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Ni-Q, LLC v. Prolacta Bioscience, Inc.

United States District Court, D. Oregon

June 12, 2018

NI-Q, LLC, Plaintiff,

          Brenna 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 Defendant.



         In this 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 below.


         Patent 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.

         “[T]he 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 omitted)).

         The 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).

         There 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).

         In 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 at 1116).

         The 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 so.”).

         In 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. 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.’”, Inc. v. Federated Dept. Stores, Inc., 527 F.3d 1300, 1308 (Fed. Cir. 2008) (quoting Phillips, 415 F.3d at 1323).

         In 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.

         Courts 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)).

         CLAIM ...

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