United States District Court, D. Delaware
RAINDANCE TECHNOLOGIES, INC., and THE UNIVERSITY OF CHICAGO, Plaintiffs,
10X GENOMICS, INC. Defendant.
B. Blumenfeld, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL
LLP, Wilmington, DE; Karen Jacobs, Esq., MORRIS, NICHOLS,
ARSHT & TUNNELL LLP, Wilmington, DE; Edward R. Reines,
Esq. (argued), WEIL, GOTSHAL & MANGES LLP, Redwood
Shores, CA; Derek C. Walter, Esq., WEIL, GOTSHAL & MANGES
LLP, Redwood Shores, CA. Attorneys for Plaintiff
J. Balick, Esq., ASHBY & GEDDES, Wilmington, DE; Tiffany
Geyer Lydon, Esq., ASHBY & GEDDES, Wilmington, DE; Andrew
C. Mayo, Esq., ASHBY & GEDDES, Wilmington, DE; David I.
Gindler, Esq. (argued), IRELL & MANELLA LLP, Los Angeles,
CA; Andrei Iancu, Esq., IRELL & MANELLA LLP, Los Angeles,
CA; Lauren Nicole Drake (argued), Esq., IRELL & MANELLA
LLP, Los Angeles, CA; Elizabeth Chenyi Tuan, Esq., IRELL
& MANELLA LLP, Los Angeles, CA. Attorneys for Defendant
ANDREWS, U.S. DISTRICT JUDGE
before the Court is the issue of claim construction of a
single term in U.S. Patent Nos. 8, 822, 148 ("the
'148 patent"), 8, 329, 407 ("the '407
patent"), 8, 304, 193 ("the '193 patent"),
8, 658, 430 ("the '430 patent"), and 8, 889,
083 ("the '083 patent"). The Court has
considered the Parties' Joint Claim Construction Brief.
(D.I. 93). The Court heard oral argument on December 16,
2016. (D.I. 105). During argument, the Court instructed the
parties to provide expert testimony as to the meaning of the
disputed term "polymerase chain
reaction''/''PCR." (D.I. 105 at
97:24-98:7). The Court issued its claim construction opinion
for all other disputed terms on January 26, 2017. (D.I. 116).
The Court heard further argument, including expert testimony,
on the remaining disputed term on March 6, 2017. (D.I. 169)
filed this action on February 12, 2015, alleging infringement
of six patents on behalf of both Plaintiffs. (D.I.I).
Plaintiffs refer to these patents as the Ismagilov patents.
On April 23, 2015, Plaintiffs filed an amended complaint
asserting an additional patent, the '430 patent, on
behalf of Plaintiff RainDance only. (D.I. 12). On March 25,
2016, Plaintiffs filed a second amended complaint in which
they asserted the '430 patent and only five of the
Ismagilov patents. (D.I. 32). The'430 patent was
dismissed on March 24, 2017. (D.I. 138).
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.'" Soft View LLC
v. Apple Inc, 2013 WL4758195, 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.
West view 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 (internal quotation marks omitted).
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.
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 and internal quotation marks omitted).
CONSTRUCTION OF DISPUTED TERM
patents-in-suit were described and representative claims
provided in the Court's first claim construction opinion.
(D.I. 116). ...