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Cardionet, LLC v. Infobionic, Inc.

United States District Court, D. Massachusetts

December 10, 2018

INFOBIONIC, INC., Defendant.


          Indira Talwani, United States District Judge

         I. Introduction

         Plaintiffs CardioNet, LLC and Braemar Manufacturing, LLC (collectively, “CardioNet”) brought this suit alleging that Defendant InfoBionic, Inc. (“Infobionic”) infringed on various patents owned by CardioNet. The parties asked the court to construe sixteen claim terms. See J. Claim Constr. and Prehr'g Statement [#243]. Prior to construing any of these claim terms, the court addressed Defendant's Motion for Judgment on the Pleadings and Plaintiffs' Motion for Reconsideration and concluded that the asserted claims as to United States Patent Nos. 7, 212, 850 (the “'850 patent”) and 7, 907, 996 (the “'996 patent”) are invalid under Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014). Mem. & Order [#289]; Mem. & Order [#312]. Also, prior to the court's construction of the disputed terms, the Patent Trial and Appeals Board (“PTAB”) issued its Final Written Decisions in the inter partes review (“IPR”) proceeding involving United States Patent Nos. 6, 225, 901 (the “'901 patent”), 6, 940, 403 (the “'403 patent”), and RE43, 767 (the “'767 patent”), finding all claims, except claim 10 of the '403 patent, unpatentable. ['901 Patent] Final Written Decision [#259-1]; ['403 Patent] Final Written Decision [#259-2]; ['767 Patent] Final Written Decision [#318-1]. The United States Court of Appeals for the Federal Circuit affirmed the decisions as to the '901 patent and the '403 patents, and Defendant reports that no appeal of the PTAB's decision on the '767 patent was filed. Notice 1 [#318]; Fed. Cir. J. [#318-2]. Accordingly, after reviewing the parties' filings and holding a Markman hearing, the court issues the following construction of the three claim terms from United States Patent No. 7, 099, 715 (the “'715 Patent”) and five claim terms from the '403 patent still in dispute.

         II. Legal Framework

         The construction of claim terms is a question of law. Markman v. Westview Instruments, Inc., 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. “[T]he 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 can 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 that 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 special 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 the disputed claim term in . . . the specification”). “In other cases, the specification may reveal an intentional disclaimer, or disavowal, of 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”), both pre- and post-issuance proceedings, and prior art cited during the examination of the patent. Id.; see Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. May 11, 2017) (“[e]xtending the prosecution disclaimer doctrine to [inter partes review] proceedings will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers”). “Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.” Phillips, 415 F.3d at 1317. The prosecution history can also provide evidence as to “whether the inventor limited the invention in the course of 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 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); see Aylus Networks, 856 F.3d at 1360.

         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 claim language.” Id. (internal quotation marks and citation omitted). This is because extrinsic evidence suffers from several 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. Disputed Terms in the '715 Patent

         The '715 patent, titled “Distributed Cardiac Activity Monitoring with Selective Filtering, ” is directed to optimizing the identification of R waves in the QRS complex of an electrocardiogram by selectively activating a T wave filter. '715 Patent col. 1, ll. 17-21, col. 2, ll. 52-55 [#225-2]. The '715 patent explains that a person's heart rate cycle has certain generally recognized waveforms, that identification of heartbeats is often accomplished by identifying the “R wave” in the QRS complex, and that abnormal “T waves” may interfere with this identification. When activated, the system “filters” out T waves. Pls.' Suppl. Opening Claim Constr. Mem. (“Pls.' Claim Constr. Mem.”) 5 [#224]; Def.'s Suppl. Prelim. Claim Constr. Br. (“Def.'s Claim Constr. Br.”) 3 [#225]; '715 Patent col. 1, ll. 17-21, col. 3, ll. 53-60 [#225-2]. The use of the disputed terms in Claim 1 is as follows:

A machine-implemented method comprising: identifying heart beats in a sensed cardiac signal; activating a [frequency domain T wave filter], [1] used in said identifying heart beats, in response to a message from a monitoring station generated at least in part based upon discovery of a predetermined characteristic in the sensed cardiac signal; and outputting information corresponding to the identified heart beats to a communications channel of a distributed cardiac activity monitoring system.

'715 Patent col. 6, ll. 27-37 [#225-2] (emphasis added).

         1. “activating” and “activates” and “activate”

         The terms “activating, ” “activates” and “activate” appears in claims 1, 11 and 20 of the '715 patent. Id.; id. at col. 7, ll. 4-18, 45-53. CardioNet contends that these terms are commonly understood words, and that no construction is necessary as the plain and ordinary meaning applies. Pls.' Claim Constr. Mem. 21 [#224]. InfoBionic agrees that the terms are commonly understood but asserts that “[i]n the context of the ‘715 patent, ” the plain meaning of “activate” is “turn on, ” and that “activating, ” “activates, ” and “activate” should be construed as “turning on, ” “turns on, ” and “turn on.” Def.'s Claim Constr. Br. 9 [#225]. CardioNet responds that this understanding presupposes that the filter is a separate device that needs to be “turned on” while the filter can be a software component that is “activated, ” but not necessarily “turned on” after the device has already been turned on. Pls.' Claim Constr. Mem. 21 [#224]. In CardioNet's view, InfoBionic's construction would exclude an embodiment where the filter is always “turned on, ” such that “activating” is choosing between an already-filtered signal and an un-filtered signal. Id. at 21-22. InfoBionic, in turn, contends that CardioNet seeks to avoid construing the term so that it can argue that a filter that is functional but not activated meets the claim language. Def.'s Claim Constr. Br. 9 [#225].

         “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). Here, “activate” has a plain meaning that would exclude a filter that is “not activated.” InfoBionic's construction requiring the filter to be “turned on, ” rather than merely “activated, ” does not follow from the claim language.

         The parties' primary arguments are focused on the specifications. One exception to the general rule that the plain meaning controls is when a 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)). The court finds no such disavowing intent here.

         InfoBionic notes the use in the specifications of the words “turn on” to refer to the T wave filter being “activated.” Def.'s Claim Constr. Br. 9 [#225] (citing '715 Patent col. 5, ll. 30-33; col. 3, ll. 24-27 [#225-2]. But the specification also includes alternatives that do not use the phrase “turn on”: for example, “the selector [marked 240 in the figure] can be analog, selective activation circuitry that selects one of its two inputs (from the signal amplifier [marked 220 in the figure] and from the T wave filter [marked 230 in the figure]) to be provided to the beat detector [marked 250 in the figure].” Id. col. 3, ll. 20-24. That one embodiment includes activating the device by turning the filter on and off does not preclude activating the device by selecting one of multiple inputs. Rather than limit the full scope of the claim, the specifications disclose an exemplary approach to activating a T wave filter that would be limited by InfoBionic's approach.

         Accordingly, the court construes the claim terms “activating” / “activates” / “activate” in accordance with their plain and ordinary meanings and does not limit the terms to “turning on.”

         2. “frequency domain T wave filter”

         The term “frequency domain T wave filter” also appears in claims 1, 11, and 20 of the Id. Col. 6, ll. 27-37; col. 7, ll. 4-18, 45-53; '715 Patent Cert. of Correction 1 [#154-4]. CardioNet proposes that the term “frequency domain T wave filter” be construed as “filter that reduces the relative size of the T-wave in the signal based on the frequencies in the signal.” Pls.' Claim Constr. Mem. 22 [#224]. In CardioNet's view, the filter is not limited to reducing the amplitude of low frequency signals. Instead, the “frequency domain T wave filter” could reduce the low frequency signals, increase the amplitude of higher frequency signals, or both. Id. at 22-23. Conversely, InfoBionic contends that the term should be construed as “filter in the frequency range where the T wave is mostly located.” Def.'s Claim Constr. Br. 10 [#225]. InfoBionic argues the claim term is limited to a filter in the frequency range where the T-wave is found (i.e., low-frequency signals). Id. at 11.

         The language of the claims is more consistent with CardioNet's proposed construction than InfoBionic's proposed construction. “The presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation is not present in the independent claim.” Phillips, 415 F.3d at 1315. Here, there are a number of dependent claims that add particular limitations. Dependent claim 4 of the '715 patent, for example, describes a filter that “reduces signal amplitude at low frequencies, ” i.e., the frequency range where the T wave is mostly located. Dependent claim 7, in contrast, describes a filter that “has a frequency response of about dB or more in a high frequency range of twenty to twenty-five Hertz”; or, in other words, increases the signal amplitude at high ...

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