Alifax Holding Spa v. Alcor Scientific Inc. et al
Filing
73
MEMORANDUM AND ORDER Re: 49 Notice: Opening Claim Construction Brief filed by Francesco A. Frappa, Alcor Scientific, Inc., 48 Notice: Opening Claim Construction Brief filed by Sire Analytical Systems Srl, Alifax Holding Spa. So Ordered by Chief Judge William E. Smith on 4/27/2017. (Jackson, Ryan)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
___________________________________
)
)
)
Plaintiff,
)
)
v.
)
)
ALCOR SCIENTIFIC INC.; and
)
FRANCESCO A. FRAPPA,
)
)
Defendants.
)
___________________________________)
ALIFAX HOLDING SPA,
C.A. No. 14-440 S
MEMORANDUM AND ORDER
WILLIAM E. SMITH, Chief Judge.
Plaintiff
Alifax
filed
this
patent
infringement
action
alleging, among other things, that Defendants Alcor and Frappa
infringed two of Alifax’s patents.
One of the patents at issue
in this case protects a diagnostic method for quickly measuring
the erythrocyte sedimentation rate (“ESR”) of a blood sample, as
well as the sample’s viscosity, elasticity, and density (the
‘679 Patent).
The other patent at issue covers the apparatus
designed to carry out the patented method (the ‘107 Patent).
The ESR is a diagnostic test for general inflammation that helps
diagnose
Defendant
infections
Frappa
and
a
allegedly
variety
had
of
access
clinical
to
this
conditions.
intellectual
property when he worked for Alifax, and allegedly shared it with
Defendant Alcor when he began his employment there.
Defendants
responded
with
three
counterclaims,
alleging
that both of the patents at issue are invalid for failure to
comply with 35 U.S.C. §§ 102, 103, and/or 112 and that Alifax
intentionally
relations.
interfered
with
Alcor’s
prospective
contractual
The pretrial scheduling order provided for a claim
construction phase within the discovery process.
In Alifax’s
claim construction brief, it requests construction of one phrase
that is used in two claims of the ‘679 Patent, and one phrase
that is used in one claim of the ‘107 Patent.
their
claim
construction
brief,
request
Defendants, in
construction
of
five
terms or phrases that appear in the claims within one or both
patents at issue.
The Court has thoroughly considered the parties’ briefs and
exhibits attached thereto as well as the technical tutorials and
the
arguments
of
counsel
at
the
Markman 1
hearing.
This
Memorandum and Order provides the Court’s construction of the
seven
claim
terms
and
phrases
raised
and
disputed
by
the
parties.
I. Claim Construction Principles
“[A] bedrock principle of patent law [is] that the claims
of
a
patent
1
define
Markman
v.
the
invention
Westview
to
which
Instruments,
(1996).
2
the
Inc.,
patentee
517
U.S.
is
370
entitled the right to exclude.” 2
“The claim[s] . . . function[]
to forbid not only exact copies of an invention, but products
that go to ‘the heart of an invention but avoid[] the literal
language of the claim[s] by making a noncritical change[.]’” 3
“Victory in an infringement suit requires a finding that the
patent
claim[s]
‘cover[]
the
alleged
infringer’s
product
or
process,’ which in turn necessitates a determination of ‘what
the words in the claim[s] mean.’” 4
“[T]he construction of a patent, including terms of art
within its claim[s], is exclusively within the province of the
court.” 5
The words of the claims are given their ordinary and
customary meanings, unless a word or phrase is expressly defined
in the patent to mean something else. 6
“[T]he ordinary and
customary meaning of a claim term is the meaning that the term
would have to a person of ordinary skill in the art [“POSITA”]
in
question
at
the
time
of
the
invention,
i.e.,
as
of
the
2
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004) (citation omitted).
3
Markman, 517 U.S. at 373-74 (quoting H. Schwartz, Patent
Law and Practice, 82 (2d ed. 1995) (additional internal citation
omitted)).
4
Id. at 374 (quoting Schwartz, supra n.3, at 80).
5
Id. at 372.
6
Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1316 (Fed.
Cir. 2005).
3
effective filing date of the patent application.” 7
When the
meaning of a claim term is apparent, then construing the terms
“involves
little
more
than
the
application
of
the
widely
accepted meaning of commonly understood words.” 8
“Because the meaning of a claim term as understood by [a
POSITA] is often not immediately apparent, and because patentees
frequently
use
terms
idiosyncratically,
the
court
looks
to
‘those sources available to the public that show what a [POSITA]
would have understood [the] disputed claim language to mean.’” 9
These sources include the intrinsic evidence of record:
patent’s
specifications
prosecution history.
“because
the
and
claims
as
well
as
the
the
patent’s
The Federal Circuit has acknowledged that
prosecution
history
represents
an
ongoing
negotiation between the [Patent and Trademark Office] and the
applicant, rather than the final product of that negotiation, it
often lacks the clarity of the specification and thus is less
useful for claim construction
purposes.” 10
“Nonetheless, the
prosecution history can often inform the meaning of the claim
7
Id. at 1313 (citing Innova, 381 F.3d at 1116).
8
Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed.
Cir. 2001)).
9
Id. (quoting Innova, 381 F.3d at 1116).
10
Id. at 1317 (citing Inverness Med. Switz. GmbH v. Warner
Lambert Co., 309 F.3d 1373, 1380–82 (Fed. Cir. 2002)).
4
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.” 11
Statements in the prosecution history of
a foreign patent, however, have been deemed irrelevant because
they are made under different patentability requirements. 12
The context in which a term or phrase is used within these
intrinsic sources “can be highly instructive.” 13
To that end,
the specification is considered “the single best guide to the
meaning of a disputed term,” and is usually dispositive of its
meaning. 14
“In most situations, an analysis of the intrinsic
evidence alone will resolve any ambiguity in a disputed claim
term.
In
such
circumstances,
extrinsic evidence.” 15
claim
language
and
it
is
improper
to
rely
on
“The construction that stays true to the
most
naturally
aligns
with
the
patent’s
description of the invention will be, in the end, the correct
11
Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582-83 (Fed. Cir. 1996)).
12
Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290
(Fed. Cir. 2006).
13
Phillips, 415 F.3d at 1314.
14
Id. at 1315 (quoting Vitronics Corp., 90 F.3d at 1582).
15
Vitronics Corp., 90 F.3d at 1583.
5
construction.” 16
treatises,
Extrinsic
expert
opinions,
evidence
or
such
inventor
as
dictionaries,
testimony
may
be
consulted and relied upon, but it is considered less reliable
than the intrinsic patent record, and, as just stated, often not
necessary. 17
The established framework for claim construction includes
two somewhat contrasting axioms:
“a claim must be read in view
of the specification and . . . a court may not read a limitation
into a claim from the specification.” 18
The Federal Circuit has
recognized that this seeming contradiction can be difficult to
apply
in
practice,
but
encourages
that
“the
line
between
construing terms and importing limitations can be discerned with
reasonable
certainty
and
predictability
if
the
court’s
focus
remains on understanding how a [POSITA] would understand the
claim terms.” 19
II. Indefiniteness
Defendants argue that three of the five terms it raises for
construction are “indefinite” pursuant to 35 U.S.C. § 112. 20
16
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1249 (Fed. Cir. 1998).
17
Phillips, 415 F.3d at 1317-18.
18
Innova, 381 F.3d at 1117 (citation omitted).
19
Phillips, 415 F.3d at 1323.
20
35 U.S.C. § 112 states, in relevant part, that:
6
The
Supreme
Court
has
held
“that
a
patent
is
invalid
for
indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to
inform,
about
with
the
reasonable
scope
of
certainty,
those
invention.” 21
the
skilled
“[T]he
in
the
art
definiteness
requirement, so understood, mandates clarity, while recognizing
that
absolute
indefiniteness
precision
can
completely
is
unattainable.” 22
invalidate
a
claim
Because
or
patent,
several district courts have declined to address arguments on
this
point
before
the
litigation
reaches
summary
judgment
proceedings, when the record is substantially developed. 23
The
Court will, however, address Defendants’ arguments with respect
(a) In general.--The specification shall contain a
written description of the invention, and of the
manner and process of making and using it, in such
full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and
use the same, and shall set forth the best mode
contemplated by the inventor or joint inventor of
carrying out the invention.
(b) Conclusion.--The specification shall conclude with
one or more claims particularly pointing out and
distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention.
21
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120, 2124 (2014).
22
Id. at 2129.
23
See, e.g., Cipher Pharm. Inc. v. Actavis Labs. FL, Inc.,
99 F. Supp. 3d 508, 514 (D.N.J. 2015).
7
to indefiniteness in the discussion that follows.
III. Disputed Claim Terms and Phrases
A. Alifax’s Claim Phrase to Construe #1
Alifax’s
Defendants’
proposed
proposed
construction
construction
Using the
Plain and
acquired
ordinary
optical density meaning
or absorbance
data to obtain
correlated
parameters
including the
speed of
sedimentation,
viscosity,
elasticity and
density
Claim phrase
“the optical
density or the
absorbance
acquired being
processed to
obtain said
speed of
sedimentation,
viscosity,
elasticity and
density” (‘679
Patent claims
1, 8, ECF No.
49-35.)
Court’s
construction
Processing the
acquired
optical density
or absorbance
data to obtain
the speed of
sedimentation,
viscosity,
elasticity and
density
Alifax argues that the specification supports its proposed
construction because a POSITA would understand both (1) that the
four parameters measured by the patented method are mutually
related; and (2) that the flow chart of the patented method
provided
in
the
‘679
Patent
indicates
that
the
analysis
and
processing of the acquired data would occur immediately after
the photometric
data
was
acquired.
Alifax
also
argues
that
simply applying the plain and ordinary meaning of the term would
not resolve the parties’ disagreement about the scope of the
claim
because
“being
processed
to
obtain”
means
“using
the
acquired” photometric data to obtain the four parameters listed,
a meaning that a POSITA would understand.
8
According
invites
two
to
Defendants,
errors.
Alifax
included
method
only
the
after
precise
the
proposed
Defendants
First,
Alifax’s
argue
four
Patent
and
parameters
construction
that,
because
measured
Trademark
Office
by
the
initially
rejected the patent application for indefiniteness, using the
word “parameters” in the construction will create ambiguity and
uncertainty where none currently exists.
Second, the limitation
“using” is a broad and unsupported synonym that is not in the
claim language, so adding this limitation (or substituting it
for “processing”) does not have support from the specification.
Defendants also argue that the proposed construction indicates
that
“correlated
parameters”
will
be
obtained,
not
that
the
patented parameters are limited to the speed of sedimentation,
viscosity, elasticity, and density.
In response to Defendants’ arguments, Alifax argues that
Defendants
are
treating
the
four
parameters
measured
oversimplistically because there is a relationship between the
four parameters that is explained in the specification.
results
from
processing
a
sample
include
a
single
correlated results, not four independent parameters.
set
The
of
Plaintiff
also submits that it is not wedded to the word “using” and would
be content with substituting “using” for “processing.”
This phrase to construe appears in claims 1 and 8 of the
‘679 Patent.
Claim 1 states, in relevant part, that:
9
A method to determine a speed of sedimentation,
viscosity, elasticity and density of blood, said
method being carried out by detecting a development
over time of an optical density, or an absorbance, of
a sample of blood, said sample being sent in the form
of a flow inside a capillary container . . . , said
detection being made in correspondence with any point
along the length of said capillary container . . . and
the optical density or the absorbance acquired being
processed to obtain said speed of sedimentation,
viscosity, elasticity and density wherein the method
instantly interrupts the flow of the blood sample
flowing inside said capillary container . . . .
(Emphasis added on phrase to construe).
construing
the
target
phrase,
claim
For the purposes of
8
has
the
identical
supports
the
“acquired
language.
The
‘679
Patent
specification
optical density or absorbance data” part of Alifax’s proposed
construction
because
the
the
description
patented
method
for
includes
the
the
preferred
embodiment
for
following
sentence:
“At the same time as the pump . . . stops, the
control and processing unit . . . commands the detector . . . to
acquire the photometric data of optical density or absorbance.” 24
Defendants
do
not
dispute
this
portion
of
the
proposed
construction.
With respect to the use of the word “parameters” in the
proposed
construction,
Defendants’
argument
that
the
term
injects ambiguity and uncertainty into the claim has given the
24
‘679 Patent col. 6, lines 10-12, ECF No. 49-35.
10
Court pause.
term
A review of the entire patent reveals that the
“parameters”
appears
on
its
own
throughout
the
specifications, as does “correlated parameters,” as a form of
short hand for the four measurements obtained by the patented
method, i.e., the speed of sedimentation, density, viscosity,
and elasticity. 25
So the introduction of “correlated parameters”
in Alifax’s proposed construction does have support from the
specifications.
The
application
for
this
patent,
however,
was
initially
rejected for indefiniteness based in part on the claim’s use of
the phrase “other parameters connected thereto”:
are
rendered
indefinite
because
of
the
use
of
“Claims 1-9
the
language
‘other parameters connected thereto.’
It is unclear exactly
what
phraseology.
Applicant
contemplates
clarification is required.” 26
by
this
Further
Alifax responded with a revised
application, replacing “other parameters connected thereto” with
“viscosity,
elasticity
and
density”;
language
which
precisely
identified the characteristics of the blood sample that would be
measured in addition to the erythrocyte sedimentation rate. 27
25
See e.g., ‘679 Patent col. 2, line 48; col. 3, line 12;
col. 4, lines 11-12; col. 4, lines 45-46; col. 5, line 49; col.
6, lines 17-22.
26
PTO Office Action mailed April 5, 2002, ECF No. 48-14.
27
Applicant Resp. mailed July 5, 2002, ECF No. 48-4.
11
Thereafter,
the
patent
examiner
explicitly
stated
that
the
claims articulated in the patent application would be allowed
because “the prior art does not teach or suggest a method to
determine a speed of sedimentation, viscosity, elasticity, and
density of blood . . . .” 28
As
the
Federal
Circuit
has
instructed,
“the
prosecution
history can often inform the meaning of the claim language by
demonstrating
whether
the
how
the
inventor
prosecution,
making
otherwise be.” 29
inventor
limited
the
understood
the
claim
invention
scope
the
in
narrower
invention
the
than
course
it
and
of
would
Here, the patent applicant narrowed the scope
of the claim to overcome the indefiniteness of “other parameters
connected thereto” by articulating the precise characteristics
of
the
blood
sample
measured
by
the
method.
The
Court
understands that the specification informs that the viscosity,
elasticity, and density of the blood sample are parameters that
are considered correlated to the speed of sedimentation of the
blood sample.
Employing the term “correlated parameters” in the
construction of the phrase at issue, however, could lead to the
assumption
later
in
this
litigation
that
there
are
other
characteristics of the blood sample that are protected by the
28
Notice of Allowance 2, ECF No. 48-5.
29
Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d at
1582-83).
12
patented method.
This would be inconsistent with the scope of
the patent because the patent applicant clearly overcame the
initial
indefiniteness
determination
by
articulating
these
precise characteristics, and the patent examiner deemed these
characteristics not measured in the same way by the prior art.
The
Court
concludes,
therefore,
that
the
phrase
“the
optical density or the absorbance acquired being processed to
obtain said speed of sedimentation, viscosity, elasticity and
density”
is
construed
as
“processing
the
acquired
optical
density or absorbance data to obtain the speed of sedimentation,
viscosity, elasticity and density.”
13
B. Alifax’s Claim Phrase to Construe #2
Claim phrase
“compare the
photometric
data with
reference
parameters
contained in
the inner
memory to
determine the
speed of
sedimentation,
viscosity,
elasticity and
density of the
blood sample”
(‘107 Patent,
claim 1; ECF
No. 49-36.)
Alifax’s
Defendants’
proposed
proposed
construction
construction
Using the
Plain and
acquired
ordinary
optical density meaning
or absorbance
data to obtain
correlated
parameters
including the
speed of
sedimentation,
viscosity,
elasticity and
density, by
comparing the
data with
numerical
constants
stored in the
memory of a
processing unit
Court’s
construction
Processing the
acquired
optical density
or absorbance
data to obtain
the speed of
sedimentation,
viscosity,
elasticity and
density, by
comparing the
data with
numerical
constants
stored in the
memory of a
processing unit
Alifax asserts that this claim adds detail that does not
exist in the ‘679 Patent; specifically, that the four parameters
are obtained by comparing the data with reference parameters
stored in the processing unit.
Otherwise, Alifax’s arguments
regarding the construction of phrase #1 above apply equally to
this
phrase.
“‘reference
Alifax
parameters
argues
that
contained
a
in
POSITA
the
would
inner
know
memory’
that
are
numerical constants stored in the memory of a processing unit,”
and are based on syllectogram data, which would not be discerned
from the plain language of the claim.
14
Defendants
assert
that
allowing
Alifax’s
proposed
construction would create an additional limitation to the claim
because the phrase “numerical constants” does not appear in the
‘107
Patent.
Otherwise,
Defendants
also
advance
the
same
arguments regarding this phrase as they argued above for phrase
#1.
The
Court’s
reasoning
articulated
above
for
its
construction of phrase #1 applies to this phrase to the extent
that the phrases contain the same language, especially because
the parties’ arguments are basically the same.
With respect to
the part of the claim phrase that refers to comparison (“compare
the photometric data with reference parameters contained in the
inner memory”), Alifax justifies its proposed construction (“by
comparing the data with numerical constants stored in the memory
of
a
processing
unit”)
as
necessary
detail
because
a
POSITA
would understand this to be a part of the inherent detail of the
claim.
Defendants point out that the term “numerical constants”
does not appear in the ‘107 Patent, but they do not provide any
counterargument
as
to
whether
a
POSITA
would
understand
the
claim to mean as Alifax suggests in its proposed construction.
While the specifications in the ‘107 Patent do not mention
“numerical constants” when describing the preferred embodiment
for
the
comparison
apparatus,
is
made
the
specification
between
the
15
does
“data
mention
acquired”
that
and
a
the
“parameters in the internal memory”:
transmitted
in
real
time
to
the
“The data acquired are
control
and
processing
unit
. . . which memorizes them and processes them to obtain the ESR
value and the correlated parameters.
The data acquired can be
compared or integrated with parameters in the internal memory
. .
.
before
being
processed
to
determine
the
value.” 30
ESR
Based on the arguments and evidence before the Court, there is
no reason to believe that a POSITA would not understand the
“parameters in the internal memory” to be “numerical constants.”
The
phrase
“compare
the
photometric
data
with
reference
parameters contained in the inner memory to determine the speed
of sedimentation, viscosity, elasticity and density of the blood
sample”
is
therefore
optical
density
or
construed
absorbance
as
data
“processing
to
obtain
the
the
acquired
speed
of
sedimentation, viscosity, elasticity and density, by comparing
the data with numerical constants stored in the memory of a
processing unit.”
30
‘107 Patent col. 6, lines 29-34 (emphasis added).
16
C. Defendants’ Claim Term to Construe #1
Claim term
“capillary
container”
(‘679 Patent:
claims 1, 3, 58; ‘107 Patent:
claims 1, 3-6,
9-11.)
Alifax’s
proposed
construction
Plain and
ordinary
meaning
Defendants’
proposed
construction
a coil-shaped
elongated tube
Court’s
construction
Plain and
ordinary
meaning
Defendants first argue that the term “capillary container”
is indefinite as a matter of law because the patents in suit do
not
reasonably
“capillary,”
inform
a
“capillary
POSITA
how
container,”
to
distinguish
and
between
“container,”
all
a
of
which are mentioned several times in the specifications of both
patents.
In the alternative, Defendants contend that the term
must be construed as “a coil-shaped elongated tube” because this
is consistent with both the descriptions in the specification
and the illustration of the apparatus in the patents in suit.
Alifax
responds
that
this
term
does
not
require
any
construction, but that if the Court chooses to provide a set
definition, then it means nothing more than a “container having
a capillary shape” because the term is clearly a compound word
with a well-understood meaning.
Alifax also argues that, while
the Court need not discuss definiteness at this juncture, if it
does address Defendants’ contention that the term is indefinite,
then it should find that it meets the standard for definiteness
17
because a POSITA would understand the scope of the term with
reasonable certainty based on its function in the invention.
Alifax
asserts
that
the
term
is
definite
and
the
Court
may
ascribe the term’s plain and ordinary meaning because a POSITA
would know that the invention requires a capillary container as
the measurement chamber and that the term means a certain kind
of
container
for
the
blood
sample.
Alifax
also
argues
“capillary” and “capillary container” are used interchangeably
in the specifications and that Defendants’ proposed construction
of
a
“coil-shaped
elongated
tube”
is
simply
not
an
accurate
description.
A
review
of
the
two
patents
reveals
that
the
term
“capillary container” appears at least a dozen times in each
patent
–
both
in
the
specification
sections
and
claims.
“Capillary” and “container” also appear several times as single
words in both patents.
When the specification is read as a
whole narrative, there is no difficulty in understanding that
whether
the
word
“capillary”
appears
on
its
own
or
with
“container” next to it, the reference number “12” appears next
to
the
word
container”
to
is
indicate
part
12
on
that
the
figure
2
“capillary”
(the
or
illustration
apparatus provided as part of the patent document).
refers
to
through,
the
part
where
the
of
the
light
apparatus
is
that
transmitted
18
“capillary
the
the
The number
blood
through
of
the
passes
blood
sample,
and
where
the
measurements
are
actually
taken
to
determine the speed of sedimentation, viscosity, elasticity, and
density.
The
patents
“preferred
do
describe
embodiment”
the
section
capillary
as
container
“consist[ing]
of
in
a
the
thin
conduit, in this case shaped like a coil, defining an inner
measuring
cell
advantageously
with
1
a
thickness
mm.” 31
Alifax
of
between
disputes
0.1
that
the
and
3
mm,
capillary
container must have a coil shape, and the claim does not limit
the term in that way.
The Federal Circuit is clear that, while
“the specification often describes very specific embodiments of
the
invention,”
the
claims
need
not
be
confined
to
those
embodiments. 32
While
the
Court
could
defer
Defendants’
indefiniteness
argument until a later stage in the litigation, the Court finds
that the term “capillary container” is clearly not indefinite
pursuant to 35 U.S.C. § 112 because it does not fail to inform a
POSITA about the scope of the method and apparatus protected by
31
‘679 Patent col. 5, lines 19-22; ‘107 Patent col. 5, lines
30-34.
32
Phillips, 415 F.3d at 1323 (“In particular, we have
expressly rejected the contention that if a patent describes
only a single embodiment, the claims of the patent must be
construed as being limited to that embodiment.”).
19
the patents at issue. 33
the
term
when
Patent claims. 34
she
In fact, the patent examiner employed
listed
her
reasons
for
allowing
the
‘679
If this term was indefinite pursuant to 35
U.S.C. § 112, then the claims would have failed on this point
during the patent prosecution phase.
Because the meaning of this term is apparent, the Court
need do no more than apply the widely accepted meaning of the
words. 35
33
See Nautilus, 134 S. Ct. at 2124.
34
Notice of Allowance 2, ECF No. 48-5 (“. . . said method
comprising as one component step, instantly interrupting a flow
of
blood
inside
a
capillary
container
to
substantially
simultaneously make detections.”).
35
Phillips, 415 F.3d at 1315.
20
D. Defendants’ Claim Phrase to Construe #2
Claim phrase
“detection
being made in
correspondence
with any point
along the
length of said
capillary
container”
(‘679 Patent:
claims 1, 8.)
Alifax’s
proposed
construction
Plain and
ordinary
meaning
Defendants’
proposed
construction
The detection
of optical
density can
take place at
any point along
the length of
the capillary
container
through which
the blood
flows; the
detection is
not restricted
to a fixed
point along the
length of said
capillary
Court’s
construction
The detection
of optical
density or
absorbance of
the blood
sample can
occur at any
location along
the length of
the capillary
container
Defendants argue that their proposed construction for this
phrase is in line with the prosecution history for the ‘679
Patent, in which the applicant had to amend claim 1 to clarify
that detection was being made in correspondence with any point
(not just a point) along the length of the capillary container.
Defendants
contend
that,
without
their
proposed
construction,
the phrase would be understood to mean a continuous measurement
of “the optical density of the blood sample at a fixed position
of
the
capillary
during
the
flow
of
blood
through
the
capillary.”
Alifax counters that there is nothing unclear or ambiguous
in this phrase and that Defendants simply rewrote the phrase.
21
A
POSITA understands the function of a capillary container and so
would know that the blood flows through it.
Alifax also argues
that the plain and ordinary meaning of the phrase indicates that
detection
could
container.
the
be
made
at
any
location
along
the
capillary
Alifax responds to Defendants’ argument regarding
prosecution
history
by
pointing
out
the
detail
that
the
amendment to the claim served to clarify that detection at “any
point”
referred
to
the
location
along
the
container and not to a time limitation. 36
length
of
the
In addition, Alifax
argues that the last part of Defendants’ proposed construction
is extraneous and unnecessary.
As in Alifax’s Claim Phrase to Construe #1, this phrase
appears in both claims 1 and 8 of the ‘679 Patent.
The parties
are not in disagreement about the meaning of the phrase, but
disagree
whether
understood
or
the
meaning
whether
a
of
the
rewording
claim
of
the
phrase
claim
is
plainly
phrase
is
required to make clear that the optical density detection is not
going to occur at the exact same location along the length of
the capillary container every time.
To
be
crystal
clear
that
36
the
claim
language
regarding
See Applicant Resp. mailed July 5, 2002, at 4, ECF No.
48-4 (the purpose of replacing “a point” with “any point” was to
“more particularly point out and claim that the point is any
location along the length of the capillary container”).
22
“detection” that appears in claims 1 and 8 of the ‘679 Patent
refers to location and not time, and that this “detection” can
occur at any point along the length of the capillary container,
the
Court
adopts
the
following
construction:
The
phrase
“detection being made in correspondence with any point along the
length
of
said
capillary
container”
is
construed
as
“the
detection of optical density or absorbance of the blood sample
can occur at any location along the length of the capillary
container.”
E. Defendants’ Claim Term to Construe #3
Claim term
“pump” (‘107
Patent: claims
1, 2, 9.)
Alifax’s
proposed
construction
Plain and
ordinary
meaning
Defendants’
proposed
construction
a device that
raises,
transfers,
delivers, or
compresses
fluids by
suction or
pressure or
both to act as
an instant
stoppage pump
Court’s
construction
Plain and
ordinary
meaning
Defendants argue that the word “pump” should be construed
by its proposed definition so that the type of pump included in
the claims is clear.
Defendants contend that if “pump” is given
its plain and ordinary meaning, then there is a risk that Alifax
will later argue that any kind of pump meets the limitations of
the claims.
Alifax does not dispute the meaning of the term
23
“pump” because Defendants largely seek to construe it consistent
with a dictionary meaning of the term.
Alifax does dispute the
part of the construction that limits the meaning “to act as an
instant
stoppage
pump”
because
Defendants
are
improperly
limiting the claim from the language of the specification.
A “pump” is referred to in three claims of the ‘107 Patent.
In
claim
1,
the
apparatus
comprises
“a
pump
in
fluid
communication with the circuit, the pump configured to circulate
the
sample
of
blood
inside
the
circuit
and
the
capillary
container; and a stop operatively coupled to the pump, the stop
configured to control the operation of the pump to instantly
interrupt the circulation of the sample of blood at least inside
the capillary container.”
In claim 2, “[t]he apparatus of claim
1 wherein the stop is electrically coupled to the pump.”
And,
in claim 9, “[t]he apparatus of claim 1 wherein the pump is
reversible . . . .”
In
the
part
of
the
specification
that
describes
the
preferred embodiment, the pump is described as that “which can
. .
.
be
arranged
either
upstream
or
downstream
of
the
capillary, is suitable to activate the sample-withdrawing organ
. . . to make the blood sample circulate inside the circuit
. . . and the capillary . . .; another function is to interrupt
24
the flow of the sample instantly.” 37
In addition, the pump is
reversible “in a preferential embodiment . . . , and allow[s]
the
blood
. . .
to
.” 38
circulate
This
inside
the
description
circuit
indicates
in
that
two
the
directions
“instant
stoppage” proposed by Defendants is only one of the functions of
the pump.
Defendants simply used a dictionary definition of an
ordinary pump and then added the “instant stoppage” limitation.
Defendants’ proposed construction, therefore, is not supported
by the specification because it limits the pump’s function in a
way that is not limited in the specification.
The Court will
apply the plain and ordinary meaning to the term “pump.” 39
F. Defendants’ Claim Term to Construe #4
Claim term
“instantly
interrupt[]”
Alifax’s
proposed
construction
Plain and
ordinary
meaning
Defendants’
Court’s
proposed
construction
construction
Complete
Plain and
stoppage of
ordinary
flow of blood
meaning
in zero elapsed
time
(‘679 Patent:
claims 1, 5, 7,
8; ‘107 Patent:
claim 1.)
Defendants argue that this term is indefinite because the
specification does not inform a POSITA when the flow of blood is
instantly
interrupted.
In
the
alternative,
37
’107 Patent col. 5, lines 38-42.
38
’107 Patent col. 5, lines 43-45.
39
See Phillips, 415 F.3d at 1315.
25
Defendants
argue
that the term should be construed to mean the “complete stoppage
of
flow
of
blood
in
zero
elapsed
time”
because
this
is
consistent with the examiner’s statement of reasons for allowing
the ‘679 Patent.
Alifax argues that nothing in the intrinsic record supports
Defendants’ proposed construction and that the term should be
given
its
plain
and
ordinary
meaning.
Alifax
contends
that
“zero elapsed time” is an impossibility and that a POSITA would
understand that the meaning of an instant interruption, to the
extent it requires further definition, naturally follows from
the
description
of
the
claimed
method
and
apparatus.
In
addition, Alifax argues that the term is not indefinite because,
based on the intrinsic record, a POSITA would understand how to
instantly interrupt the blood flow.
The term appears a few times in the specifications of both
patents.
For
example,
when
the
“pump”
is
described,
an
alternative function is “to interrupt the flow of the sample
instantly.” 40
Also, when the blood sample reaches the capillary,
it “is then interrupted by an instant stoppage of the pump . . .
.” 41
In addition, “[a]ccording to a variant” of the method, “at
40
‘679 Patent col. 5, line 31; ‘107 Patent col. 5, lines
42-43.
41
‘679 Patent col. 6, lines 5-7; ‘107 Patent col. 6, lines
17-18.
26
the end of the data-acquisition period, the blood sample is made
to
circulate
capillary,
in
.
.
the
.
opposite
[t]he
direction
flow
of
blood
inside
is
.
then
.
.
the
interrupted
instantly and a new step is started to acquire the photometric
data . . . .” 42
As
discussed
supra,
the
patent
examiner
used
the
term
“instantly interrupt” in the statement of reasons for allowing
the claims.
The patent examiner clearly did not consider this
term
indefinite,
to
be
or
she
would
not
have
parroted
the
language in her statement of reasons for allowing the claims as
phrased.
In
addition,
a
review
of
the
description
of
the
preferred embodiment in the patents’ specifications, including
the sections quoted above, reveals the time in the process where
the
flow
“instantly
of
the
blood
interrupted.”
through
The
the
capillary
patent
therefore
container
does
is
“inform,
with reasonable certainty, those skilled in the art about the
scope of the invention,” 43 and is not indefinite.
Turning
notes
that
following:
to
the
Defendants’
specification
proposed
for
the
construction,
‘679
Patent
the
Court
states
the
“The flow of the blood sample is then interrupted by
an instant stoppage of the pump . . . commanded by the control
42
‘679 Patent col. 6, lines 26-31; ‘107 Patent col. 6,
lines 38-43.
43
Nautilus, 134 S. Ct. at 2124.
27
and processing unit . . . ; the considerable deceleration of the
flow causes the compaction and subsequent sedimentation of the
cells in the blood sample.” 44
stoppage
of
flow
of
blood
Defendants’ proposed “complete
in
zero
elapsed
consistent with “deceleration of flow.”
time”
is
not
The Court finds that
the apparent meaning of this term may be applied without any
additional construction. 45
G. Defendants’ Claim Term to Construe #5
Alifax’s
proposed
construction
“substantially
Plain and
simultaneously” ordinary
meaning
(’679 Patent:
claims 1, 8.)
Defendants’
Court’s
proposed
construction
construction
first detection Plain and
at time of
ordinary
complete
meaning
stoppage of
flow of blood
Claim term
Defendants argue that this term is indefinite because it
lacks the requisite support in the specification and prosecution
history to inform a POSITA about how to “determine whether the
detection
was
made
‘substantially
simultaneously’
with
the
instant interruption, as opposed to a detection after a time
lapse that puts it outside the claims.”
Defendants
argue
that
the
term
should
In the alternative,
be
construed
to
mean
“first detection at time of complete stoppage of flow of blood”
44
‘679 Patent col. 6, lines 5-9.
45
See Phillips, 415 F.3d at 1315.
28
because
the
patent’s
prosecution
history
reveals
that
this
construction is the only one that makes sense.
Alifax argues that nothing in the intrinsic record suggests
that this simple term should be given anything but its plain and
ordinary meaning.
If the Court chooses to construe it, then
Plaintiff requests that the term be given its dictionary meaning
(to a large degree happening at the same time).
argues
that
a
POSITA
does
not
need
a
special
Alifax also
definition
to
understand what is meant by “substantially simultaneously,” and
that
the
term
meets
the
test
for
definiteness
because
the
specifications provide a clear indication of the scope of the
claims in which the terms appear.
Alifax contends that a POSITA
need only look at the part of the specification that states that
the data acquired from the detection “may take a variable period
of time to acquire the data, but may reach very limited values
with a minimum in the order of 0.1 seconds; normally, it takes
between 1 and 30 seconds.” 46
The term “substantially simultaneously” appears in claims 1
and 8 in the ‘679 Patent.
the
detection
of
the
In both claims, the context is that
developing
optical
density
of
a
blood
sample over time is made “substantially simultaneously” with the
“instant interruption” of the flow of the blood sample inside
46
‘679 Patent col. 6, lines 13-16.
29
the
capillary
specification.
container.
The
term
does
not
appear
in
the
For the same reasons as those stated supra with
respect to Defendants’ indefiniteness arguments, the Court finds
that “substantially simultaneously” is not indefinite pursuant
to 35 U.S.C. § 112, and that Defendants’ proposed construction
is
not
consistent
with
the
specifications.
Reading
the
specification and claims together, the Court concludes that the
meaning of the term is apparent and needs no more than the
application of the widely accepted meaning of these words. 47
IV. Conclusion
Now that the Court has construed the disputed claim terms
and
phrases,
the
parties
shall
comply
with
the
schedule as modified by the Court on March 20, 2017.
IT IS SO ORDERED.
William E. Smith
Chief Judge
Date: April 27, 2017
47
See Phillips, 415 F.3d at 1315.
30
discovery
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