District of Massachusetts IP Blog

Claim Construction Amended; Judgment Not

In September 2010 Judge Woodlock entered of summary judgment of non-infringement to Gore, who was accused of infringing Millipore’s Patent No. 7,293,477 related to fluid sampling devices.  Millipore moved for reconsideration, which Judge Woodlock recently denied in part.  Judge Woodlock did alter the claim construction in one respect which took away one ground for summary judgment, but not all, and so the judgment stands.  And heads to the Federal Circuit due to the counterclaims being dismissed without prejudice. 

Millipore Corp. v. W.L. Gore & Assoc., Inc., 09-10765-DPW (D. Mass. Mar. 20, 2012)

Mutually Agreed Claim Construction Terminates Case Years Later

Following a reversal by the Federal Circuit, Judge Gorton denied an attempt to revise claim constructions agreed upon by the parties in a dispute over blood separating centrifuges.  The defendant then moved for summary judgment of non-infringement.  Judge Gorton agreed that the devices were non-infringing and entered judgment, declining to reach the issue of whether the asserted claims were indefinite.  The case turned, as it always does, on claim construction: 

Antibody Markman Order Amended

Judge Saylor issued a Second Amended Claim Construction Order in a dispute accusing Centocor’s psoriasis drug Stelera of infringing Patent Nos. 6,914,128 and 7,504,485 (rights to the ‘128 patent were awarded to Abbott in an earlier interference proceeding against Centocor). 

The first amended order was issued to change a typo.  This second order added a construction for the claim term “human antibody”.  In interpreting this term the court declined to limit its construction to examples listed in the specification as ones which are “include[d]” as human antibodies.  The court noted that “includes” is a non-limiting term and the proposed construction was “strained” and not supported. 

Abbott GmbH & Co. v. Centocor Ortho Biotech, Inc., 09-11340-FDS (D. Mass. May 5, 2011)

Judge Zobel Splits Proposed Claim Terms

Judge Zobel construed terms in Patent No. 7,226,459 directed to a reciprocating surgical saw (ouch).  Neither side scored a complete victory.  As is typical of Judge Zobel’s Markman orders, the decision is to the point with little discussion that might be of interest to other cases.   

Claim Typo Corrected During Markman

In a fairly straightforward Markman decision, Senior Judge Harrington construed claims in Patent No. 6,256,663 directed to remotely conducting focus groups over a computer network.  Of note, Judge Harrington corrected the claim term “client display” to read “moderator display” ruling that inclusion of the word “client” was “an obvious typographical error.”  Plaintiff requested the correction, which defendant opposed.  The decision notes that the defendant appeared to recognize the error as typographical in its request for reexamination filed with the USPTO. 

Interactive Tracking Systems, Inc. v. Artafact LLC, 08-10101-EFH (D. Mass. June 1, 2011)

Hair Removal Claim Terms Construed

Judge Zobel construed claim terms from Patent Nos. 5,595,568 and 5,735,844 (along with its associated ex parte reexamination certificate).  As is typical, Judge Zobel construed the claims with little fuss and no extended analysis.  Based on the use of terms in the specification she refused to construe the term “optical radiation” as requiring a single wavelength but did construe “a wavelength” and “the wavelength” as a single wavelength. 

Palomar Medical Tech., Inc. v. Syneron, Inc., 08-11902-RWZ (D. Mass. Apr. 14, 2011)

Judge Wolf Vacates Markman Decision to Facilitate Settlement

Some judges, when faced with a motion to vacate a decision in view of a pending settlement, do so without comment.  Other judges balk at such requests.  If the parties have relied on (and the court has expended) judicial resources to get to judgment, why should the court vacate once a winner and loser have been declared?

When faced with such a request back in June 2010 Judge Wolf ordered the parties to brief the issue.  (I’m sure that made them happy.)

Download Wolf ordering briefing of vacatur request

After reviewing those briefs, Judge Wolf did agree to vacate an order of summary judgment / claim construction, as a precondition to a settlement agreement.  The detailed decision explains how, with non-final judgments and other interlocutory orders, the district court maintains broad discretion to vacate.  The decision also notes how the policy reasons for not vacating are very different before final judgment has entered.

In this case, the vacated order came early in the case, the parties had been actively pursuing settlement, and vacatur was necessary to bring the case to a close.  So Judge Wolf determined that the public was better served by permitting settlement rather than requiring that the early order stand.

Download Lycos settlement decision

Lycos, Inc. v. Blockbuster, Inc., 07-11469-MLW (D. Mass. Dec. 23, 2010)

Flowmeter Claims Not Indefinite

Micro Motion and Krohne are involved in a dispute over whether Krohne infringes Micro Motion’s Patent No. 6,487,507 directed to a remote signal conditioner for a coriolis flowmeter.  In this order Judge Gertner construed two claim terms and denied a motion to hold the patent invalid on indefiniteness grounds. 

The two construed terms are “intrinsically safe” and “protection circuitry.”  The court found that the first term was sufficiently understandable within the technology and disclosure of the patent that it was not indefinite.  The court also found that because the second term did not invoke means-plus-function treatment, the defendant’s attempts to invalidate on indefiniteness grounds failed. 

Micro Motion, Inc. v. Krohne, Inc., 09-10319-NG (D. Mass. Feb. 3, 2011)

Pharma Claim Construction Leads to Dismissal - Part 2

As with its cases against Abbott Labs, Bayer’s patent dispute with Centocor has been dismissed based on Judge Saylor’s claim construction of the term “human monoclonal antibodies.”  Claims not related to the infringement were dismissed without prejudice, and are subject to revival should the claim construction be reversed on appeal. 

In this decision Judge Saylor adopted his construction set forth in the Abbott cases, subject to two “minor adjustments.”  The first dealt with a revision to the construction of a specific term in the patent.  The second dealt with the court’s analysis in the Abbott order that a claim should be construed narrowly to avoid inclusion of embodiments not enabled by the specification.  The court retracted that analysis as it went counter to the Federal Circuit’s admonition that “the maxim that claims should be construed to preserve their validity should not be a regular component of claim construction.” 

Bayer HealthCare LLC v. Centocor Ortho Biotech, Inc., 09-11362-FDS

(D. Mass. Dec. 23, 2010 - Claim Construction Order; Jan. 28, 2011 - Entry of Final Judgment)

Motion for Status Conference Denied

Following a claim construction, jury trial, and reversal by the Federal Circuit, the dispute between Haemonetics and Fenwal regarding centrifuge devices found itself again before Judge Gorton.  Haemonetics sought a new status conference under Local Rule 16.6 so that it could present new claim construction arguments related to the term “plurality of tubes.”  

Judge Gorton would have none of it.  He ruled that since the parties had previously agreed on the construction of “plurality” and “tubes,” the plaintiff’s argument that the parties had not agreed on “plurality of tubes” to be “pure sophistry.”  Further, he noted that the plaintiff was judicially estopped from arguing a new construction of the term since it had successfully moved in limine pre-trial to prevent the defendant from doing the same. 

Haemonetics Corp. v. Fenwal, Inc., 05-12572-NMG, 09-12107-NMG (D. Mass. Oct. 13, 2010)