United States District Court, D. Delaware
Roche Diagnostics Operations, Inc., and Corange International Ltd., Plaintiffs,
Abbott Diabetes Care, Inc., Abbott Diabetes Care Sales Corp., Bayer Healthcare, LLC, Diagnostic Devices, Inc., Lifescan, Inc., and Nova Biomedical Corp., Defendants.
Philip A. Rovner, Esq., Potter Anderson & Corroon LLP, Wilmington, DE; Grantland G. Drutchas, Esq. (argued); attorneys for Plaintiffs Roche Diagnostics Operations, Inc. and Corange International, Ltd.
Mary W. Bourke, Esq., Womble Carlyle Sandridge & Rice, LLP, Wilmington, DE; William C. Rooklidge, Esq., (argued); Jones Day, Irvine, CA, attorneys for Defendant LifeScan, Inc.
Rodger D. Smith, II, Esq., Morris Nichols Arsht & Tunnell LLP, Wilmington, DE; Bradford J. Badke, Esq. (argued), Ropes & Gray, LLP, New York, NY, attorneys for Defendant Nova Biomedical Corp.
RICHARD G. ANDREWS, District Judge.
Pending before the Court, on remand from the United States Court of Appeals for the Federal Circuit, is consideration of the construction of the term "electrode."
On September 15, 2009, the Court construed the claimed "electrode" as "microelectrode having a width of 15 µm up to approximately 100 µm." Roche Diagnostics Operations, Inc. v. Abbott Diabetes Care, 667 F.Supp.2d 429, 435-36 (D.Del. 2009) (the "Markman Decision" ); (D.I. 563 & 564). Two weeks later, Roche moved for reconsideration, positing a different claim construction theory than the one it had previously advanced. (D.I. 636). On January 21, 2010, at the second pretrial conference, the Court denied the motion for reconsideration. (D.I. 852 ¶ 4). On July 27, 2010, the Court granted summary judgment of non-infringement for Defendants LifeScan and Nova. (D.I. 850 at 2 ¶ 2 & 3). Roche appealed the Court's summary judgment order as being predicated, in part, on the erroneous claim construction of "electrode." (D.I. 852 ¶ 2). On January 25, 2012, the Federal Circuit vacated the judgment of non-infringement and remanded to this Court to consider the parties' arguments that pertain to the scope of the term "electrode." Roche Diagnostics Operations, Inc. v. LifeScan Inc., 452 F.Appx. 989, 998 (Fed. Cir. 2012) (the "CAFC Decision" ). This Court duly heard argument on the "electrode" construction. For the reasons set forth below, the Court holds that the proper construction of "electrode" is "microelectrode having a width of 15 µm up to approximately 100 µm."
I. PROCEDURAL ISSUES
Roche filed this lawsuit in 2007, alleging patent infringement, against various defendants including Lifescan and Nova. The case followed the normal course of hotly-contested patent litigation. In due course, the Court held a Markman hearing. In preparation for the hearing, the parties submitted briefing. One of the terms in dispute was "electrode."
Roche did not originally specify any proposed construction for "electrode." (D.I. 357 at 6) (listing three terms for construction, not including "electrode"). Defendants proposed that the claimed "electrode" should be construed as a "microelectrode having a width of 15 to 100 µm." (D.I. 359 at 19) ( E.g., "a working electrode" is "a working microelectrode having a width of 15 to 100 µm"). Roche responded to Defendants' proposed claim construction, arguing that the claims were not limited to microelectrodes (D.I. 380 at 12-14) and were not limited to "having a width smaller than 100 µm." ( Id. at 14-23); CAFC Decision, 452 F.Appx. at 992 ("[A]t the claim construction stage, Roche argued... that the term electrode' in the asserted patent claims includes both micro' and macro' electrodes. Roche asserted that micro-electrodes are up to approximately 100 µm wide.").
The Court rejected Roche's proposed construction and concluded that "the claims should... be limited to microelectrodes." Markman Decision, 667 F.Supp.2d at 435; see also id. ("[T]he written description repeatedly confirms that the invention, and hence the claims, are directed to methods utilizing microelectrodes."); CAFC Decision, 452 F.Appx. at 994-95 ("Roche agrees... that the claims do not cover all electrodes of all widths. [Roche] now concedes that the term electrode' only covers micro-electrodes, not macro-electrodes."). The Court also addressed the parties' arguments concerning the preferred dimensions of microelectrodes. Not surprisingly, as all parties agreed that the upper limit of a microelectrode was "approximately 100 µm, " see id. at 992 ("Roche asserted that microelectrodes are up to approximately 100 µm, the Court concluded that the claimed microelectrodes' had a width of 15 µm up to approximately 100 µm. The Court also noted that the specification "does not describe the upper limit of the range as a strict cutoff' and, therefore, the construction "illuminates the size of the microelectrode to one of skill in the art without improperly excluding microelectrodes that are slightly larger than the preferred dimensions." Markman Decision, 667 F.Supp.2d at 436.
Roche moved for reconsideration of the claim construction, not seeking to reargue that the asserted claims read only on microelectrodes (D.I. 636, p.1), but arguing that microelectrodes may have widths up to 1000 µm. In support of the motion, Roche identified five bases - one being"[n]ewly obtained extrinsic evidence" and the other four being various "[ e]rror[ s] of apprehension ([l]aw])." ( Id., pp. 2-3). At a pretrial hearing on January 14, 2010, the Court stated, "I've read the briefing. I'm not convinced that I made a mistake or that I didn't consider all the arguments. So what I'm saying is that I would maintain the claim construction, but I'm going to give you an opportunity to put something in place to tell me that I shouldn't." (D.I. 858 at 47:7-13). After the hearing, the Court entered an order inviting an opposition brief to the Court's tentative denial of Roche's motion for reconsideration of the claim construction order. (0.0., Jan. 14, 2010).
Roche submitted the requested briefing on January 19, 2010. (D.I. 774). The briefing dealt solely with a prosecution history argument based on Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Cir. 2009), which was decided less than two weeks before the Court's claim construction ruling. (D.I. 774 at 4). Roche contended that Martek required the Court to consider prosecution history as a whole, rather than in a piecemeal fashion, and set forth the rule that preferred examples do not limit the claims to those preferred examples. ( Id. at 5). Martek was not cited in any of Roche's previous briefing regarding reconsideration of the claim construction ruling. Thus, this briefing was essentially a second motion for reconsideration. The Court held a second pretrial hearing on January 21, 2010, during which the Court stated, "I've looked at the paper on reconsideration. It's a great point for the Federal Circuit, and I actually think you might have a point. But it will be interesting to see what they say. So we will be moving ahead with that Rule 54 judgment." (D.I. 859 at 5:24-6:6). The Court then denied the motion for reconsideration and entered summary judgment of non-infringement based on the "electrode" construction. (D.I. 850). Roche appealed. (D.I. 852).
The unique procedural posture presented an interesting set of circumstances on appeal. The Federal Circuit stated, "The district court did not address whether reconsideration was procedurally appropriate, and, if so, whether Roche's argument has merit." CAFC Decision, 452 F.Appx. at 994. It is not clear to me which reconsideration argument (or arguments) the Federal Circuit was addressing when it made this statement. Under Third Circuit law, reconsideration is appropriate ifthere is: "(l) an intervening change in the controlling law; (2) the availability of new evidence that was not available when the court granted the motion for summary judgment; or (3) the need to correct a clear error oflaw or fact or to prevent manifest injustice." Max's Seafood Cafe v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999) (citing North River Ins. Co. v. CIGNA Reins. Co., 52 F.3d 1994, 1218 (3d Cir. 1995)). The District Court considered Roche's initial argument for reconsideration and initially determined that it did not meet the standards for reconsideration. (D.I. 858 at 47:7-13) ("I'm not convinced that I made a mistake or that I didn't consider all the arguments."). The Court then allowed Roche to submit more briefing, which Roche did, making one argument that was not in the original motion for reconsideration. Roche used the opportunity to present a second motion for reconsideration (even if not denominated as such). It seems clear to me that it was this subsequent argument that the District Court described as making "a great point." I say that both because the District Court had already rejected the arguments raised in the first motion for reconsideration, and because the language "a great point" seems more appropriate for a one point argument than a five point argument. The District Court followed up by entering an order denying without discussion the motion for reconsideration. The second argument for reconsideration appears to have been a non-starter in the Federal Circuit, as Martek and its related argument are not mentioned in the CAFC Decision.
The Federal Circuit thus appears to have conducted its review based on the content of the first motion for reconsideration combined with the Court's comment on the second argument for reconsideration. CAFC Decision, 452 F.Appx. at 993 ("Roche moved the district court for reconsideration, positing a different claim construction theory. This time, Roche... argued that micro-electrodes may indeed be up to 1, 000 µm wide. Roche also submitted new extrinsic evidence to support its motion for reconsideration. At the hearing ...