United States District Court, D. Delaware
before the Court is the issue of claim construction of terms
in U.S. Patent No. 6, 716, 867 ("the '867
patent"). I have considered the parties' joint claim
construction brief. (D.I. 58).
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) (citation
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). 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,
979-80 (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.
words of a claim are generally given their ordinary and
customary meaning. . . . [This 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. "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after
reading the entire patent." Id. at 1321.
"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)
PATENT AT ISSUE
of the '867 patent reads (as amended by the May 25, 2004
Certificate of Correction):
1. A method of sedating a patient in an intensive care
unit, which comprises administering to the patient an
effective amount of dexmedetomidine or a pharmaceutically
acceptable salt thereof, wherein the patient remains
arousable and orientated.
(D.I. 59 at 106).
CONSTRUCTION OF AGREED-UPON TERM
Court adopts the following agreed-upon
"substantially pure, optically active
dextrorotary stereo isomer of medetomidine, as the
free base or pharmaceutically acceptable salt"