United States District Court, D. Delaware
A. Palapura, Esq., POTTER, ANDERSON & CORROON,
Wilmington, Delaware; Chad E. Nydegger, Esq. (argued), Brent
P. Lorimer, Esq., WORKMAN NYDEGGER, Salt Lake City, Utah.
Attorneys for Plaintiff.
G. Connolly, III, Esq., CONNOLLY GALLAGHER LLP, Wilmington,
Delaware; Thomas S. Reynolds, Esq. (argued), Jeremy Adelson,
Esq. (argued), HANSEN REYNOLDS DICKINSON & CRUEGER LLC,
Milwaukee, Wisconsin; Joseph J. Jacobi, Esq., HANSEN REYNOLDS
DICKINSON & CRUEGER LLC, Chicago, Illinois. Attorneys for
ANDREWS, U.S. DISTRICT JUDGE
before the Court are Defendant's Motion for Summary
Judgment of Invalidity of the Asserted Claims of U.S. Patent
9, 059, 532 (D.I. 136) and related briefing (D.I. 137, 157,
175), Plaintiffs Cross-Motion for Summary Judgment of No.
Invalidity and for Additional Claim Construction (D.I. 156)
and related briefing (D.I. 157, 175, 198), Defendant's
Motion to Exclude Opinions of Nox Medical EHF's Retained
Expert, Alan T. Oslan, Pursuant to Federal Rule of Evidence
702 (D.I. 144) and related briefing (D.I. 145, 179, 200), and
Plaintiffs Motion to Exclude Certain Opinions and Testimony
of Dr. Justin Williams That the Claims of U.S. Patent No. 9,
059, 532 are Invalid (D.I. 154) and related briefing (D.I.
155, 177, 202). I held oral argument on January 9, 2018.
reasons that follow, the Court will DENY
Defendant's Motion for Summary Judgment of Invalidity
(D.I. 136); DENY in part and
GRANT in part Plaintiffs Cross-Motion for
Summary Judgment of No. Invalidity and for Additional Claim
Construction (D.I. 156); DENY
Defendant's Motion to Exclude Opinions of Nox Medical
EHF's Retained Expert, Alan T. Oslan, Pursuant to Federal
Rule of Evidence 702 (D.I. 144); and DENY in
part and GRANT in part Plaintiffs Motion to
Exclude Certain Opinions and Testimony of Dr. Justin Williams
That the Claims of U.S. Patent No. 9, 059, 532 are Invalid
has stipulated that certain of its products infringe claims
1, 4, 5, 6, 7, 8, and 9 of U.S. Patent No. 9, 059, 532. (D.I.
72). Defendant contends that Claims 1, 6, 7, and 9 are
invalid as anticipated by the Nox RES Belt; claims 4, 5, and
8 are invalid as obvious based on combinations including the
Nox RES Belt; and claims 6 and 7 are invalid under §
112(b) and (d). (D.I. 137 at 8-20).
is an independent claim and reads as follows:
1. An electrode belt and a belt connector for electrically
connecting a conductor of the electrode belt to a male
portion of a snap connector electrode connected to a
biometric device, the belt connector comprising:
a molded plastic frame including a receiving hole having
radial flexibility, the receiving hole being configured to
function as a female snap button fastener for receiving and
fastening the frame to a protrusion of the male portion of
the snap connector electrode,
a fastener configured to fasten the frame to a first end of
said electrode belt, and
an engaging member adjacent to said receiving hole, the
engaging member engaging the conductor of the electrode belt
by the conductor passing through the receiving hole while
being wrapped around the engaging member, such that when the
male portion of the snap connector electrode penetrates the
receiving hole, the conductor is forced into physical contact
with at least a lateral surface of the male portion of the
snap connector electrode,
wherein radial flexibility of said receiving hole is achieved
by one or more slot[s] extending from said hole, and wherein
said receiving hole and one or more slot[s] are formed by at
least one elongated member having flexibility transverse to
its longitudinal axis, thus imparting flexibility to the
width of the hole.
4 through 9 depend from claim 1. Claim 4 depends from
"[t]he electrode belt and the belt connector of claim
1" and adds "wherein said belt connector comprises
a cover enclosing the frame, which cover either includes a
hole overlapping the receiving hole of the frame, or can be
readily perforated by pressing the connector onto a male
fastener which fits the receiving hole of the frame."
Claim 5 depends from "[t]he electrode belt and the belt
connector of claim 4" and adds "wherein said cover
is selected from the group consisting of a folded paper,
plastic or fabric sticker, a plastic envelope and a textile
envelope." Claim 6 depends from "[t]he electrode
belt and the belt connector of claim 1" and adds
"wherein said fastening means comprise a slot with a row
of teeth, pins or hooks transverse to the belt direction, to
engage a belt end." Claim 7 depends from "[t]he
electrode belt and the belt connector of claim 1" and
adds "wherein said fastening means comprise a ridge
member of row of pins which lies transverse to the belt
direction and to which a belt end can be fastened onto with
heat melting or gluing." Claim 8 depends from
"[t]he electrode belt and the belt connector of claim
1" and adds "wherein said belt connector comprises
an adjustment slot with teeth, pin or hook members, through
which slot a loop of desired length of said belt can be
inserted, to adjust and fix the length of the belt."
Claim 9 depends from "[t]he electrode belt and the belt
connector of claim 1" and adds "wherein said belt
is a flexible textile belt with an electrode wire interwoven
in the belt or laminated between two layers of the
belt." (D.I. 138-1, Exh. A).
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). The moving party has the initial burden
of proving the absence of a genuinely disputed material fact
relative to the claims in question. Celotex Corp. v.
Catrett, 477 U.S. 317, 330 (1986). Material facts are
those "that could affect the outcome" of the
proceeding, and "a dispute about a material fact is
'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the nonmoving
party." Lamont v. New Jersey, 637 F.3d 177, 181
(3d Cir. 2011) (quoting Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986)). When
determining whether a genuine issue of material fact exists,
the court must view the evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Scott v. Harris, 550 U.S.
372, 380 (2007); Wishkin v. Potter, 476 F.3d 180,
184 (3d Cir. 2007).
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)
Invalidity Under 35 U.S.C. § 102
show that a patent claim is invalid as anticipated, the
accused infringer must show by clear and convincing evidence
that a single prior art reference discloses each and every
element of a claimed invention." Silicon Graphics,
Inc. v. ATI Tech., Inc., 607 F.3d 784, 796 (Fed. Cir.
2010). "[E]very element of the claimed invention [must
be described], either expressly or inherently, such that a
person of ordinary skill in the art could practice the
invention without undue experimentation." Callaway
Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir.
2009). As with infringement, the court construes the claims
and compares them against the prior art. See Enzo
Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332
(Fed. Cir. 2010). "While anticipation is a question of
fact, it maybe decided on summary judgment if the record
reveals no genuine dispute of material fact."
Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am.,
Inc., 609 F.3d 1345, 1349 (Fed. Cir. 2010).
Invalidity Under 35 U.S.C. § 103
patent claim is invalid as obvious under 35 U.S.C. § 103
"if the differences between the claimed invention and
the prior art are such that the claimed invention as a whole
would have been obvious before the effective filing date of
the claimed invention to a person having ordinary skill in
the art to which the claimed invention pertains." 35
U.S.C. § 103; see also KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 406-07 (2007). "Under §
103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims
at issue are to be ascertained; and the level of ordinary
skill in the pertinent art resolved. Against this background,
the obviousness or nonobviousness of the subject matter is
determined." KSR, 550 U.S. at 406 (internal
is required to consider secondary considerations, or
objective indicia of nonobviousness, before reaching an
obviousness determination, as a "check against hindsight
bias." See In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 616 F.3d 1063,
1078-79 (Fed. Cir. 2012). "Such secondary considerations
as commercial success, long felt but unsolved needs, failure
of others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter
sought to be patented." Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17-18 (1966). Where "the
content of the prior art, the scope of the patent claim, and
the level of ordinary skill in the art are not in material
dispute, and the obviousness of the claim is apparent in
light of these factors, summary judgment is
appropriate." KSR, 550 U.S. at 427.
Invalidity Under 35 U.S.C. § 112(b)
patent is invalid for indefiniteness if its claims, read in
light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the
invention." Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S.Ct. 2120, 2124 (2014).
Rule of Evidence 702 sets out the requirements for expert
witness testimony and states:
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of
an opinion or otherwise if: (a) the expert's scientific,
technical, or other specialized knowledge will help the trier
of fact to understand the evidence or to determine a fact in
issue; (b) the testimony is based on sufficient facts or
data; (c) the testimony is the product of reliable principles
and methods; and (d) the expert has reliably applied the
principles and methods to the facts of the case.
Fed. R. Evid. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert
testimony: qualification, reliability and fit. Qualification
refers to the requirement that the witness possess
specialized expertise. We have interpreted this requirement
liberally, holding that "a broad range of knowledge,
skills, and training qualify an expert." Secondly, the
testimony must be reliable; it "must be based on the
'methods and procedures of science' rather than on
'subjective belief or unsupported speculation'; the
expert must have 'good grounds' for his o[r] her
belief. In sum, Daubert holds that an inquiry into
the reliability of scientific evidence under Rule 702
requires a determination as to its scientific validity."
Finally, Rule 702 requires that the expert testimony must fit
the issues in the case. In other words, the expert's
testimony must be relevant for the purposes of the case and
must assist the trier ...