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Exergen Corp. v. Kidz-Med, Inc.

United States District Court, D. Massachusetts

May 23, 2016

EXERGEN CORPORATION, Plaintiff,
v.
KIDS-MED, INC., AMERICAN SCIENTIFIC RESOURCES, INC., and TECNIMED, S.R.L., Defendants.

          MEMORANDUM AND ORDER REGARDING CLAIM CONSTRUCTION

          DOUGLAS P. WOODLOCK UNITED STATES DISTRICT JUDGE

         Plaintiff Exergen brings this patent infringement alleging that Defendant Tecnimed's Thermofocus® non-contact infrared forehead thermometer (the “Thermofocus”) infringes Exergen's Ear Thermometer Patent, U.S. Patent No. 5, 012, 813 (the “'813 Patent”) and its Armpit Thermometer Patents (the “'435 Patent Family”).[1]

         Patent infringement litigation “involves a two-step process: the court first determines the meaning of disputed claim terms and then compares the accused device to the claims as construed." Wavetronix LLC v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1354 (Fed. Cir. 2009). This case is at the claim construction stage, and I review the claim terms disputed by the parties accordingly.[2]

         Exergen's patents relate to infrared thermometers that measure body temperature by detecting infrared radiation emitted from a body surface such as the tympanic membrane (eardrum) or axilla (armpit). The temperature measurement of a body surface tends to be lower than the temperature within the body because the surface is exposed to the ambient (air) temperature. By correcting a measured surface temperature to account for the ambient temperature, the thermometer calculates the temperature in accordance with temperature relationship formulas described in the patents.

         The original temperature relationship described in the '813 Patent is said to have been improved upon in subsequent patents to give more accurate measurements of internal temperature. The '435 Patent Family involves thermometers that account for changes in the “perfusion rate, ” i.e. the blood flow per unit area, which affects the transfer of heat from within the body to the surface.

         Tecnimed's Thermofocus, by contrast, is a non-contact thermometer that measures temperature from the forehead without touching the skin. Unlike the ear and armpit, which are “enclosed, ” the forehead is entirely exposed to the environment and therefore requires a special means for compensating for the effects of ambient temperature.

         II. CLAIM CONSTRUCTION PRINCIPLES

         As a “bedrock principle” of patent law, “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). A patent claim is “the portion of the patent document that defines the scope of the patentee's rights.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). “The construction of these claims is a question of law to be determined by a judge.” Amesbury Group, Inc. v. Caldwell Mfg. Co., No. 08-10171-DPW, 2008 WL 5396473, at *2 (D. Mass. Dec. 17, 2008) (citing Markman, 517 U.S. at 384, 390-91).

         When evaluating “the words of a claim, ” the court generally gives these terms “their ordinary and customary meaning, ” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313 (citing Innova, 381 F.3d at 1116). Sometimes, “the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent, ” in which case claim construction “involves little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314.

         However, when that meaning is “not immediately apparent, ” the court looks at intrinsic evidence, such as the patent itself, the specification, and the prosecution history, to determine the meaning of the disputed claim term. Id. “Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language.” Vitronics, 90 F.3d at 1582. The claim term is to be read “in the context of the particular claim in which the disputed term appears, ” as well as “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The specification, which contains a written description of the invention, is “always highly relevant to the claim construction analysis, ” usually is “dispositive, ” and “is the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582.

         Limitations from the specification, however, should not be imported into the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (en banc); Acumed LLC v. Stryker Corp., 483 F.3d 800, 808 (Fed. Cir. 2007) (quoting Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (noting the Federal Circuit's “repeated statements that limitations from the specification are not to be read into the claims”)). Similarly, if the specification describes a single embodiment, the broader claim language will not be limited “to that single application unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Sandoz, 566 F.3d at 1288 (internal quotation marks and citations omitted); Phillips, 415 F.3d at 1323 (rejecting “the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”); Innova, 381 F.3d at 1117 (“[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect.”)

         Only if the claim term remains ambiguous after an examination of the intrinsic evidence may the court consider extrinsic evidence to determine the meaning of the claim. Vitronics, 90 F.3d at 1583; see Phillips, 415 F.3d at 1317 (emphasizing “the importance of intrinsic evidence in claim construction” but authorizing district courts to rely on extrinsic evidence). Extrinsic evidence includes testimony by experts and the inventor, dictionaries, and learned treatises. Phillips, 415 F.3d at 1317. While the 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 quotations marks and citations omitted).

         III. DISPUTED CLAIM TERMS

         In their Joint Claim Construction and Prehearing Statement, the parties agreed to avoid co-mingling the terms in the '813 Patent and '435 Patent Family, but disagreed on the claim terms to be construed and the prioritization of claim construction. Irrespective of the parties’ positions on whether a claim requires construction, I will construe each term proposed.

         A. '813 Patent

         Exergen is the assignee to the '813 Patent, titled “Radiation Detector Having Improved Accuracy, ” that was issued in 1991. The parties’ construction dispute centers on Claim 7 which describes:

A radiation detector comprising:
a thermopile mounted to view a target of biological surface tissue;
a temperature sensor for sensing ambient temperature;
an electronic circuit coupled to the thermopile and temperature sensor and responsive to the voltage across the thermopile and the temperature sensed by the sensor to provide an indication of an internal temperature within the biological tissue adjusted for the ambient temperature to which the surface tissue is exposed; and
a display for providing an indication of the internal temperature.

'813 Patent col. 14 ll. 55-63 (emphasis added). The disputed claim terms are italicized above.

         Exergen’s '813 Patent was the subject of another patent infringement suit before the late Judge Lindsay of this court, who previously construed the patent. Exergen Corp. v. Wal-mart Stores, Inc. (“Exergen I”), No. 01-cv-11306-RCL, slip op. At 10 (D. Mass. filed Jul. 14, 2004). After trial on the basis of that construction, the Federal Circuit reversed the jury's finding that the '813 Patent was infringed. Exergen Corp. v. Wal-Mart Stores, Inc. (“Exergen II”), 575 F.3d 1312 (Fed. Cir. 2009).

         1.Internal temperature within the biological tissue”

         In the prior action, Judge Lindsay construed the term “internal temperature” in Claim 7 to mean “the temperature of the region existing beneath the surface of the biological tissue targeted for measurement.” Exergen I, No. 01-cv-11306-RCL, slip op. at 10. On appeal, the Federal Circuit expressly noted that neither party “challenges the construction of ‘internal temperature.’” Exergen II, 575 F.3d at 1321.

         Tecnimed adopts Judge Lindsay's construction for the term “internal temperature, ” but separately construes the term “within the biological tissue” to mean “which temperature is within such biological tissue.” Exergen argues that Judge Lindsay's construction of “internal temperature” applies to the larger term “internal temperature within the biological tissue, ” and that to construe the clause “within the biological tissue” yields “redundant verbiage.” Tecnimed invokes the doctrines of collateral estoppel and stare decisis, as well as the inventor's position in the '813 Patent reexamination proceedings, to defend its construction of the disputed '813 Patent claim terms.

         a) Collateral Estoppel

         Under the doctrine of collateral estoppel, also called issue preclusion, “a judgment on the merits in a first suit precludes relitigation in a second suit of issues actually litigated and determined in the first suit.” Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1334 (Fed. Cir. 2001) (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)). The law of the regional circuit, here the First Circuit, applies to the issue of collateral estoppel. RF Delaware v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003). Collateral estoppel applies if “(1) both proceedings involved the same issue of law or fact, (2) the parties actually litigated that issue, (3) the prior court decided that issue in a final judgment, and (4) resolution of that issue was essential to judgment on the merits.” Global NAPS, Inc. v. Verizon New England, Inc., 603 F.3d 71, 95 (1st Cir. 2010).

         “In the patent context, it is usually the new defendant who invokes collateral estoppel against the patentee who has had a say in previous litigation of its patent.” Amgen, Inc. v. F. Hoffmann-La Roche Ltd., 494 F.Supp.2d 54, 59-60 (D. Mass. 2007) (collecting cases). Here, the four elements of collateral estoppel are satisfied because Exergen was a party in a previous case before Judge Lindsay, in which the claims of the patent-in-suit here (the '813 Patent) were construed, and Exergen “had a full and fair chance to assert its arguments at that time.” Id. at 60. As a result, “to the extent that this Court has already had the opportunity to construe the language of the claims in the patent at issue and no new arguments have been presented to dispute the previous constructions, fairness requires this court to adhere to the previous constructions” to avoid ambiguity and uncertainty. Id. (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996)). Exergen therefore is precluded from seeking to alter Judge Lindsay's claim construction of “internal temperature” in Claim 7 of the '813 Patent for purposes of this subsequent litigation.

         b) Stare Decisis

         Similarly, the doctrine of stare decisis “expresses the rule of adherence to judicial precedents, ” pursuant to which “a court is bound to follow a higher court's applicable holding . . . .” Amgen, 494 F.Supp.2d at 60. In the patent context, “[w]here the Federal Circuit has already construed the claims here disputed, then that higher Court's construction is binding, and this Court cannot modify its holding.” Id.; see also Markman, 517 U.S. at 391 (“[T]reating interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to interjurisdictional uniformity under the authority of the single appeals court.”).

         Here, Judge Lindsay previously construed the claim term “internal temperature, ” Exergen I, No. 01-cv-11306-RCL, slip op. at 10, and that construction was neither challenged by the parties on appeal nor disturbed by the Federal Circuit. Exergen II, 575 F.3d at 1321. The claim construction effectively adopted by the Federal Circuit is binding legal precedent that cannot be modified in this case. Amgen, 494 F.Supp.2d at 60. Thus, as with the doctrine of collateral estoppel, the principle of stare decisis mandates the application of Judge Lindsay's prior construction of the term “internal temperature” in Claim 7 of the '813 Patent, as affirmed by the Federal Circuit, to the matter now before me. I therefore construe the claim term “internal temperature within the biological tissue” to mean “the temperature of the region existing beneath the surface of the biological tissue targeted for measurement.” See Exergen I, No. 01-cv-11306-RCL, slip op. at 10.

         c) Reexamination Proceeding

         The construction directed by the doctrine of collateral estoppel and the principle of stare decisis has been accepted in parallel administrative proceedings where Exergen embraced Judge Lindsay's construction. Moreover, during an ex parte reexamination of the '813 Patent in 2006, the United States Patent and Trademark Office (APTO") rejected Claim 7 as anticipated by prior art. The inventor, Dr. Francesco Pompei, sought to overcome that rejection by distinguishing the '813 Patent from prior art; to do so, Pompei quoted verbatim Judge Lindsay's construction of the term “internal temperature” in Claim 7. In response, the PTO issued a Notice of Intent to Issue Ex Parte Reexamination Certificate, in which the PTO listed reasons for patentability and “agreed that the definition of ‘internal temperature’ as meaning ‘the temperature of the region existing beneath the surface of the biological tissue targeted for measurement’ as presented by the Trial Court in instructions to the jury in litigation relating to [the '813 Patent] is pertinent.” Having presented Judge Lindsay's definition of “internal temperature” to overcome a rejection for anticipation, Exergen cannot skirt that same construction in this subsequent action by attempting to broaden the term “internal temperature” to encompass “internal temperature within the biological tissue.” Cf. Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998) (“[A] patentee, after relinquishing subject matter to distinguish a prior art reference asserted by the PTO during prosecution, ‘cannot during subsequent litigation escape reliance [by the defendant] upon this unambiguous surrender of subject matter.’” (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1581 (Fed. Cir. 1995)).

         d) “Within the biological tissue”

         Bound by the construction of “internal temperature" in the prior action, I separately address the construction of the term “within the biological tissue” in Claim 7. The language “internal temperature” is used twice in Claim 7: the first instance refers to “an internal temperature within the biological tissue, ” and the second mention is simply to “the internal temperature.” ('813 Patent col. 14 ll. 55-63). I attribute the same meaning to both references regarding “internal temperature” because “[a] word or phrase used consistently throughout a claim should be interpreted consistently.” Phonometrics, Inc. v. N. Telecom Inc., 133 F.3d 1459, 1465 (Fed. Cir. 1998) (Michel). At first blush, it might appear that to apply the construction of “internal temperature” to encompass “internal temperature within the biological tissue” would render the words “within the biological tissue” meaningless, which contradicts the principle that courts “must give meaning to all the words in [the] claims.” Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995); see also Merck & Co. v. Teva Pharma. 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.”).

         Nevertheless, while Judge Lindsay did not explicitly construe the term “within the biological tissue, ” he stated “[t]he language of the claims makes it clear . . . that the temperature to be measured by the patented inventions is the temperature of the subsurface area within the targeted biological surface tissue.” Exergen I, No. 01-cv-11306-RCL, slip op. at 9-10. Tecnimed's proposed construction for “within the biological tissue” is “which temperature is within such biological tissue.” That construction gives the language its “ordinary and customary meaning, ” and “involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1312-14. It also allows the term “internal temperature” to retain one meaning, irrespective of whether that language is followed by the qualifying language “within the biological tissue.” ('813 Patent, col. 14 ll. 55-63).

         In sum, the term “internal temperature” in Claim 7 means “the temperature of the region existing beneath the surface of the biological tissue targeted for measurement.” I construe “within the biological tissue” as “which temperature is within such biological tissue.” Combining those constructions, the claim term “internal temperature within the biological tissue” means “the temperature of the region existing beneath the surface of the biological tissue targeted for measurement, which temperature is within such biological tissue.”

         2. “Display for providing an indication of the ...


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