Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Alifax Holding SPA v. Alcor Scientific Inc.

United States District Court, D. Rhode Island

April 27, 2017

ALIFAX HOLDING SPA, Plaintiff,
v.
ALCOR SCIENTIFIC INC.; and FRANCESCO A. FRAPPA, Defendants.

          MEMORANDUM AND ORDER

          WILLIAM E. SMITH, Chief Judge.

         Plaintiff Alifax filed this patent infringement action alleging, among other things, that Defendants Alcor and Frappa infringed two of Alifax's patents. One of the patents at issue in this case protects a diagnostic method for quickly measuring the erythrocyte sedimentation rate (“ESR”) of a blood sample, as well as the sample's viscosity, elasticity, and density (the ‘679 Patent). The other patent at issue covers the apparatus designed to carry out the patented method (the ‘107 Patent). The ESR is a diagnostic test for general inflammation that helps diagnose infections and a variety of clinical conditions. Defendant Frappa allegedly had access to this intellectual property when he worked for Alifax, and allegedly shared it with Defendant Alcor when he began his employment there.

         Defendants responded with three counterclaims, alleging that both of the patents at issue are invalid for failure to comply with 35 U.S.C. §§ 102, 103, and/or 112 and that Alifax intentionally interfered with Alcor's prospective contractual relations. The pretrial scheduling order provided for a claim construction phase within the discovery process. In Alifax's claim construction brief, it requests construction of one phrase that is used in two claims of the ‘679 Patent, and one phrase that is used in one claim of the ‘107 Patent. Defendants, in their claim construction brief, request construction of five terms or phrases that appear in the claims within one or both patents at issue.

         The Court has thoroughly considered the parties' briefs and exhibits attached thereto as well as the technical tutorials and the arguments of counsel at the Markman[1] hearing. This Memorandum and Order provides the Court's construction of the seven claim terms and phrases raised and disputed by the parties.

         I. Claim Construction Principles

         “[A] bedrock principle of patent law [is] that the claims of a patent define the invention to which the patentee is entitled the right to exclude.”[2] “The claim[s] . . . function[] to forbid not only exact copies of an invention, but products that go to ‘the heart of an invention but avoid[] the literal language of the claim[s] by making a noncritical change[.]'”[3]“Victory in an infringement suit requires a finding that the patent claim[s] ‘cover[] the alleged infringer's product or process, ' which in turn necessitates a determination of ‘what the words in the claim[s] mean.'”[4]

         “[T]he construction of a patent, including terms of art within its claim[s], is exclusively within the province of the court.”[5] The words of the claims are given their ordinary and customary meanings, unless a word or phrase is expressly defined in the patent to mean something else.[6] “[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 [“POSITA”] in question at the time of the invention, i.e., as of the effective filing date of the patent application.”[7] When the meaning of a claim term is apparent, then construing the terms “involves little more than the application of the widely accepted meaning of commonly understood words.”[8]

         “Because the meaning of a claim term as understood by [a POSITA] is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to ‘those sources available to the public that show what a [POSITA] would have understood [the] disputed claim language to mean.'”[9]These sources include the intrinsic evidence of record: the patent's specifications and claims as well as the patent's prosecution history. The Federal Circuit has acknowledged that “because the prosecution history represents an ongoing negotiation between the [Patent and Trademark Office] 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.”[10] “Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.”[11] Statements in the prosecution history of a foreign patent, however, have been deemed irrelevant because they are made under different patentability requirements.[12]

         The context in which a term or phrase is used within these intrinsic sources “can be highly instructive.”[13] To that end, the specification is considered “the single best guide to the meaning of a disputed term, ” and is usually dispositive of its meaning.[14] “In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence.”[15] “The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.”[16] Extrinsic evidence such as dictionaries, treatises, expert opinions, or inventor testimony may be consulted and relied upon, but it is considered less reliable than the intrinsic patent record, and, as just stated, often not necessary.[17]

         The established framework for claim construction includes two somewhat contrasting axioms: “a claim must be read in view of the specification and . . . a court may not read a limitation into a claim from the specification.”[18] The Federal Circuit has recognized that this seeming contradiction can be difficult to apply in practice, but encourages that “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 [POSITA] would understand the claim terms.”[19]

         II. Indefiniteness

         Defendants argue that three of the five terms it raises for construction are “indefinite” pursuant to 35 U.S.C. § 112.[20] The Supreme Court has held “that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”[21] “[T]he definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.”[22] Because indefiniteness can completely invalidate a claim or patent, several district courts have declined to address arguments on this point before the litigation reaches summary judgment proceedings, when the record is substantially developed.[23] The Court will, however, address Defendants' arguments with respect to indefiniteness in the discussion that follows.

         III. Disputed Claim Terms and Phrases

         A. Alifax's Claim Phrase to Construe #1

Claim phrase

Alifax's proposed construction

Defendants' proposed construction

Court's construction

“the optical density or the absorbance acquired being processed to obtain said speed of sedimentation, viscosity, elasticity and density” (‘679 Patent claims 1, 8, ECF No. 49-35.)

Using the acquired optical density or absorbance data to obtain correlated parameters including the speed of sedimentation, viscosity, elasticity and density

Plain and ordinary meaning

Processing the acquired optical density or absorbance data to obtain the speed of sedimentation, viscosity, elasticity and density

         Alifax argues that the specification supports its proposed construction because a POSITA would understand both (1) that the four parameters measured by the patented method are mutually related; and (2) that the flow chart of the patented method provided in the ‘679 Patent indicates that the analysis and processing of the acquired data would occur immediately after the photometric data was acquired. Alifax also argues that simply applying the plain and ordinary meaning of the term would not resolve the parties' disagreement about the scope of the claim because “being processed to obtain” means “using the acquired” photometric data to obtain the four parameters listed, a meaning that a POSITA would understand.

         According to Defendants, Alifax's proposed construction invites two errors. First, Defendants argue that, because Alifax included the precise four parameters measured by the method only after the Patent and Trademark Office initially rejected the patent application for indefiniteness, using the word “parameters” in the construction will create ambiguity and uncertainty where none currently exists. Second, the limitation “using” is a broad and unsupported synonym that is not in the claim language, so adding this limitation (or substituting it for “processing”) does not have support from the specification. Defendants also argue that the proposed construction indicates that “correlated parameters” will be obtained, not that the patented parameters are limited to the speed of sedimentation, viscosity, elasticity, and density.

         In response to Defendants' arguments, Alifax argues that Defendants are treating the four parameters measured oversimplistically because there is a relationship between the four parameters that is explained in the specification. The results from processing a sample include a single set of correlated results, not four independent parameters. Plaintiff also submits that it is not wedded to the word “using” and would be content with substituting “using” for “processing.”

         This phrase to construe appears in claims 1 and 8 of the ‘679 Patent. Claim 1 states, in relevant part, that:

A method to determine a speed of sedimentation, viscosity, elasticity and density of blood, said method being carried out by detecting a development over time of an optical density, or an absorbance, of a sample of blood, said sample being sent in the form of a flow inside a capillary container . . ., said detection being made in correspondence with any point along the length of said capillary container . . . and the optical density or the absorbance acquired being processed to obtain said speed of sedimentation, viscosity, elasticity and density wherein the method instantly interrupts the flow of the blood sample flowing inside said capillary container . . . .

(Emphasis added on phrase to construe). For the purposes of construing the target phrase, claim 8 has the identical language.

         The ‘679 Patent specification supports the “acquired optical density or absorbance data” part of Alifax's proposed construction because the description for the preferred embodiment for the patented method includes the following sentence: “At the same time as the pump . . . stops, the control and processing unit . . . commands the detector . . . to acquire the photometric data of optical density or absorbance.”[24]Defendants do not dispute this portion of the proposed construction.

         With respect to the use of the word “parameters” in the proposed construction, Defendants' argument that the term injects ambiguity and uncertainty into the claim has given the Court pause. A review of the entire patent reveals that the term “parameters” appears on its own throughout the specifications, as does “correlated parameters, ” as a form of short hand for the four measurements obtained by the patented method, i.e., the speed of sedimentation, density, viscosity, and elasticity.[25] So the introduction of “correlated parameters” in Alifax's proposed construction does have support from the specifications.

         The application for this patent, however, was initially rejected for indefiniteness based in part on the claim's use of the phrase “other parameters connected thereto”: “Claims 1-9 are rendered indefinite because of the use of the language ‘other parameters connected thereto.' It is unclear exactly what Applicant contemplates by this phraseology. Further clarification is required.”[26] Alifax responded with a revised application, replacing “other parameters connected thereto” with “viscosity, elasticity and density”; language which precisely identified the characteristics of the blood sample that would be measured in addition to the erythrocyte sedimentation rate.[27]Thereafter, the patent examiner explicitly stated that the claims articulated in the patent application would be allowed because “the prior art does not teach or suggest a method to determine a speed of sedimentation, viscosity, elasticity, and density of blood . . . .”[28]

         As the Federal Circuit has instructed, “the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.”[29] Here, the patent applicant narrowed the scope of the claim to overcome the indefiniteness of “other parameters connected thereto” by articulating the precise characteristics of the blood sample measured by the method. The Court understands that the specification informs that the viscosity, elasticity, and density of the blood sample are parameters that are considered correlated to the speed of sedimentation of the blood sample. Employing the term “correlated parameters” in the construction of the phrase at issue, however, could lead to the assumption later in this litigation that there are other characteristics of the blood sample that are protected by the patented method. This would be inconsistent with the scope of the patent because the patent applicant clearly overcame the initial indefiniteness determination by articulating these precise characteristics, and the patent examiner deemed these characteristics not measured in the same way by the prior art.

         The Court concludes, therefore, that the phrase “the optical density or the absorbance acquired being processed to obtain said speed of sedimentation, viscosity, elasticity and density” is construed as “processing the acquired optical density or absorbance data to obtain the speed of sedimentation, viscosity, elasticity and density.”

         B. Alifax's Claim Phrase to Construe #2

Claim phrase

Alifax's proposed construction

Defendants' proposed construction

Court's construction

“compare the photometric data with reference parameters contained in the inner memory to determine the speed of sedimentation, viscosity, elasticity and density of the blood sample” (‘107 Patent, claim 1; ECF No. 49-36.)

Using the acquired optical density or absorbance data to obtain correlated parameters including the speed of sedimentation, viscosity, elasticity and density, by comparing the data with numerical constants stored in the memory of a processing unit

Plain and ordinary meaning

Processing the acquired optical density or absorbance data to obtain the speed of sedimentation, viscosity, elasticity and density, by comparing the data with numerical constants stored in the memory of a processing unit

         Alifax asserts that this claim adds detail that does not exist in the ‘679 Patent; specifically, that the four parameters are obtained by comparing the data with reference parameters stored in the processing unit. Otherwise, Alifax's arguments regarding the construction of phrase #1 above apply equally to this phrase. Alifax argues that a POSITA would know that “‘reference parameters contained in the inner memory' are numerical constants stored in the memory of a processing unit, ” and are based on syllectogram data, which would not be discerned from the plain language of the claim.

         Defendants assert that allowing Alifax's proposed construction would create an additional limitation to the claim because the phrase “numerical constants” does not appear in the ‘107 Patent. Otherwise, Defendants also advance the same arguments regarding this phrase as they argued above for phrase #1.

         The Court's reasoning articulated above for its construction of phrase #1 applies to this phrase to the extent that the phrases contain the same language, especially because the parties' arguments are basically the same. With respect to the part of the claim phrase that refers to comparison (“compare the photometric data with reference parameters contained in the inner memory”), Alifax justifies its proposed construction (“by comparing the data with numerical constants stored in the memory of a processing unit”) as necessary detail because a POSITA would understand this to be a part of the inherent detail of the claim. Defendants point out that the term “numerical constants” does not appear in the ‘107 Patent, but they do not provide any counterargument as to whether a POSITA would understand the claim to mean as Alifax suggests in its proposed construction.

         While the specifications in the ‘107 Patent do not mention “numerical constants” when describing the preferred embodiment for the apparatus, the specification does mention that a comparison is made between the “data acquired” and the “parameters in the internal memory”: “The data acquired are transmitted in real time to the control and processing unit . . . which memorizes them and processes them to obtain the ESR value and the correlated parameters. The data acquired can be compared or integrated with parameters in the internal memory . . . before being processed to determine the ESR value.”[30]Based on the arguments and evidence before the Court, there is no reason to believe that a POSITA would not understand the “parameters in the internal memory” to be “numerical constants.”

         The phrase “compare the photometric data with reference parameters contained in the inner memory to determine the speed of sedimentation, viscosity, elasticity and density of the blood sample” is therefore construed as “processing the acquired optical density or absorbance data to obtain the speed of sedimentation, viscosity, elasticity and density, by comparing the data with numerical constants stored in the memory of a processing unit.”

         C. Defendants' Claim Term to Construe #1

Claim term

Alifax's proposed construction

Defendants' proposed construction

Court's construction

“capillary container” (‘679 Patent: claims 1, 3, 5-8; ‘107 Patent: claims 1, 3-6, 9-11.)

Plain and ordinary meaning

a coil-shaped elongated tube

Plain and ordinary meaning


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.