Xlear et al v. STS Health

Filing 85

MEMORANDUM DECISION AND ORDER re Claim Construction: The claims term "an effective amount" is to be construed as "An amount effective to clean the nasopharynx in a human." Signed by Judge David Nuffer on 4/4/19 (alt)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
XLEAR, INC., a Utah corporation,
Plaintiff,

MEMORANDUM DECISION
AND ORDER REGARDING
CLAIM CONSTRUCTION

v.

Case No. 2:14-cv-00806-DN

STS HEALTH, LLC, a Virginia Limited
Liability Company,

District Judge David Nuffer

Defendant.
Both parties filed claim construction briefs on February 28, 2017. 1 The parties followed
up with responses to each other’s claim construction brief on April 4, 2017. 2 On April 12, 2017
the parties filed a joint claim construction chart and status report. 3 In the Joint Status Report, the
parties list two terms for claim construction, but agree on the construction of one of them.
Therefore, the only term that remains to be construed is an effective amount. Both parties agree
that a claim construction hearing is not necessary and that the claims can be construed based on
the available briefing. 4 For the reasons below, Plaintiff’s construction of the term “an effective
amount” will be adopted .

1

Defendant STS Health, LLC’s Claim Construction Brief, docket no. 65, filed Feb. 28, 2017; Plaintiff’s Motion for
Claim Construction, docket no. 67. filed Feb. 28, 2017.
2

Defendant STS Health, LLC’s Response to Plaintiff Xlear, Inc.’s Claim Construction Brief, docket no. 74, filed
Apr. 4, 2017; Plaintiff’s Xlear, Inc.’s Response to Defendant’s Claim Construction Brief, docket no. 75, filed Apr. 4,
2017.
3

Joint Claim Construction Chart and Status Report (“Joint Status Report”), docket no. 77, filed Apr. 12, 2017.

4

Joint Status Report at 2 and 5.

BACKGROUND
On November 5, 2014, Plaintiff XLEAR, Inc (“XLEAR”) filed suit against STS Health,
LLC (“STS”) for infringement of United States Patent No. 6,054,143 (“the ‘143 patent”). The
‘143 patent is titled “Xylitol Delivery” and was issued on April 25, 2000. 5 It relates generally to
a method for nasal administration of xylitol. Claim 1, the only independent claim of the ‘143
patent, states:
1. A method of cleaning the nasopharynx in a human in need of said method
which comprises nasally administering an effective amount of xylitol/xylose in
solution. 6
In the parties’ claim construction chart, they list “xylitol/xylose” and “an effective amount” as
the only terms that need construction. 7 The parties have agreed on a construction for
“xylitol/xylose”. 8 Therefore, only the term “an effective amount” needs construction.
XLEAR argues for the plain and ordinary meaning of “an effective amount”, in light of
the preamble to claim 1. 9 In other words, “an effective amount” is an amount effective to clean
the nasopharynx in a human. STS argues “an effective amount” is between 1% and 64%
xylitol/xylose in solution, based on language from the body of the specification. 10
LEGAL STANDARD
The claims of a patent “define the invention to which the patentee is entitled the right to
exclude.” 11 Claim terms “are generally given their ordinary and customary meaning,” 12 and a

5

U.S. Patent No. 6,054,143, at [54] (filed Dec. 23, 1998).

6

‘143 Patent at col.4 ll.55-57 (Claim 1).

7

Joint Status Report at 2.

8

Id.

9

Id.

10

Id.

11

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)(citation and quotation omitted).

12

Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)).

2

court is to determine “the ordinary and customary meaning of undefined claim terms as
understood by a person of ordinary skill in the art at the time of the invention . . . .” 13 “Common
words, unless the context suggests otherwise, should be interpreted according to their ordinary
meaning.” 14
Claim construction is an issue of law for the court to decide. 15 The starting point for
construing claim terms is the intrinsic evidence (the claims, the patent specification, and the
prosecution history). 16 “In most situations, an analysis of the intrinsic evidence alone will
resolve any ambiguity in a disputed claim term.” 17
“The construction that stays true to the claim language and most naturally aligns with the
patent’s description of the invention will be, in the end, the correct construction.” 18 Although
claims must be read in light of the specification, limitations from the specification may not be
read into the claims. 19 It is well settled that the invention should not be limited to the specific
examples or preferred embodiment found in the specification. 20
DISCUSSION
Typically, the first place to look for help in construing a term is the claims in which the
terms appear. “Other claims of the patent in question … can also be valuable sources of
enlightenment as to the meaning of a claim term.” 21 Claim 7 of the ‘143 patent states:

13

Felix v. Am. Honda Motor Co., Inc., 562 F.3d 1167, 1177 (Fed. Cir. 2009).

14

Desper Prods., Inc. v. QSound Labs., Inc., 157 F.3d 1325, 1336 (Fed. Cir.1998).

15

Markman, 517 U.S. at 384.

16

Phillips, 415 F.3d at 1313.

17

Vitronics, 90 F.3d at 1583.

18

Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).

19

See Phillips, 415 F.3d at 1323; Comark Commc’ns. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir.1998).

20

See Phillips, 415 F.3d at 1323.

21

Id. at 1314.

3

7. The method as defined in claim 1 wherein said xylitol/xylose in aqueous
solution comprises from one gram to 64 grams of xylitol/xylose in 100 cc or
solution. 22
This is a dependent claim for xylitol/xylose in 1% to 64% solution. When a dependent claim
includes a particular limitation there is “a presumption that the limitation in question is not
present in the independent claim.” 23 This presumption arises from the desire to avoid construing
some claims redundant. Therefore, there is a presumption that STS’s construction of the term an
effective amount is incorrect. If that construction were to be adopted, claim 7 would be redundant
and unnecessary.
Another factor to consider in the construction of a claim term is the claim’s preamble.
Typically, the preamble of a claim is not a limitation on that claim. However, courts can
determine that a preamble is a limitation on the claim after a review of the entire patent, “to gain
an understanding of what the inventors actually invented and intended to encompass by the
claim.” 24 One way a preamble can limit an invention is if “it is necessary to give life, meaning,
and vitality to the claim.” 25 However, if the “patentee defines a structurally complete invention
in the claim body”, then the preamble is typically not limiting.
In claim 1 of the ‘143 patent, the patentee did not lay out a structurally complete
invention in the claim body. To understand what “an effective amount” is, we need to understand
what effect is the target of the effective amount. The language in the claim body states,
“…nasally administering an effective amount of xylitol/xylose in solution”. 26 There is no

22

‘143 Patent at col.5 ll.3-5 (Claim 7).

23

Philips, 415 F.3d at 1314.

24

Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).

25

Id. (internal quotations omitted).

26

‘143 Patent at col.4 ll.55-57 (Claim 1).

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indication in the claim body as to what effect the patentee desired. Therefore, it is not clear how
much an effective amount would be. The preamble of that claim states that it is a “method for
cleaning the nasopharynx in a human in need of said method….” 27 The desired effect is cleaning
the nasopharynx. Understanding this effect gives meaning to the claim. Without it, an effective
amount would be ambiguous.
The body of the specification can also be useful in determining the meaning of a term.
Typically, claim terms are “given their ordinary and customary meaning.” 28 However, the
“specification may reveal a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess.” 29 If that is the case, “the inventor’s lexicography
governs.” STS argues that the patentee defined “an effective amount” in the body of the
specification. 30 STS points to the following language: “As little as 1% xylitol/xylose in solution
appears to be the effective minimum strength….” 31 This argument is not persuasive.
It is a well established that a patentee can act as its own lexicographer when defining
terms in its claims. However, the specification must “clearly redefine a claim term so as to put
one reasonably skilled in the art on notice that the patentee intended to so redefine the claim.” 32
In this instance, there is no clear intent to redefine. The patentee uses the language appears, an
imprecise term. An imprecise term, by definition, is not clear. Also, there is relevant language at
the end of that same section in the patent that implies lack of intent to redefine. It states:
The restrictive description of the specific examples above do not point out what
an infringement of this patent would be, but are to point out advantages and the
27

Id. (emphasis added).

28

Phillips, 415 F.3d at 1312 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)).

29

Id. at 1316.

30

Joint Status Report at 5-6.

31

Id at 5 (quoting the ‘143 patent specification at column 3, lines 5-14).

32

Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).

5

progressive contribution to the healing arts and to enable one skilled in the art to
make and use the invention. The limits of the invention and the bounds of the
patent protection are measured by and defined in the following claims. 33
The imprecise nature of the word appears and the language from the specification cited above
together raise doubt that the patentee intended to use a meaning other than the ordinary meaning
of the term an effective amount. “Absent an express intent to impart a novel meaning, claim
terms take on their ordinary meaning.” 34
Further, an invention should not be limited to the specific examples or preferred
embodiment found in the specification. 35 One of the main purposes of the specification is to
“teach and enable those of skill in the art to make and use the invention.” 36 An effective way to
do this is to “provide an example of how to practice the invention in a particular case.” 37 The
language that STS cites is in a section titled “Description of the Preferred Embodiments.” 38 This
title implies that the section does not lay out the limitations of the invention, but only describes
some embodiments of the invention. To avoid “importing limitations into the claims” from the
specification, 39 the language that STS cites from the body of the specification cannot be used to
change the clear and ordinary definition of an effective amount.

33

‘143 Patent at col.4 ll.4-9 (emphasis added).

34

Elekta, 214 F.3d at 1307.

35

See Phillips, 415 F.3d at 1323.

36

Id.

37

Id.

38

‘143 Patent at col.3 ll.5-6.

39

Phillips, 415 F.3d at 1323.

6

ORDER
IT IS HEREBY ORDERED that the claims term an effective amount be construed as
follows:
An Effective Amount: An amount effective to clean the nasopharynx in a human.
Signed April 4, 2019.
BY THE COURT

________________________________________
David Nuffer
United States District Judge

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