Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

AgroFresh Inc. v. Essentiv LLC

United States District Court, D. Delaware

October 18, 2018

AGROFRESH INC., Plaintiff,
v.
ESSENTIV LLC, DECCO U.S. POST-HARVEST, INC., and CEREXAGRI, INC. d/b/a DECCO POST-HARVEST, Defendants. AgroFresh Decco Court AgroFresh Decco Court AgroFresh Decco Court AgroFresh Decco Court AgroFresh Decco Court AgroFresh Decco Court Claim Term Recommended Construction

         UNDERSEAL

          REPORT AND RECOMMENDATION

          SHERRY R. FALLON UNITED STATER MAGISTRATE JUDGE

         I. INTRODUCTION

         In this patent infringement action filed by plaintiff AgroFresh Inc. ("AgroFresh") against defendants Essentiv LLC, Decco U.S. Post-Harvest, Inc., and Cerexagri, Inc.[1] ("Decco"), AgroFresh alleges infringement of United States Patent Nos. 9, 394, 216 ("the '216 patent"), 6, 017, 849 ("the '849 patent"), and 6, 313, 068 ("the '068 patent"), among a variety of other claims. (D.I. 106) Presently before the court is the matter of claim construction. This decision sets forth the court's recommendations of constructions for the disputed claim terms discussed in the briefing and at the Markman hearing held on September 11, 2018.

         II. BACKGROUND

         The '849 patent and '068 patent (together, "the Daly patents") share a common specification, which identifies ethylene as an important plant hormone affecting many aspects of plant growth, development, and senescence, particularly fruit ripening, flower fading, and leaf abscission. ('849 patent, col. 2:6-12; '068 patent, col. 2:10-16) The Daly patents are directed to identifying "ways to prevent or reduce the deleterious effects of ethylene on plants." ('849 patent, col. 2:40-41; '068 patent, col. 2:21-24) Specifically, the Daly patents are directed to encapsulating the 1-methylcyclopropene ("1-MCP") molecule to neutralize its volatility and allow its use to inhibit the ethylene response in plants.

         The application resulting in the '216 patent was filed on May 29, 2015, and issued on July 19, 2016. The '216 patent represents an improvement over the Daly patents by providing metal coordination polymeric networks ("MCPNs") that may be used to adsorb volatile cyclopropene compounds such as 1-MCP. ('216 patent, Abstract) The MCPNs disclosed in the '216 patent represent "a less costly option for sequestering 1-MCP for safe handling and use" in comparison to the a-cyclodextrin molecules used in the Daly patents. ('216 patent, col. 5:12-16) On March 7, 2018, the Patent Trial and Appeal Board ("PTAB") issued a decision instituting inter partes review ("IPR") against all claims of the '216 patent. (D.I. 198, Ex. DX-8)

         III. LEGAL STANDARD

         Construing the claims of a patent presents a question of law, although subsidiary fact finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837-38 (2015) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), affd, 517 U.S. 370, 388-90 (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). "[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324. Instead, the court may attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.

         The words of the claims "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." Phillips, 415 F.3d 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); see also Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016). Claim terms are typically used consistently throughout the patent, and "usage of a term in one claim can often illuminate the meaning of the same term in other claims." Phillips, 415 F.3d at 1314 (observing that "[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 . . .").

         It is likewise true that "[differences 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) (citing Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1375 (Fed. Cir. 2002).

         Other intrinsic evidence, including 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). "[T]he 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 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). 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." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481 F.3d 1371 (Fed. Cir. 2007). The specification "is not a substitute for, nor can it be used to rewrite, the chosen claim language." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is also "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.

         A court also may rely on "extrinsic evidence," which "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. ("[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court."). 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.

         Finally, "[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).

         IV. CONSTRUCTION OF DISPUTED TERMS

         A. "Molecular encapsulation agent" (all claims of the '849 patent and the '068 patent)

AgroFresh
Decco
Court

"a compound that has a lock and key structure similar to an enzyme whereby a substrate selectively fits into the encapsulation site"

"a compound that has a lock and key structure similar to an enzyme whereby a substrate selectively fits into the encapsulation site"

"a compound that has a lock and key structure similar to an enzyme whereby a substrate selectively fits into the encapsulation site"

         The parties agree that the specification defines the term as "a compound that has a lock and key structure similar to an enzyme whereby a substrate selectively fits into the encapsulation site." (D.I. 198, Ex. A at 1; '849 patent, ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.