construction and
that any impact of the construction will have to be briefed after construction. In addition,
even as to the ’209 Patent, in light of the Court’s above determination that the claims
encompass a perfusion device, Plaintiffs argue that this is not determinative of the
inventorship claim because the contribution of optional features or obvious variations by
Corning staff would not make them inventors. For example, Plaintiffs submit that
Wilson noted in his expert report that depending on claim construction, the added
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limitations of claims 12 and 31 may be obvious. This, Plaintiffs argue, highlights that
fact issue remain for determination even after claim construction.
The Court agrees that the issue of summary judgment on the inventorship claim is
premature. The Court declines to enter judgment on Counts I and II.
ORDER
Based upon the foregoing, and the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1.

The term “continuous flow” is construed as set forth in this Memorandum

Opinion and Order.
2.

Defendant’s renewed motion for summary judgment on inventorship is

DENIED.
Dated: September 16, 2022

s/Donovan W. Frank
DONOVAN W. FRANK
United States District Judge

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