United States District Court, D. Oregon
K. Legaard and Angela E. Addae, Schwabe,Williamson &
Wyatt, PC, Of Attorneys for Plaintiff.
Kristin L. Cleveland, Klarkquist Sparkman, LLP, Orion Armon
and Alexandra Mayhugh, Cooley LLP, Of Attorneys for
OPINION AND ORDER ON CLAIM CONSTRUCTION
MICHAEL H. SIMON, UNITED STATES DISTRICT JUDGE
action brought by Plaintiff Ni-Q, LLC (“Ni-Q”)
against Defendant Prolacta Bioscience, Inc.
(“Prolacta”), Ni-Q seeks a declaratory judgment
of non-infringement of U.S. Patent No. 8,628,921 (“the
’921 patent”), among other things. The parties
originally requested that the Court construe two terms in
Claim 1 of the ’921 patent: “wherein a
match” and “processing.” During the
conferral process for claim construction, the parties agreed
upon a construction for “wherein a match” and now
only disagree over the construction of
“processing.” On June 1, 2018, the Court held a
claim construction hearing. Based on the parties’
submissions, the arguments of counsel, and the evidence
adduced at the hearing, the Court adopts the parties’
construction of “wherein a match” and construes
the disputed term “processing” as set forth
infringement analysis involves two steps. First, the court
construes the asserted patent claims. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)
(en banc), aff’d, 517 U.S. 370
(1996). Second, the factfinder determines whether the accused
product or method infringes the asserted claims as construed.
Id. The first step, claim construction, is a matter
of law. See Markman, 517 U.S. at 372; Vitrionics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 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) (en banc) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Patent
claims must precisely define the relevant invention and
thereby put both the public and competitors on notice of the
claimed invention. See Phillips, 415 F.3d at 1312.
words of a claim ‘are generally given their ordinary
and customary meaning.’” Phillips, 415
F.3d at 1312 (quoting Vitrionics, 90 F.3d at 1582).
There are two exceptions to this general rule: (1)
“when a patentee sets out a definition and acts as his
own lexicographer;” or (2) “when the patentee
disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v.
Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012); see also Hormone Research Found., Inc.
v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed. Cir. 1990)
(“It is a well-established axiom in patent law that a
patentee is free to be his or her own lexicographer and thus
may use terms in a manner contrary to or inconsistent with
one or more of their ordinary meanings.” (citation
ordinary and customary meaning “is the meaning that the
term would have to a person of ordinary skill in the art in
question at the time” of the effective filing date of
the patent application. Phillips, 415 F.3d at 1313.
This is because “inventors are typically persons
skilled in the field of the invention,” and
“patents are addressed to and intended to be read by
others of skill in the pertinent art.” Id.
“[T]he person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particular
claim in which the disputed term appears, but in the context
of the entire patent,” id., which includes the
“written description and the prosecution
history.” Medrad, Inc. v. MRI Devices Corp.,
401 F.3d 1313, 1319 (Fed. Cir. 2005).
are some cases in which “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 .
. . involves little more than the application of the widely
accepted meaning of commonly understood words.”
Phillips, 415 F.3d at 1314. “A determination
that a claim term ‘needs no construction’ or has
[its] ‘plain and ordinary meaning’” may be
sufficient when, for example, a term has only “one
‘ordinary’ meaning or when reliance on a
term’s ‘ordinary’ meaning . . . resolve[s]
the parties’ dispute.” O2 Micro Intern. Ltd.
v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361
(Fed. Cir. 2008).
other cases, determining a claim’s ordinary and
customary meaning requires further examination. This may be
because the meaning is not “immediately
apparent,” terms “have a particular meaning in a
field of art,” or the patentee has used a term
“idiosyncratically.” Phillips, 415 F.3d
at 1314. In those cases, a court construing the claim will
consider “those sources available to the public that
show what a person of skill in the art would have understood
disputed claim language to mean.” Id. (quoting
Innova, 381 F.3d at 1116). Such “sources
include ‘the words of the claims themselves, the
remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles,
the meaning of technical terms, and the state of the
art.” Id. (quoting Innova, 381 F.3d
language of “the claims themselves provide substantial
guidance as to the meaning of particular claim terms.”
Id. Additionally, “[t]he context in which a
claim term is used in the asserted claim can be highly
instructive.” Id. “Other claims of the
patent in question, both asserted and unasserted, can also be
valuable sources of enlightenment as to the meaning of a
claim term.” Id. For example, “[b]ecause
claim terms are normally used consistently throughout the
patent, the usage of a term in one claim can often illuminate
the meaning of the same term in other claims.”
Id. Courts should also interpret claim terms in a
manner that does not render subsequent claim terms
superfluous. See Stubmo v. Eastman Outdoors, Inc.,
508 F.3d 1358, 1362 (Fed. Cir. 2007) (noting that the court
has “denounced” claim construction that renders
phrases “superfluous”); Merck & Co. v.
Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
2005) (“A claim construction that gives meaning to all
the terms of the claim is preferred over one that does not do
addition to the claims themselves, courts should consider the
specification in construing claim terms, as the terms
“are part of ‘a fully integrated written
instrument.’” Phillips, 415 F.3d at 1315
(quoting Markman, 52 F.3d at 978). As the Federal
Circuit has stated: “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.’” Id. (quoting
Vitrionics, 90 F.3d at 1582). A patent’s
“specification may reveal a special definition given to
a claim term . . . that differs from the meaning it would
otherwise possess,” and such definition would govern.
Id. at 1316. Similarly, a specification may
“reveal an intentional disclaimer, or disavowal, of
claim scope”-and again, “the inventor’s
intention, as expressed in the specification, is regarded as
dispositive.” Id. Importantly, though,
limitations from the specification should not be imported
into the claims, and claims should not necessarily be
confined to the “very specific embodiments of the
invention” in the specification. Id. at 1323;
see also Douglas Dynamics, LLC v. Buyers Prod. Co.,
717 F.3d 1336, 1342 (Fed. Cir. 2013) (“While claim
terms are understood in light of the specification, a claim
construction must not import limitations from the
specification into the claims.”); Kara Tech. Inc.
v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)
(“The patentee is entitled to the full scope of his
claims, and we will not limit him to his preferred embodiment
or import a limitation from the specification into the
claims.”). Ultimately, a court must “read the
specification in light of its purposes in order to determine
‘whether the patentee is setting out specific examples
of the invention to accomplish those goals, or whether the
patentee instead intends for the claims and the embodiments
in the specification to be strictly
coextensive.’” Decisioning.com, Inc. v.
Federated Dept. Stores, Inc., 527 F.3d 1300, 1308 (Fed.
Cir. 2008) (quoting Phillips, 415 F.3d at 1323).
addition to the text of the claims and specification, courts
“should also consider the patent’s prosecution
history, if it is in evidence.” Phillips, 415
F.3d at 1317 (quoting Markman, 52 F.3d at 980);
see also Graham v. John Deere Co., 383 U.S. 1, 33
(1966) (“[A]n invention is construed not only in light
of the claims, but also with reference to the file wrapper or
prosecution history in the Patent Office.”). The
prosecution history of a patent “contains the complete
record of all the proceedings . . ., including any express
representations made by the applicant regarding the scope of
the claims.” Vitrionics, 90 F.3d at 1582. The
prosecution history may “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.” Abbott Labs. v.
Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)
(quoting Phillips, 415 F.3d at 1317). For example, a
patentee may make “a clear and unmistakable disavowal
of scope during prosecution,” such as “by clearly
characterizing the invention in a way to try to overcome
rejections based on prior art.” Comput. Docking
Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.
Cir. 2008) (quotation marks omitted). The Federal Circuit,
however, also has cautioned that “because the
prosecution history represents an ongoing negotiation between
the PTO and the applicant, rather than the final product of
that negotiation, it often lacks the clarity of the
specification.” Phillips, 415 F.3d at 1317.
Where there is ambiguity in the prosecution history, it
should not limit the claim terms. See Inverness Med.
Switzerland GmbH v. Warner Lambert Co., 309 F.3d 1373,
1382 (Fed. Cir. 2002) (“It is inappropriate to limit a
broad definition of a claim term based on prosecution history
that is itself ambiguous.”). Ultimately, the
prosecution history “is less useful for claim
construction purposes” than the language of the claims
and specification. Phillips, 415 F.3d at 1317.
may also consider extrinsic evidence in construing a claim,
although “while extrinsic evidence ‘can shed
useful light on the relevant art,’ . . . it is
‘less significant than the intrinsic record in
determining the legally operative meaning of claim
language.’” Id. (quoting C.R. Bard,
Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.
Cir. 2004)). Extrinsic evidence “consists of all
evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and
learned treatises.” Id. (quoting
Markman, 52 F.3d at 980). Specifically,
dictionaries-and particularly technical dictionaries-may aid
in a court’s claim construction. See id. at
1318. Expert testimony may also be useful to a court, to the
extent that it “provide[s] background on the technology
at issue, [explains] how an invention works, [ensures] 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 [establishes] that a particular term in the
patent or the prior art has a particular meaning in the
pertinent field.” Id. Expert testimony,
however, consisting of “conclusory, unsupported
assertions . . . as to the definition of a claim term are not
useful to a court.” Id. Further, expert
testimony “that is clearly at odds with the claim
construction mandated by the . . . written record of the
patent” should be discounted. Id. (quoting
Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716
(Fed. Cir. 1998)).