United States District Court, D. Delaware
Dominick T. Gattuso, HEYMAN ENERIO GATTUSO & HIRZEL LLP
William H. Frankel, David P. Lindner, Jafon L. Fearson,
BRINKS GILSON & LIONE, Chicago, IL Attorneys for
Barillare, MORGAN LEWIS & BOCKIUS LLP, Wilmington, DE J.
Kevin Fee, Jeremy D. Peterson, MORGAN LEWIS & BOCKIUS
LLP, Washington, DC Attorneys for Defendants/Counterclaim
U.S. DISTRICT JUDGE.
Monaghan Medical Corp. (“Monaghan”) has sought a
declaratory judgment that it does not infringe any claim of
U.S. Patent No. 7, 059, 324 (“'324 patent”).
Defendant Smiths Medical ASD, Inc. (“Smiths
Medical”) has counterclaimed that Monaghan infringes
the '324 patent as well as U.S. Patent No. 6, 581, 598
(“'598 patent”) (collectively,
before the Court are the parties' disputes over the
meaning of certain claim terms in the asserted claims. The
parties submitted technology tutorials (D.I. 64, 65),
objections to technology tutorials (D.I. 68, 73), claim
construction briefs (D.I. 54, 61, 69, 71), and expert
declarations (D.I. 62, 71). The Court held a claim
construction hearing on May 7, 2018. (See D.I. 97
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). “It 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) (internal quotation marks omitted).
is no magic formula or catechism for conducting claim
construction.” Id. at 1324. Instead, the Court
is free to attach the appropriate weight to appropriate
sources “in light of the statutes and policies that
inform patent law.” Id.
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 (internal citations and quotation marks omitted).
“[T]he ordinary meaning of a claim term is its meaning
to the ordinary artisan after reading the entire
patent.” Id. at 1321 (internal quotation marks
omitted). The patent 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.” Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“the claims themselves provide substantial guidance as
to the meaning of particular claim terms, ” the context
of the surrounding words of the claim also must be
considered. Phillips, 415 F.3d at 1314. Furthermore,
“[o]ther claims of the patent in question, both
asserted and unasserted, can also be valuable sources of
enlightenment . . . [b]ecause claim terms are normally used
consistently throughout the patent.” Id.
(internal citation omitted).
likewise true that “[d]ifferences among claims can also
be a useful guide. . . . For example, the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim.” Id. at
1314-15 (internal citation omitted). This “presumption
is especially strong when the limitation in dispute is the
only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation
in the dependent claim should be read into the independent
claim.” SunRace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
also possible that “the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such
cases, the inventor's lexicography governs.”
Phillips, 415 F.3d at 1316. It bears emphasis that
“[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words or expressions
of manifest exclusion or restriction.” Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed.
Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (internal
quotation marks omitted).
addition to the specification, a court “should also
consider the patent's prosecution history, if it is in
evidence.” Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). The prosecution
history, which is “intrinsic evidence, ”
“consists of the complete record of the proceedings
before the PTO [Patent and Trademark Office] and includes the
prior art cited during the examination of the patent.”
Phillips, 415 F.3d at 1317. “[T]he prosecution
history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise be.” Id.
cases, “the district court will need to look beyond the
patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period.” Teva, 135 S.Ct. at
841. Extrinsic evidence “consists of all evidence
external to the patent and prosecution history, including
expert and inventor testimony, dictionaries, and learned
treatises.” Markman, 52 F.3d at 980. For
instance, technical dictionaries can assist the court in
determining the meaning of a term to those of skill in the
relevant art because such dictionaries “endeavor to
collect the accepted meanings of terms used in various fields
of science and technology.” Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful
“to ensure that the court's understanding of the
technical aspects of the patent is consistent with that of a
person of skill in the art, or to establish that a particular
term in the patent or the prior art has a particular meaning
in the pertinent field.” Id. Nonetheless,
courts must not lose sight of the fact that “expert
reports and testimony [are] generated at the time of and for
the purpose of litigation and thus can suffer from bias that
is not present in intrinsic evidence.” Id.
Overall, while extrinsic evidence “may be useful”
to the court, it is “less reliable” than
intrinsic evidence, and its consideration “is unlikely
to result in a reliable interpretation of patent claim scope
unless considered in the context of the intrinsic
evidence.” Id. at 1318-19. Where the intrinsic
record unambiguously describes the scope of the patented
invention, reliance on any extrinsic evidence is improper.
See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics,
90 F.3d at 1583).
“[t]he 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.” 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)
(quoting Modine Mfg. Co. v. U.S. Int'l Trade
Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
patent claim is indefinite if, “viewed in light of the
specification and prosecution history, [it fails to] inform
those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). A
claim may be indefinite if the patent does not convey with
reasonable certainty how to measure a claimed feature.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
1335, 1341 (Fed. Cir. 2015). But “[i]f such an
understanding of how to measure the claimed [feature] was
within the scope of knowledge possessed by one of ordinary
skill in the art, there is no requirement for the
specification to identify a particular measurement
technique.” Ethicon Endo-Surgery, Inc. v. Covidien,
Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).
CONSTRUCTION OF DISPUTED TERMS
patents-in-suit generally relate to positive expiratory
pressure (“PEP”) devices and methods using
oscillatory positive expiratory pressure to treat patients.
'324 patent, 1:12-18; '598 patent, 1:6-12. The
methods and devices are designed to help remove excess mucus
from patients suffering from certain lung problems. '324
patent, 1:21-26, 36-52; '598 patent, 1:15-20, 39-51.
“In the use of PEP therapy, a patient breathes through
an orifice restricter to generate a positive pressure in the
lungs during exhalation, with the pressure falling to zero at
the end of the exhalation.” '598 patent, 1:39-42.
“By selection of the proper-sized orifice, a given
pressure is determined for the exhalation flow rate generated
by an individual patient.” Id. 1:42-44.
“This extended, substantially constant, flow of
elevated-pressure exhalation has been shown to be effective
for moving secretions trapped in the lungs to the larger
airways where the secretions can then be removed through
coughing.” Id. 1:44-48. “It has also
been found that . . . treatment with PEP therapy is improved
by combining positive expiratory pressure therapy with airway
oscillation and intermittent air-flow acceleration.”
expiratory, ” “expiratory air, ” and
“expiratory air pressure”
“the discharge of expiratory
“the exhaled air from the lungs into the
patient input opening”
“the pressure of expiratory
“the pressure of exhaled air from the
“the pressure of exhaled air”
“the pressure of exhaled air”
“the expiratory air
“the exhaled air pressure from the lungs”
(claim 2); “the exhaled air pressure from the
lungs into the air flow tube” (claim 6)
“exhaled air pressure”
“exhaled air pressure”
“the pressure of expiratory air discharged
“the pressure of the exhaled air passed
“the pressure of the exhaled air passed
f. “the pressure of expiratory air ...