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Agrofresh Inc. v. Mirtech, Inc.

United States District Court, D. Delaware

January 2, 2019

AGROFRESH INC., Plaintiff,
v.
MIRTECH, INC., NAZIR MIR, ESSENTIV LLC, DECCO U.S. POST-HARVEST, INC., CEREXAGRI, INC. d/b/a DECCO POST-HARVEST, and UPL, LTD., Defendants.

          Chad S.C. Stover, Regina S.E. Murphy, Barnes & Thornburg LLP, Wilmington, DE; Robert D. MacGill, Lynn C. Tyler, Deborah Pollack-Milgate, Joseph T. Wendt, Jessica M. Lindemann, Barnes & Thornburg LLP, Indianapolis, IN - Attorney for Plaintiff

          Frederick L. Cottrell, III, Jeffrey L. Moyer, Nicole K. Pedi, Richards, Layton & Finger, Wilmington, DE; Gerald F. Ivey, John M. Williamson, Anand K. Sharma, Rajeev Gupta, Aidan C. Skoyles, Karthik Kumar, Daniel F. Roland, Finnegan, Henderson, Farabow, Garrett & DUNNER, LLP, Washington, DC - Attorneys for Defendant

          MEMORANDUM OPINION

          NOIRETKA, U.S. DISTRICT JUDGE

         On October 18, 2018, Magistrate Judge Fallon issued a Report and Recommendation (D.I. 247, "the Report") recommending that the Court adopt constructions for disputed claim terms in U.S. Patent Nos. 6, 017, 849, 6, 313, 068 and 9, 394, 216 ("the '216 Patent"). On November 1, 2018, Plaintiff AgroFresh Inc. ("Plaintiff or "AgroFresh") objected to the Report only with respect to the recommended constructions of terms found in the '216 Patent - "1-MCP Impermeable" / "1-MCP Impermeable Package" and "1-MCP is adsorbed into the MCPN." (See D.I. 260). On November 15, 2018, Defendants Decco U.S. Post Harvest, Inc., Cerexagri, Inc., Essentiv LLC, and UPL Ltd. (collectively, "Defendants") responded to Plaintiff's objections. (See D.I. 286).

         The Court has reviewed the Report, Plaintiffs objections and Defendant's responses thereto, and has considered de novo the original claim construction briefing and supporting documents, as well as the transcript of the claim construction hearing regarding the objected to terms. See, e.g., St. Clair Intellectual Prop. Consultants, Inc. v. Matsushita Elec. Indus. Co., 691 F.Supp.2d 538, 541-42 (D. Del. 2010); 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(b)(3). For the reasons set forth below, Plaintiffs objections (D.I. 260) to the Report are OVERRULED-IN-PART and SUSTAINED-IN-PART. The recommended constructions of "1-MCP Impermeable" / "1-MCP Impermeable Package" are ADOPTED and the recommended construction of "1-MCP is adsorbed into the MCPN" is MODIFIED as discussed below.

         I. LEGAL STANDARDS

         "[T]he ultimate question of the proper construction of the patent [is] 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). "[T]he 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." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal citations and quotation marks omitted). Although "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. Id. at 1314." [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 . . . [as] 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). It is 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. "Even when the specification describes only a single embodiment, [however, ] 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) (internal quotation marks omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Marhnan v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), 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.

         In some cases, courts "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. 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." Phillips, 415 F.3d at 1318. 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, although 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).

         II. DISCUSSION

         A. "1-MCP Impermeable" / "1-MCP Impermeable Package"

         AgroFresh's proposed construction

         1-MCP impermeable means "the 1-MCP will not pass for at least three days within a detection limit of 10 ppb"

         1-MCP impermeable package means "a package (including filters) through which 1-MCP will not pass for at least three days within a detection limit of 10 ppb"

         Defendants' ...


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