Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 1 of 9 PageID #: 1904
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`CYTONOME/ST, LLC,
`
`
`
`
`v.
`
`
`NANOCELLECT BIOMEDICAL, INC.,
`
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 19-cv-301-RGA
`
`
`
`
`
`
`MEMORANDUM OPINION
`
`
`Rodger D. Smith II, Anthony D. Raucci, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
`Wilmington, DE; Kirt S. O’Neill (argued), Daniel L. Moffett (argued), AKIN GUMP STRAUSS
`HAUER & FELD LLP, San Antonio, TX, Thomas W. Landers IV (argued), AKIN GUMP
`STRAUSS HAUER & FELD LLP, Houston, TX;
`Attorneys for Plaintiff
`
`
`Ian R. Liston, WILSON SONSINI GOODRICH & ROSATI, P.C., Wilmington, DE; Douglas H.
`Carsten (argued), Rhyea Malik, WILSON SONSINI GOODRICH & ROSATI, P.C., San Diego,
`CA; Adam Burrowbridge (argued), WILSON SONSINI GOODRICH & ROSATI, P.C.,
`Washington, DC;
`Attorneys for Defendant
`
`
`
`
`
`
`
`
`
`May 26, 2020
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 2 of 9 PageID #: 1905
`
`/s/ Richard G. Andrews
`ANDREWS, U.S. DISTRICT JUDGE:
`
`
`Before the Court is the issue of claim construction of multiple terms in U.S. Patent No.
`
`6,877,528 (“the ’528 patent”); U.S. Patent No. 8,623,295 (“the ’295 patent”), U.S. Patent No.
`
`9,011,797 (“the ’797 patent”); U.S. Patent No. 9,339,850 (“the ’850 patent”); U.S. Patent No.
`
`10,029,263 (“the ’263 patent”); U.S. Patent No. 10,029,283 (“the ’283 patent”); and U.S. Patent
`
`No. 10,065,188 (“the ’188 patent”). The Court has considered the Parties’ Joint Claim
`
`Construction Brief. (D.I. 66). The Court heard oral argument by videoconference on April 28,
`
`2020. (D.I. 81).
`
`I.
`
`BACKGROUND
`
`Plaintiff Cytonome filed the instant action on February 12, 2019, alleging infringement of
`
`seven asserted patents by Defendant NanoCellect. (D.I. 1). The asserted patents claim cell
`
`sorter devices. (D.I. 66 at 1-2).
`
`II.
`
`LEGAL STANDARD
`
`“It is a bedrock principle of patent law that the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en banc) (internal quotation marks omitted). “‘[T]here is no magic formula or
`
`catechism for conducting claim construction.’ Instead, the court is free to attach the appropriate
`
`weight to appropriate sources ‘in light of the statutes and policies that inform patent law.’”
`
`SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
`
`415 F.3d at 1324) (alteration in original). When construing patent claims, a court considers the
`
`literal language of the claim, the patent specification, and the prosecution history. Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967, 977–80 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
`
`(1996). Of these sources, “the specification is always highly relevant to the claim construction
`
`
`
`1
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 3 of 9 PageID #: 1906
`
`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”
`
`Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
`
`“[T]he words of a claim are generally given their ordinary and customary meaning. . . .
`
`[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, i.e., as of the effective filing date of the patent application.”
`
`Id. at 1312–13 (citations and internal quotation marks omitted). “[T]he ordinary meaning of a
`
`claim term is its meaning to [an] ordinary artisan after reading the entire patent.” Id. at 1321
`
`(internal quotation marks omitted). “In some cases, the ordinary meaning of claim language as
`
`understood by a person of skill in the art may be readily apparent even to lay judges, and claim
`
`construction in such cases involves little more than the application of the widely accepted
`
`meaning of commonly understood words.” Id. at 1314.
`
`When a court relies solely upon the intrinsic evidence—the patent claims, the
`
`specification, and the prosecution history—the court’s construction is a determination of law.
`
`See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also
`
`make factual findings based upon consideration of extrinsic evidence, which “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 1317–19 (internal quotation marks
`
`omitted). Extrinsic evidence may assist the court in understanding the underlying technology,
`
`the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic
`
`evidence, however, is less reliable and less useful in claim construction than the patent and its
`
`prosecution history. Id.
`
`“A claim construction is persuasive, not because it follows a certain rule, but because it
`
`defines terms in the context of the whole patent.” Renishaw PLC v. Marposs Societa’ per
`
`
`
`2
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 4 of 9 PageID #: 1907
`
`Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that “a claim interpretation that would
`
`exclude the inventor’s device is rarely the correct interpretation.” Osram GMBH v. Int’l Trade
`
`Comm’n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation and internal quotation marks omitted).
`
`III. CONSTRUCTION OF DISPUTED TERMS
`
`1.
`
`“buffer” (’528 Patent, ’850 Patent)
`a.
`Plaintiff’s proposed construction:
`Original: “a physical structure that contains fluid and receives a pressure pulse”
`Revised: “a reservoir of fluid that absorbs a pressure pulse”
`
`
`b.
`
`
`
`
`
`
`
`
`Defendant’s proposed construction: indefinite or 35 U.S.C. § 112 ¶ 6
`
`’528 Patent:
`Structure: None
`Function: “for absorbing a pressure [pulse/variation]”
`
`’850 Patent:
`Structure: “[Buffer chamber/reservoir] 70a, buffer chamber 70b, buffer bubble
`valve 100a, buffer bubble valve 100b, or valve 100”
`Function: “for absorbing or dampening the pressure pulse”
`
`c.
`
`Court’s construction: “a reservoir of fluid that absorbs a pressure pulse”
`
`I rejected Defendant’s proposals for the construction of “buffer” at the Markman hearing
`
`because I do not think that the term “buffer” is indefinite. (D.I. 81 at 31:1-10). I declined to
`
`adopt Plaintiff’s original proposed construction because it does not really define what a buffer is.
`
`(Id. at 31:10-19). I gave Plaintiff an opportunity to submit a revised proposal. (Id.). Plaintiff
`
`has done so and proposes that “buffer” means “a reservoir of fluid that absorbs a pressure pulse.”
`
`(D.I. 82 at 1). Plaintiff takes this definition from the prosecution history and substitutes
`
`“absorbs” for “receives” in its original definition, and replaces “physical structure” with the more
`
`descriptive term “reservoir.” (Id. at 1-2). This revised proposal uses more specific terms that are
`
`no longer in dispute. (Id. at 2). Plaintiff claims, and I agree, that these are not substantive
`
`
`
`3
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 5 of 9 PageID #: 1908
`
`changes from its original proposed construction and that Plaintiff’s revised construction remains
`
`consistent with the intrinsic record. (Id.).
`
`Defendant contends that the inclusion of the word “fluid” in Plaintiff’s construction is
`
`contradictory to the understanding of a person of ordinary skill in the art. (D.I. 84 at 1). The
`
`parties agreed that “fluid” refers both to gas and liquid. (D.I. 81 at 14:18-19; 28:19-24). During
`
`the Markman hearing, Defendant argued that the “buffer” requires a “compressible fluid which is
`
`a gas” in the reservoir. (D.I. 81 at 28:24-29:14). In a letter, Defendant reasserts this argument
`
`and points to several portions of the patents which describe the reservoir as being filled with gas.
`
`(D.I. 84 at 1-2). Plaintiff cites different portions of the specifications that show that the reservoir
`
`is “a chamber having a resilient wall or contains a compressible fluid such as a gas.” (D.I 82 at
`
`3). Plaintiff’s expert also states that a person of ordinary skill in the art would understand that a
`
`reservoir filled “with a compressible gas instead of a liquid” is only one example of a buffer
`
`design contemplated by the patents for adequate absorption of the pressure pulse. (D.I. 67, Ex. H
`
`at ¶ 52).
`
`While Defendant’s cited examples demonstrate that a reservoir can be filled with gas, I
`
`am not convinced that they indicate that the buffer reservoir can only be filled with a
`
`“compressible fluid.” Construing the term to require that the fluid which fills the buffer be
`
`compressible would incorrectly incorporate a narrowing limitation into the construction. Thus, I
`
`construe “buffer” to mean “a reservoir of fluid that absorbs a pressure pulse.”
`
`“reservoir”
`a.
`Plaintiff’s proposed construction: “a physical structure that contains fluid” or
`plain and ordinary meaning
`
`Defendant’s proposed construction: Indefinite or 35 U.S.C. § 112 ¶ 6
`Structure: the second side passage 174b and the second bubble valve 10b
`Function: “for dampening or absorbing a pressure pulse propagated across the
`flow channel”
`
`4
`
`
`b.
`
`
`2.
`
`
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 6 of 9 PageID #: 1909
`
`Or, “the physical structure of a reservoir operatively associated with the flow
`channel and structurally designed for dampening or absorbing a pressure pulse
`propagated across the flow channel”
`
`c.
`
`Court’s construction: plain and ordinary meaning
`
`At the Markman hearing, I construed “reservoir” to have its plain and ordinary meaning.
`
`(D.I. 81 at 32:9-19). The term is not a nonce word, and Defendant has not overcome the
`
`presumption that “reservoir” is not a means-plus-function term.
`
`3.
`
`“absorbing”
`a.
`Plaintiff’s proposed construction: plain and ordinary meaning
`
`b.
`
`Defendant’s proposed construction: “to receive without recoil or echo”
`
`c.
`
`Court’s construction: plain and ordinary meaning
`
`At the Markman hearing, I construed “absorbing” to have its plain and ordinary meaning.
`
`(D.I. 81 at 42:17-43:6).
`
`4.
`
`“pressure pulse”
`a.
`Plaintiff’s proposed construction: plain and ordinary meaning
`
`b.
`
`Defendant’s proposed construction: “a unidirectional flow to the
`[microchannel/supply duct]”
`
`c.
`
`Court’s construction: plain and ordinary meaning
`
`
`
`Defendant argues that a person of ordinary skill in the art, in light of the claims and
`
`specifications, would understand the “pressure pulse” to “only move[] in one direction.” (D.I. 66
`
`at 18). Defendant points to claim 1 of the ’263 patent to show that the patents contemplate
`
`directionality of the pressure pulse. (Id. at 19). The claim recites “a transient pressure pulse in a
`
`direction substantially perpendicular to a flow direction of the fluidic stream of particles.” (’263
`
`patent, col. 14:4-9).
`
`Defendant also argues that Figure 6 of the ’850 patent is inoperable if the “plunger” does
`
`not create a “unidirectional flow.” (D.I. 66 at 21). Defendant first introduced the argument that
`
`
`
`5
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 7 of 9 PageID #: 1910
`
`a non-unidirectional flow would render the embodiment of Figure 6 inoperable through an expert
`
`declaration in its sur-reply. (See id.). I therefore gave Plaintiff a chance to submit a responsive
`
`supplemental expert declaration. (D.I. 81 at 60:25-61:25). Unsurprisingly, Plaintiff’s expert’s
`
`opinion is that a person of ordinary skill in the art would understand that the embodiment
`
`illustrated in Figure 6 “is not unidirectional and is also operable.” (D.I. 82-1 at 7).
`
`I am not persuaded that the patents require the pressure pulse to be only in one direction.
`
`To the extent that any directionality of the pressure pulse is recited by the claims, it would be
`
`inappropriate to add that limitation into the construction. Thus, I construe “pressure pulse” to
`
`have its plain and ordinary meaning.
`
`5.
`
`“otherwise sealed”
`a.
`Plaintiff’s proposed construction: a reservoir or chamber that is “otherwise sealed
`[from]” is a reservoir or chamber that is not open to an exterior environment
`
`
`b.
`
`Defendant’s proposed construction: “otherwise closed off from fluid connection”
`
`c.
`
`Court’s construction: “sealed in all other aspects”
`
`At the Markman hearing, both sides agreed that I do not need to construe “otherwise
`
`sealed” for the ’797 patent because the claim itself recites “otherwise sealed from an exterior
`
`environment.” (D.I. 81 at 65:9-12; see ’797 patent, col. 14:9-10). Regarding the ’283 patent, I
`
`stated at the hearing that “otherwise sealed” is a broad term that doesn’t require other limitations
`
`in its construction. (D.I. 81 at 75:23-76:5). A person of ordinary skill in the art could reasonably
`
`understand the plain and ordinary meaning of the term to be that the “first chamber” in claim 1,
`
`and the “second chamber” in claim 6, are sealed in all other aspects. I therefore construe
`
`“otherwise sealed” to mean “sealed in all other aspects.”
`
`“selectively applying”
`a.
`Plaintiff’s proposed construction: plain and ordinary meaning
`
`
`6
`
`6.
`
`
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 8 of 9 PageID #: 1911
`
`b.
`
`c.
`
`Defendant’s proposed construction: indefinite
`
`Court’s construction: plain and ordinary meaning
`
`At the Markman hearing, I construed “selectively applying” to have its plain and ordinary
`
`meaning. (D.I. 81 at 76:18-25). I do not think it is indefinite.
`
`7.
`
`“an actuator connected to the first side channel”
`a.
`Plaintiff’s proposed construction: plain and ordinary meaning
`
`b.
`
`Defendant’s proposed construction: indefinite
`
`c.
`
`Court’s construction: plain and ordinary meaning
`
`At the Markman hearing, I construed “an actuator connected to the first side channel” to
`
`have its plain and ordinary meaning. (D.I. 81 at 83:7-11). I do not think it is indefinite.
`
`8.
`
`“microsorter having a switching region and a microfluidic channel formed in the
`microfluidic chip fluidically coupled to a sample input[,] a keep output, a waste output,
`and the switching region”
`a.
`Plaintiff’s proposed construction: plain and ordinary meaning
`
`b.
`
`Defendant’s proposed construction: indefinite
`
`c.
`
`Court’s construction: plain and ordinary meaning
`
`At the Markman hearing, I construed “microsorter having a switching region and a
`
`microfluidic channel formed in the microfluidic chip fluidically coupled to a sample input[,] a
`
`keep output, a waste output, and the switching region” to have its plain and ordinary meaning.
`
`(D.I. 81 at 92:17-93:3). I do not think it is indefinite.
`
`“from the stream of particles”
`a.
`Plaintiff’s proposed construction: plain and ordinary meaning
`
`b.
`
`Defendant’s proposed construction: “from the continuous moving procession of
`fluid and particles”
`
`c.
`
`Court’s construction: plain and ordinary meaning
`
`7
`
`9.
`
`
`
`

`

`Case 1:19-cv-00301-RGA Document 85 Filed 05/26/20 Page 9 of 9 PageID #: 1912
`
`At the Markman hearing, I construed “from the stream of particles” to have its plain and
`
`ordinary meaning. (D.I. 81 at 95:24-96:3).
`
`10.
`
`“carrier fluid”
`a.
`Plaintiff’s proposed construction: “a sheath of compatible liquid surrounding a
`particle for carrying one or more particles through a duct or channel”
`
`
`b.
`
`Defendant’s proposed construction: “fluid containing the particles moving
`through the system”
`
`c.
`
`Court’s construction: plain and ordinary meaning
`
`I rejected Plaintiff’s proposed construction at the Markman hearing because I do not
`
`think that the postdated lexicography of the ’850 patent can retroactively apply to the term in the
`
`’528 patent. (D.I. 81 at 98:7-12). Defendant argues that I should adopt its proposal because the
`
`construction “mak[es] clear that the stream of particles is a different laminar flow system in the
`
`system from the carrier fluid.” (Id. at 105:7-9). Whether the stream of particles is distinct from
`
`the carrier fluid appears to be a dispute between the parties. (Id. at 100:15-102:21). Defendant
`
`offered that substituting “conveying” for “containing” in its proposal may be a more clear and
`
`accurate construction. (Id. at 106:12-14). I do not see how either construction resolves the
`
`dispute about the distinction between the stream of particles and the carrier fluid, or how either is
`
`helpful over the plain and ordinary meaning. Further, both of Defendant’s proposed
`
`constructions invite redundancy as the claims recite “a channel for conveying a stream of
`
`particles in a carrier fluid.” (’528 patent, col. 15:16-17, 16:4-5). Thus, I construe “carrier fluid”
`
`to have its plain and ordinary meaning.
`
`IV. CONCLUSION
`
`
`
`Within five days the parties shall submit a proposed order consistent with this
`
`Memorandum Opinion suitable for submission to the jury.
`
`
`
`8
`
`