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Inc. v. Menicon Co. Ltd.

United States District Court, D. Massachusetts

January 11, 2016

3-D MATRIX, INC., et al., Plaintiffs,
v.
MENICON CO. LTD., et al., Defendants.

MEMORANDUM & ORDER

INDIRA TALWANI UNITED STATES DISTRICT JUDGE

I. Introduction

Plaintiffs 3-D Matrix, Inc., 3-D Matrix Ltd., and the Massachusetts Institute of Technology (“Plaintiffs”) bring this suit alleging that Defendants Menicon Co. Ltd. and B-Bridge International, Inc. (“Defendants”) infringe Plaintiffs’ patents, including United States Patent Nos. 5, 670, 483 (the “’483 Patent”) and 5, 955, 343 (the “’343 Patent”) (collectively, the “Patents-in-Suit”). The parties have asked the court to construe seven claim terms contained in the Patents-in-Suit. After reviewing the parties’ filings and holding a Markman hearing, the court issues the following claim construction.

II. Patents-in-Suit

This lawsuit involves two patents relating to the self-assembly of certain peptides into macroscopic membranes. See ’483 Patent, col. 1, ll. 34-35 (“This invention relates to the self-assembly of peptides into stable macroscopic membranes.”). According to the patentees, these membranes are “potentially useful in biomaterial applications such as slow-diffusion drug delivery systems, artificial skin, and separation matrices . . . .” ’343 Patent, Abstract. Plaintiffs in this action allege that Defendants’ product “PanaceaGel” infringes claims in the Patents-in-Suit. See Compl. [#1]. The Patents-in-Suit have similar specifications, and the ’343 Patent is a “continuation-in-part of the ’483 Patent.” Pls.’ Opening Claim Constr. Br. 2 [#42]. The ’483 Patent was filed on November 30, 1994, and issued on September 23, 1997. The ’343 Patent was filed on August 22, 1994, and issued on September 21, 1999.

III. Legal Framework

The construction of claim terms is a question of law. Markman v. Westview Instruments, 517 U.S. 370, 372 (1996) (“[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court.”). “[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation omitted). “[T]he ordinary and customary meaning of a claim term 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.” Id. at 1313. In construing claim terms, courts look to “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. at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

A. The Language of the Claims

The claim construction analysis begins with the claims themselves. Id. at 1312. The claims of a patent “define the invention to which the patentee is entitled the right to exclude.” Id. (quoting Innova, 381 F.3d at 1115). “[T]he context in which a term is used in the asserted claim may be highly instructive.” Id. at 1314; see id. (“This court’s cases provide numerous . . . examples in which the use of a term within the claim provides a firm basis for construing the term.”). 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. Additionally, “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 1315.

B. The Specification

The claims “do not stand alone” but “are part of ‘a fully integrated written instrument, ’ consisting principally of a specification . . . .” Id. at 1315 (internal citation omitted). “For this reason, claims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (“Markman I”). “[T]he 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 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (1996)).

“[T]he specification may reveal a specific 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.” Id. at 1316; see CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (stating that an inventor may “act as his own lexicographer” by “clearly set[ting] forth a definition of a disputed term in the specification”). “In other cases, the specification may reveal an intentional disclaimer, or disavowal, of the claim scope by the inventor.” Phillips, 415 F.3d at 1316. Nevertheless, the court must be careful to “us[e] the specification [only] to interpret the meaning of a claim” and not to “import[] limitations from the specification into the claim.” Id. at 1323; see also id. (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Although this distinction “can be a difficult one to apply in practice[, ] . . . the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.” Id.

C. The Patent Prosecution History

In construing claim terms, courts should also consider the patent’s prosecution history. Id. at 1317. The prosecution history consists of the record of the proceedings before the United States Patent and Trademark Office (“PTO”) and prior art cited during the examination of the patent. Id. “Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.” Id. The prosecution history can also provide evidence as to “whether the inventor limited the invention in the course of the prosecution, making the claim scope narrower than it would otherwise be.” Id. “Yet 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 and thus is less useful for claim construction purposes.” Id. As a result, courts must “not rely on the prosecution history to construe the meaning of the claim term to be narrower than it would otherwise be unless a patentee limited or surrendered claim scope through a clear and unmistakable disavowal.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1322 (Fed. Cir. 2013).

D. Extrinsic Evidence

Extrinsic evidence consists of “all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317 (quoting Markman I, 52 F.3d at 980). “[W]hile 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 the claim language.” Id. (internal quotation marks and citation omitted). This is because extrinsic evidence suffers from a number of defects, including its independence from the patent, potential bias, and varying relevance. Id. at 1318-19. Such evidence is therefore “unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Id. at 1319.

IV. Analysis

A. “Homogeneous”

The parties agree upon the definition of “homogeneous” as “of the same character structure, quality, etc.; essentially like; of the same nature.” See Joint Claim Constr. and Pre-Hr’g Statement [#48]. The court adopts the parties’ agreed-upon definition of this term.

B. “Amphiphilic Peptides”

The term “amphiphilic peptides” appears throughout the ’483 and ’343 Patents. Its use in Claim 1 of the ’483 Patent is typical:

1. A macroscopic membrane which is formed by the self-assembly of amphiphilic peptides in an aqueous solution containing monovalent metal cations, wherein the peptides contain 12 or more amino acids, have alternating hydrophobic and hydrophilic amino acids and are complementary and structurally compatible.

The parties’ proposed constructions of this term are as follows:

Disputed Term

Plaintiffs’ Construction

Defendants’ Construction

“amphiphilic peptides”

No construction necessary; the plain and ordinary meaning applies.

Ordinary meaning: “peptides that contain hydrophobic and hydrophilic regions along their lengths”

“all of the amino acids of the peptides are either hydrophobic or hydrophilic, and the peptides have alternating hydrophobic and hydrophilic amino acids”

Plaintiffs contend that the ordinary meaning of the term “amphiphilic peptides” is “peptides [that] contain hydrophobic and hydrophilic regions along their lengths, ” and that the ordinary meaning of the term controls. See Pls.’ Responsive Claim Constr. Br. 2 [#46]. Defendants do not disagree with Plaintiffs’ articulation of the ordinary meaning of “amphiphilic peptides.” See Defs.’ Opening Claim Constr. Br. 4 [#43] (“At a fundamental level amphiphilic peptides contain hydrophobic and hydrophilic regions along their lengths.”); see also Amphiphilic, Academic Press Dictionary of Sci. & Tech. 100 (Academic Press, Inc. 1992), in Pls.’ Carnevale Decl. Ex. C [#44-3] (defining “amphiphilic” as “describing a substance containing both polar, water-soluble groups and non-polar, water-insoluble groups”). Rather, Defendants argue that the patentees in this case acted as their own lexicographers and redefined the term “amphiphilic peptides, ” and that the patentees’ lexicography governs.

“The plain meaning of claim language ordinarily controls.” InterDigital Commc’ns, LLC v. Int’l Trade Cmm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012). There are two exceptions to this general rule: “1) when a patentee sets out a definition and acts as [its] own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). “To act as its own lexicographer, . . . ‘the patentee must clearly express an intent’ to redefine the term.” Id. (quoting Thorner, 669 F.3d at 1365). Thus, the question presented is whether the language of the claim language, specification, and prosecution history reflect a clear intent on the part of the patentees in this case to redefine the term “amphiphilic peptides” as something other than its ordinary meaning. The court finds no such clear intent here.

First, the language of the claims is more consistent with the ordinary meaning of “amphiphilic peptides” than with Defendants’ proposed construction. Defendants’ proposed construction of “amphiphilic peptides” as peptides having “alternating hydrophobic and hydrophilic amino acids” would render claim language redundant and the term “amphiphilic” superfluous. See ’483 Patent, Claim 1 (“A macroscopic membrane formed by the self-assembly of amphiphilic peptides . . . wherein the peptides . . . have alternating hydrophilic and hydrophobic amino acids . . . .” (emphasis added)); see also Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 781 (Fed. Cir. 2010) (“[Courts] construe claims with an eye toward giving effect to their terms.”); Merck & Co. v. Teva Pharm. 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.”); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (construing claim term in a manner so as to “not render the term superfluous”).

Second, the prosecution history reflects that the patentees originally described Claim 1 as “[a] macroscopic membrane which is formed by self-assembly of amphiphilic peptides in an aqueous solution containing monovalent metal cations.” Pls.’ Supp. Decl. Carnevale Ex. C at 2 [#47-3]. The prosecution history further reflects that the patentees, in response to a PTO office action, later added the phrase “wherein the peptides have alternating hydrophobic and hydrophilic amino acids.” Id. The patentees’ later insertion of the requirement for “alternating hydrophobic and hydrophilic amino acids” suggests that the patentees did not understand the term “amphiphilic peptides” to include such a requirement.

Finally, the specifications do not demonstrate a clear intent on the part of the patentee to redefine “amphiphilic peptides.” Defendants point to language in the specifications stating: “Peptides which form membranes are characterized as being amphiphilic, i.e. having alternating hydrophobic and hydrophilic amino acid residues . . . .” ’483 Patent, col. 1, ll. 36-41 (emphasis added). However, the use of “i.e.” does not invariably indicate that the patentee intended to act as its own lexicographer. Rather, whether the patentee used the term “i.e.” in a definitional sense must be determined in context. See Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1370 (Fed. Cir. 2012) (concluding that patentee’s use of phrase “each side of the disc-i.e., each recording plane, ” when read in context, was not definitional); Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1373-74 (Fed. Cir. 2005) (holding that patentee’s reference to “saccharides (i.e., sugars)” was not definitional in view of other patent language and extrinsic evidence as to the ordinary meaning of “saccharides”). Significantly, the ’343 specification also includes the language: “Peptides which form membranes are characterized as being amphiphilic, e.g., having alternating hydrophobic and hydrophilic amino acid residues . . . .” ’343 Patent, col. 1, ll. 49-51 (emphasis added). The specifications’ interchangeable use of “i.e” and “e.g.” creates ambiguity as to whether the patentee intended to redefine the term “amphiphilic peptides” to require alternating hydrophobic and hydrophilic amino acids, or intended to use peptides with alternating hydrophobic and hydrophilic amino acids as an example of “amphiphilic peptides."

Absent a clear expression of intent on the part of the patentee to redefine the term “amphiphilic peptides, ” the court construes the term in accordance with its ordinary meaning as “peptides that contain ...


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