United States District Court, D. Delaware
E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, DE
Edward R. Reines and Derek C. Walter, WEIL, GOTSHAL &
MANGES LLP, Redwood Shores, CA Attorneys for Plaintiff
B. Blumenfeld, Jennifer Ying, and Jeffrey J. Lyons, MORRIS,
NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE Stephen M.
Hash, Puneet Kohli, and Samoneh Kadivar, BAKER BOTTS L.L.P.,
Austin, TX David G. Wille and Johnson K. Kuncheria, BAKER
BOTTS L.L.P., Dallas, TX Attorneys for Defendants
U.S. DISTRICT JUDGE.
Pacific Biosciences of California, Inc. ("PacBio"
or "Plaintiff) has brought two patent infringement suits
against Defendants Oxford Nanopore Technologies, Inc.
("Oxford" or "Defendant") and Oxford
Nanopore Technologies, Ltd. ("ONT LTD") asserting
U.S. Patent Nos. 9, 546, 400 (the '"400
patent"), 9, 772, 323 (the '"323 patent"),
9, 678, 056 (the '"056 patent"), and 9, 738,
929 (the '"929 patent"). The four
patents-in-suit generally relate to nanopore sequencing.
before the Court is the issue of claim construction. PacBio
and Oxfordsubmitted two technology tutorials
(see D.I. 98, 99), objections to one of the
technology tutorials (see D.I. 126), claim
construction briefs (see D.I. 91, 92, 124, 127),
exhibits (see D.I. 80, 91, 94, 125, 128), and expert
declarations (see D.I. 95, 96, 97). The Court held a claim
construction hearing on December 17, 2018, at which both
sides presented oral argument. (See D.I. 135
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 "[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).
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
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.
Furthermore, "statements made by a patent owner during
an IPR [inter partes review] proceeding . . . can be
considered for claim construction." Aylus Networks,
Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir.
2017). 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)).
CONSTRUCTION OF DISPUTED TERMS
variations in ionic current"
No construction necessary
"intermittently monitoring variations in
No construction necessary
Court agrees with PacBio that the claims are not limited to
intermittent monitoring. Although the word
"intermittent" appears repeatedly in the
specification, it is not contained in the claims. Oxford
argues that the specification "consistently requires
intermittent detection" so adding
"intermittent" to the claims is not an improper
importation of a limitation. (D.I. 92 at 16; see
also Tr. at 12, 14) Oxford is not arguing that its
construction is required due to express lexicography,
disclaimer, or disavowal. (See Tr. at 16)
many (possibly all) embodiments of the invention discussed in
the specification involve intermittent detection, nothing in
the patent (including the use of "present
invention" and "invention" language) excludes
the possibility of consistent, non-intermittent methods of
"monitoring variations in ionic
current." "Absent a clear disavowal or contrary
definition in the specification or the prosecution history,
the patentee is entitled to the full scope of its claim
language." Home Diagnostics, Inc. v. LifeScan,
Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004). The Court is
not persuaded that the specification disavows or disparages
consistent, non-intermittent monitoring.
"a molecule having multiple
"a double-stranded nucleic acid molecule
comprising a first terminal portion, an
intermediate portion, and a second terminal
portion wherein at least a first linker ligated
to the first terminal portion of the nucleic
acid molecule connects a 3' terminus at the
first terminal portion with a 5' terminus
at the first terminal portion"
"a molecule having multiple
does not dispute that PacBio's proposed construction
provides the plain meaning of "polynucleotide."
(See Tr. at 33) Rather, Oxford argues that PacBio
should be held to its previous representations to the Court
when successfully opposing Oxford's motion to dismiss
pursuant to 35 U.S.C. § 101 in the 17-1353 action,
because claim constructions must be applied consistently for
purposes of both invalidity and infringement. (See
D.I. 127 at 15-16)
brief opposing Oxford's motion to dismiss, PacBio
discussed the claims' "novel method of manipulating
polynucleotides" by using "novel nucleic acid
templates." (C.A. No. 17- 1353 D.I. 24 at 1-2, 12) In
the Court's opinion denying the motion to dismiss, the
Court relied on these representations - but the Court was
discussing the asserted claims as a whole, particularly the
novelty of the methods, rather than this particular claim
Moreover, the parties had not asked the Court to construe any
claim terms in connection with the § 101 motion, and the
Court did not adopt any definition of
"polynucleotide" or limit it to the invention's
has consistently asserted that the claimed invention
manipulates polynucleotides to create novel templates, but
does not begin with novel templates of polynucleotides.
Nothing stated by PacBio in connection with the motion to
dismiss, nor by the Court in denying that motion, alters that
fact. Here, then, the Court is persuaded that a person of
ordinary skill in the art ("POSA") would understand
that the term "polynucleotide" is intended to be
broad and have its (undisputed) plain and ordinary meaning.
"information reflecting the identity and order
of each of the bases"
"the identity and order of each of the
"the identity and order of each of the
are two issues pertaining to this term: PacBio's concern
regarding error rates and Oxford's concern regarding raw
data. With respect to error rates, the parties agree that the
term must account for the fact that nucleotide sequencing in
the real world is not perfect, so the determined identity and
order of bases must account for some degree of error.
(See Tr. at 40-45) Oxford's representation that
its construction is not intended to exclude errors made in
determining a nucleotide sequence (see Id. at 43-45)
resolves PacBio's concern.
contends that PacBio's proposed construction would allow
Plaintiff to argue that the term refers to the underlying raw
data that reflects the actual base calls rather than the base
calls themselves. (See Id. at 44-45, 48) At oral
argument, PacBio did not persuasively disclaim such an
argument. The Court agrees with Oxford that the
"nucleotide sequence" must be the base calls
themselves (i.e., A, C, G, or T), not the underlying data
that reflects the identity of the base calls. This conclusion
is supported by the patent's specification, which
distinguishes "sequence read
data," which is
"representative of the nucleotide sequence," from
"the actual sequence of the template nucleic
acid molecule," noting the two "may not be
identical." ('929 patent at 61:38-42) (emphasis
added) PacBio's construction would improperly expand the
term to include irrelevant "information."
(See D.I. 92 at 18-19) Accordingly, the Court will
adopt Oxford's proposed construction.
"The sequence of the template nucleic