United States District Court, D. Delaware
Jeffrey L. Moyer, Esq., RICHARDS, LAYTON & FINGER,
Wilmington, DE; Kevin M. Flowers, Esq. (argued), John R.
Labbe, Esq., Amanda K. Antons, Esq., MARSHALL GERSTEIN &
BORUN LLP, Chicago, IL. Attorneys for Plaintiffs.
Dominick T. Gattuso, Esq., PROCTOR HEYMAN & ENERIO LLP,
Wilmington, DE; Thomas J. Meloro, Esq. (argued), Michael W.
Johnson, Esq., Tara L. Thieme, Esq., WILLKIE FARR &
GALLAGHER, New York, NY. Attorneys for Defendant.
ANDREWS, U.S. DISTRICT JUDGE.
before me is the issue of claim construction of multiple
terms in U.S. Patent No. 5, 856, 298 ("the '298
patent"). The '298 patent generally relates to
erythropoietin ("EPO") isoforms. I have considered
the parties' Joint Claim Construction Brief. (D.I. 104).
I held a Markman hearing on September 21, 2016. I
have also considered the parties' supplemental letters
submitted after the Markman. (D.I. 138; D.I.
144-45). On November 30, 2016, 1 resolved several threshold
issues and invited the parties to submit additional letters
if issues remained. (D.I. 162). On December 14, 2016, the
parties submitted a lengthy joint letter detailing remaining
issues with respect to claim construction. (D.I. 164).
is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled
the right to exclude." Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal
quotation marks omitted). '"[T]here is no magic
formula or catechism for conducting claim construction.'
Instead, the court is free to attach the appropriate weight
to appropriate sources 'in light of the statutes and
policies that inform patent law.'" SoftView LLC
v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4,
2013) (quoting Phillips, 415 F.3d at 1324)
(alteration in original). When construing patent claims, a
court considers the literal language of the claim, the patent
specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed.
Cir. 1995) (en banc), aff'd, 517 U.S. 370
(1996). Of these sources, "the specification is always
highly relevant to the claim construction analysis. Usually,
it is dispositive; it is the single best guide to the meaning
of a disputed term." Phillips, 415 F.3d at 1315
(internal quotation marks omitted).
words of a claim are generally given their ordinary and
customary meaning.. .. [Which is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13 (citations and internal quotation
marks omitted). "[T]he ordinary meaning of a claim term
is its meaning to [an] ordinary artisan after reading the
entire patent." Id. at 1321 (internal quotation
marks omitted). "In some cases, the ordinary meaning of
claim language as understood by a person of skill in the art
may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the
application of the widely accepted meaning of commonly
understood words." Id. at 1314.
court relies solely upon the intrinsic evidence-the patent
claims, the specification, and the prosecution history-the
court's construction is a determination of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
841 (2015). The court may also make factual findings based
upon consideration of extrinsic evidence, which
"consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips,
415 F.3d at 1317-19. Extrinsic evidence may assist the court
in understanding the underlying technology, the meaning of
terms to one skilled in the art, and how the invention works.
Id. Extrinsic evidence, however, is less reliable
and less useful in claim construction than the patent and its
prosecution history. Id.
claim construction is persuasive, not because it follows a
certain rule, but because it defines terms in the context of
the whole patent." Renishaw PLC v. Marposs Societa
'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
It follows that "a claim interpretation that would
exclude the inventor's device is rarely the correct
interpretation." Osram GMBH v. Int'l Trade Comm
'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation
previous opinion (D.I. 162), I construed "an isolated
... isoform" and "isolated ... isoform." In
particular, I construed "isolated . .. isoform" as
"a group of molecules that has a single isoelectric
focusing point and a specific number of sialic acids per
molecule, and appears as a single band on an isoelectric
focusing gel (an example of which is shown in Figure 1 of the
'298 patent)." I implicitly construed "an
isolated . .. isoform" as "one and only one
isolated ... isoform." I did not separately construe
"isoform." In rejecting Plaintiffs proposal, I
commented, "Plaintiffs reading would equate the phrase
'an isolated ... isoform' with 'an
isoform.'" The present disputes require that I
clarify my earlier constructions.
isoform" is "a group of molecules that has a single
isoelectric focusing point and a specific number of sialic
acids per molecule, and appears as a single band on an
isoelectric focusing gel (an example of which is shown in
Figure 1 of the '298 patent)."
isolated ... isoform" is "one and only one isoform,
" meaning that only erythropoietin isoforms, all with
the same isoelectric focusing point and the same number of
sialic acids per molecule and which appear as a single band
on an isoelectric focusing gel, are claimed. Erythropoietin
isoforms with different isoelectric focusing points and
different numbers of sialic acids per molecule and which
appear at other bands on an isoelectric focusing gel are
I also found claim 8 invalid because it did not properly
depend from claim 1. (D.I. 162 at 7-9). Claim 1 required one
and only one isoform. Because claim 8 claimed compositions
consisting essentially of two or three isoforms, it