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