PerkinElmer, inc. brought a declaratory judgment claim of non-infringement and invalidity of Intema Ltd.’s Patent No. 6,573,103 directed to testing for Down syndrome during pregnancy. In her claim construction order, Judge Gertner construes disputed claim terms, mostly centered around integration of test results from different trimesters. The highlights:
- The court favored the patentee in two disputes regarding how the file history limited terms in question (the court found that the file history was not limiting in those instances)
- The court three times relies on extrinsic evidence, a rare move in the post-Phillips world, all three times favoring the construction offered by the patentee. In the first instance the parties offered constructions equally supported by the intrinsic evidence so the court turned to the extrinsic evidence. The court favored the patentee’s expert supported construction over the plaintiff’s dictionary supported construction because the former was “more specific to the processes involved in this patent.” In the second instance only the patentee offered extrinsic evidence to resolve an ambiguity. In the third, the appropriate definition of a term was the broader one.
- Judge Gertner hinted at a challenge to the patentability of the invention, noting that such would have to wait for summary judgment but would “present an intriguing question” with a quick nod to the Supreme Court’s recent decision in Bilski.
- The order concludes with a chart of the adopted constructions, a very helpful practice adopted by a number of patent savvy judges.
PerkinElmer, Inc. v. Intema Ltd., 09-10176-NG (D. Mass. July 2, 2010)
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