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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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` Case No.: 17-cv-01394-H-NLS
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`CLAIM CONSTRUCTION ORDER
`FOR THE ’799 PATENT, THE ’673
`PATENT, AND THE ’113 PATENT
`
`THE REGENTS OF THE UNIVERSITY
`OF CALIFORNIA; and BECTON,
`DICKINSON and COMPANY,
`
`Plaintiffs,
`
`v.
`AFFYMETRIX, INC.; and LIFE
`TECHNOLOGIES CORP.,
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`Defendants.
`
`
`In the present action, Plaintiffs the Regents of the University of California, Becton,
`
`Dickinson and Company, Sirigen, Inc., and Sirigen II Limited assert claims of patent
`infringement against Defendants Affymetrix, Inc. and Life Technologies Corp., alleging
`infringement of U.S. Patent No. 9,085,799, U.S. Patent No. 8,110,673, and U.S. Patent No.
`8,835,113.1 (Doc. No. 101, FAC ¶¶ 52-81.) On January 26, 2018, the parties filed their
`joint claim construction prehearing statement, chart, and worksheet, identifying the
`
`1
`In this action, Plaintiffs also assert claims of patent infringement against Defendants for
`infringement of U.S. Patent No. 9,547,008, U.S. Patent No. 9,139,869, U.S. Patent No. 8,575,303, and
`U.S. Patent No. 8,455,613. (Doc. No. 101, FAC ¶¶ 82-115.) The Court will hold a separate claim
`construction hearing on those four patents at a later time.
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`disputed claim terms from the ’799 patent, the ’673 patent, and the ’113 patent. (Doc. No.
`97.) On February 23, 2018, the parties each filed an opening claim construction brief.
`(Doc. Nos. 111, 113.) On March 9, 2018, Plaintiffs filed their responsive claim
`construction brief. (Doc. No. 123.) On March 13, 2018, Defendants filed their corrected
`responsive claim construction brief. (Doc. No. 128.) On March 21, 2018, the Court issued
`a tentative claim construction order. (Doc. No. 132.)
`The Court held a claim construction hearing on March 23, 2018. Donald R. Ware,
`Barbara Fiacco, and Jesse Hindman appeared for Plaintiffs. Douglas E. Lumish, Roger J.
`Chin, and Brent T. Watson appeared for Defendants. After considering the parties’ briefs,
`the parties’ arguments at the hearing, and all relevant information, the Court construes the
`disputed terms from the ’799 patent, the ’673 patent, and the ’113 patent.
`Background
`On July 10, 2017, Plaintiffs Regents and Becton, Dickinson filed a complaint for
`patent infringement against Defendants Affymetrix and Life Technologies, alleging
`infringement of the ’799 patent, the ’673 patent, and the ’113 patent. (Doc. No. 1, Compl.)
`On September 8, 2017, Defendants filed an answer to Plaintiffs’ complaint. (Doc. No. 37.)
`On October 6, 2017, the Court issued a scheduling order. (Doc. No. 55.) On
`November 20, 2017, the Court denied Plaintiff Becton, Dickinson’s motion for a
`preliminary injunction without prejudice. (Doc No. 69.) On November 30, 2017, the Court
`issued an amended scheduling order. (Doc. No. 76.)
`On February 7, 2018, the Court granted the parties’ joint motion for leave for
`Plaintiffs to file a first amended complaint and to modify the scheduling order. (Doc. No.
`100.) On February 9, 2018, Plaintiffs filed an amended complaint: (1) adding Sirigen and
`Sirigen II as additional Plaintiffs and adding claims that Defendants’ products infringe four
`Sirigen patents: U.S. Patent No. 9,547,008, U.S. Patent No. 9,139,869, U.S. Patent No.
`8,575,303, and U.S. Patent No. 8,455,613; (2) adding infringement allegations against
`additional accused products; and (3) adding allegations of induced infringement against
`Defendants. (Doc. No. 101, FAC.) On February 23, 2018, the Court issued a second
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`amended scheduling order. (Doc. No. 105.) By the present claim construction briefs, the
`parties request that the Court construe disputed claim terms from the ’799 patent, the ’673
`patent, and the ’113 patent. (Doc. Nos. 111, 113.)
`Discussion
`Legal Standards for Claim Construction
`I.
`Claim construction is an issue of law for the court to decide. Teva Pharm. USA, Inc.
`
`v. Sandoz, Inc., 135 S. Ct. 831, 838 (2015); Markman v. Westview Instr., Inc., 517 U.S.
`370, 372 (1996). Although claim construction is ultimately a question of law, “subsidiary
`factfinding is sometimes necessary.” Teva, 135 S. Ct. at 838.
`
`“The purpose of claim construction is to ‘determin[e] the meaning and scope of the
`patent claims asserted to be infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
`Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). “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).
`
`Claim terms “‘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.” Id. at 1312–13. “In some cases, the ordinary meaning of
`claim language as understood by a [PHOSITA] 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. “However, in many
`cases, the meaning of a claim term as understood by persons of skill in the art is not readily
`apparent.” O2 Micro, 521 F.3d at 1360. If the meaning of the term is not readily apparent,
`the court must look to “those sources available to the public that show what a person of
`skill in the art would have understood disputed claim language to mean,” including intrinsic
`and extrinsic evidence. See Phillips, 415 F.3d at 1314. A court should begin with the
`intrinsic record, which consists of the language of the claims, the patent specification, and,
`if in evidence, the prosecution history of the asserted patent. Id.; see also Vederi, LLC v.
`Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014) (“In construing claims, this court relies
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`primarily on the claim language, the specification, and the prosecution history.”).
`
`In determining the proper construction of a claim, a court should first look to the
`language of the claims. See Vitronics, 90 F.3d at 1582; see also Comark Commc’ns v.
`Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (“The appropriate starting point . . . is
`always with the language of the asserted claim itself.”). The context in which a disputed
`term is used in the asserted claims may provide substantial guidance as to the meaning of
`the term. See Phillips, 415 F.3d at 1314. In addition, the context in which the disputed
`term is used in other claims, both asserted and unasserted, may provide guidance because
`“the usage of a term in one claim can often illuminate the meaning of the same term in
`other claims.” Id. Furthermore, a disputed term should be construed “consistently with its
`appearance in other places in the same claim or in other claims of the same patent.”
`Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); accord
`Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed.
`Cir. 2008); see also Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir.
`2009) (“We apply a presumption that the same terms appearing in different portions of the
`claims should be given the same meaning.” (internal quotation marks omitted)). Moreover,
`“‘[a] claim construction that gives meaning to all the terms of the claim is preferred over
`one that does not do so.’” Vederi, 744 F.3d 1383.
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`A court must also read claims “in view of the specification, of which they are a part.”
`Markman, 52 F.3d at 979; see 35 U.S.C. § 112(b) (“The specification shall conclude with
`one or more claims particularly pointing out and distinctly claiming the subject matter
`which the inventor or a joint inventor regards as the invention.”). “‘Apart from the claim
`language itself, the specification is the single best guide to the meaning of a claim term.’”
`Vederi, 744 F.3d at 1382. For example, “a claim construction that excludes [a] preferred
`embodiment [described in the specification] ‘is rarely, if ever, correct and would require
`highly persuasive evidentiary support.’” Adams Respiratory Therapeutics, Inc. v. Perrigo
`Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010).
`
`But “[t]he written description part of the specification does not delimit the right to
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`exclude. That is the function and purpose of claims.” Markman v. Westview Instruments,
`Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc). “[A] claim construction must not import
`limitations from the specification into the claims.” Douglas Dynamics, LLC v. Buyers
`Products Co., 717 F.3d 1336, 1342 (Fed. Cir. 2013). Therefore, “it is improper to read
`limitations from a preferred embodiment described in the specification—even if it is the
`only embodiment—into the claims absent a clear indication in the intrinsic record that the
`patentee intended the claims to be so limited.” Dealertrack, Inc. v. Huber, 674 F.3d 1315,
`1327 (Fed. Cir. 2012); see also Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348
`(Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims, and we will not
`limit him to his preferred embodiment or import a limitation from the specification into the
`claims.”).
`
`In most situations, analysis of the intrinsic evidence will resolve claim construction
`disputes. See Vitronics, 90 F.3d at 1583; Teva, 135 S. Ct. at 841. However, “[w]here the
`intrinsic record is ambiguous, and when necessary,” district courts may “rely on extrinsic
`evidence, which ‘consists of all evidence external to the patent and prosecution history,
`including expert and inventor testimony, dictionaries, and learned treatises.’” Power
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1360 (Fed. Cir.
`2013) (quoting Phillips, 415 F.3d at 1317). A court must evaluate all extrinsic evidence in
`light of the intrinsic evidence. Phillips, 415 F.3d at 1319. “Extrinsic evidence may not be
`used ‘to contradict claim meaning that is unambiguous in light of the intrinsic evidence.’”
`Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015); see also Bell
`Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1269 (Fed. Cir.
`2001) (“[E]xtrinsic evidence . . . may not be used to vary, contradict, expand, or limit the
`claim language from how it is defined, even by implication, in the specification or file
`history.”); Vederi, 744 F.3d at 1382 (“[E]xtrinsic evidence may be less reliable than the
`intrinsic evidence.”). In cases where subsidiary facts contained in the extrinsic evidence
`“are in dispute, courts will need to make subsidiary factual findings about that extrinsic
`evidence.” Teva, 135 S. Ct. at 841.
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`“[D]istrict courts are not (and should not be) required to construe every limitation
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`present in a patent’s asserted claims.” O2 Micro, 521 F.3d at 1362. In certain situations,
`it is appropriate for a court to determine that a claim term needs no construction and its
`plain and ordinary meaning applies. See id.; Phillips, 415 F.3d at 1314. But “[a]
`determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary
`meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when
`reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.” O2 Micro,
`521 F.3d at 1361. If the parties dispute the scope of a certain claim term, it is the court’s
`duty to resolve the dispute. Id. at 1362; accord Eon Corp. IP Holdings v. Silver Spring
`Networks, 815 F.3d 1314, 1318 (Fed. Cir. 2016).
`II. Analysis of the Disputed Claim Terms
`A.
`The ’799 Patent
`The ’799 patent is entitled “Methods and compositions for detection and analysis of
`polynucleotides using light harvesting multichromophores.” U.S. Patent No. 9,085,799
`(filed Jul. 21, 2015), at (54). The invention disclosed in the ’799 patent relates to “methods,
`articles and compositions for the detection and analysis of polynucleotides in a sample.”
`Id. at 1:28-30.
`
`The specification of the ’799 patent explains: “Methods permitting DNA sequence
`detection in real time and with high sensitivity are of great scientific and economic interest.
`Their applications include medical diagnostics, identification of genetic mutations, gene
`delivery monitoring and specific genomic techniques.” Id. at 1:34-38 (footnotes omitted).
`The specification further explains that at the time of the invention, there was a need in the
`art for methods of detecting and analyzing particular polynucleotides in a sample, and that
`such methods are provided in the ’799 patent. Id. at 1:49-58.
`The specification of the ’799 patent describes the method as follows:
`The method of the invention comprises contacting a sample with an aqueous
`solution comprising at least two components; (a) a light harvesting,
`polycationic, luminescent multichromophore system such as, for example, a
`conjugated polymer, semiconductor quantum dot or dendritic structure that is
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`water soluble, and (b) a sensor polynucleotide conjugated to a luminescent
`signaling chromophore (referred to as “Oligo-C*”).
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`Id. at 3:18-25.
`Claim 1 of the ’799 patent claims:
`1. A method comprising:
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`(a) contacting a sample with a light harvesting multichromophore system, the
`system comprising:
`
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`i) a signaling chromophore; and
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`ii) a water-soluble conjugated polymer comprising a delocalized
`electronic structure, wherein the polymer can transfer energy from its
`excited state to the signaling chromophore to provide a greater than 4
`fold increase in fluorescence emission from the signaling chromophore
`than can be achieved by direct excitation of the signaling chromophore
`in the absence of the polymer;
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`(b) applying a light source to the sample; and
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`(c) detecting whether light is emitted from the signaling chromophore.
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`Id. at 21:51-65.
`“a sample”
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`i.
`Plaintiffs propose that the term “a sample” be construed as “a substance to be
`analyzed.” (Doc. No. 113 at 9.) Defendants propose that this term be construed as “a
`biological material that is analyzed for a target polynucleotide.” (Doc. No. 111 at 4.) Here,
`the parties agree that the term “a sample” means a substance or material that is analyzed.
`But the parties dispute whether the term “a sample” within the ’799 patent specifically
`requires that the substance or material be analyzed for a target polynucleotide. Because
`the parties dispute the scope of this claim term, the Court must resolve the parties’ dispute.
`See O2 Micro, 521 F.3d at 1361; Eon, 815 F.3d at 1318.
`The Court begins its analysis of the parties’ claim construction dispute by examining
`the claim language. The claim language in the ’799 patent does not specifically require
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`that the sample be analyzed for a target polynucleotide. For example, claim 1 of the ’799
`patent claims: “[a] method” involving “contacting a sample with a light harvesting
`multichromophore system” and “applying a light source to the sample.” ’799 Patent at
`21:51-63. The claim language does not state that the substance is to be analyzed for a target
`polynucleotide.
`In support of their contention that the term “sample” requires that the substance is
`analyzed for a target polynucleotide, Defendants rely heavily on language contained in the
`’799 patent’s specification. The specification provides: “[t]his invention relates to
`methods, articles, and compositions for the detection and analysis of polynucleotides in a
`sample.” ’799 Patent at 1:28-30. The specification further provides in the “summary of
`the invention section:”
`Methods, compositions and articles of manufacture for detecting and assaying
`a target polynucleotide in a sample are provided.
`
` sample suspected of containing the target polynucleotide is contacted with
`a polycationic multichromophore and a sensor polynucleotide complementary
`to the target polynucleotide. . . . In the presence of target polynucleotide in
`the sample, the signaling chromophore can acquire energy more efficiently
`from the excited polycationic multichromophore and emit increased amounts
`of light or signal which can be detected. The target polynucleotide can be
`analyzed as it occurs in the sample, or can be amplified prior to or in
`conjunction with analysis.
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`Id. at 1:56-62; see also ’799 Patent at 1:49-52 (“There is a need in the art for methods of
`detecting and analyzing particular polynucleotides in a sample, and for compositions and
`articles of manufacture useful in such methods.”), 2:4-11, 8:20-26.2 Here, the specification
`describes the invention claimed in the ’799 patent as a whole and provides that it is for the
`detection and analysis of polynucleotides in a sample. The Federal Circuit has explained
`that “[w]hen a patentee describes the features of the present invention as a whole, he alerts
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` A
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`2
`Defendants note that, as a whole, the ’799 patent contains over 250 references to polynucleotides,
`DNA, or RNA, and the specification fails to describe any example of interrogating a sample for a target
`other than a target polynucleotide. (Doc. No. 111 at 4.)
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`the reader that this description limits the scope of the invention.” Pacing Techs., LLC v.
`Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015) (internal quotation marks
`omitted); accord Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353
`(Fed. Cir. 2016); Regents of Univ. of Minnesota v. AGA Med. Corp., 717 F.3d 929, 936
`(Fed. Cir. 2013); see, e.g., Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318
`(Fed. Cir. 2006) (“[T]he written description uses language that leads us to the conclusion
`that a fuel filter is the only ‘fuel injection system component’ that the claims cover, and
`that a fuel filter was not merely discussed as a preferred embodiment. On at least four
`occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present
`invention[.]’”); Nystrom v. TREX Co., 424 F.3d 1136, 1143-45 (Fed. Cir. 2005). Such
`language constitutes “a clear and unmistakable statement of disavowal,” limiting the
`claims. Pacing Techs., 778 F.3d at 1025. Accordingly, in light of this language in the
`specification describing the invention as a whole, Defendants’ proposed claim construction
`properly includes that the limitation that the claimed “sample” is a material that is analyzed
`for a target polynucleotide.
`In response, Plaintiffs argue that the Court should reject Defendants’ proposed
`construction because a Court should not import limitations from preferred embodiments
`described in the specification into the claims. (Doc. No. 113 at 9; Doc. No. 123 at 2.) The
`Court recognizes that “it is improper to read limitations from a preferred embodiment
`described in the specification—even if it is the only embodiment—into the claims absent
`a clear indication in the intrinsic record that the patentee intended the claims to be so
`limited.” Dealertrack, 674 F.3d at 1327. But in the passages at issue, the specification is
`not merely describing preferred embodiments. Rather, the specification is describing
`features of the present invention as a whole and explaining that the invention involves
`detecting and analyzing polynucleotides in a sample. See ’799 Patent at 1:28-30, 1:49-52,
`1:56-2:3. The Federal Circuit has explained that when the patentee uses language
`describing features of the invention as a whole, such language constitutes “a clear and
`unmistakable statement of disavowal,” limiting the claims. Pacing Techs., 778 F.3d at
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`1025; Luminara Worldwide, 814 F.3d at 1353; Regents of Univ. of Minnesota, 717 F.3d
`at 936. Accordingly, the Court rejects Plaintiffs’ contention that the portions of the
`specification at issue are merely describing preferred embodiments.3
`Plaintiffs also argue that an examination of the prosecution history for the ’799
`patent demonstrates that the Court should reject Defendants’ proposed construction. (Doc.
`No. 113 at 10; Doc. No. 123 at 1-2.) Plaintiffs note that during the prosecution of the ’799
`patent, earlier proposed claims contained language claiming a “sample that is suspected of
`containing a target polynucleotide,” but that language was removed from the claims that
`ultimately issued. (Id. (citing Doc. No. 113-5, Ex. 12).) In 3M Innovative Properties Co.
`v. Avery Dennison Corp., the Federal Circuit found that “[a] broadening claim amendment
`made during the prosecution history of the [patent at issue] support[ed] a plain-meaning
`construction of claim 1 without [the limitation that was removed].” 350 F.3d 1365, 1372
`(Fed. Cir. 2003); see also Aylus Networks, Inc. v. Apple, Inc., No. C-13-4700 EMC, 2015
`WL 355174, at *11 (N.D. Cal. Jan. 27, 2015) (“In general, if a claim limitation was
`removed during prosecution, it is improper to read that limitation back into the claim during
`litigation.”). But 3M is distinguishable from the present case. There is nothing in the 3M
`decision showing that the patent at issue in that case contained statements in the
`specification describing the limitation at issue as a feature of the invention as whole.4 In
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`3
`Plaintiffs also argue that the specification supports their broad construction for this claim term.
`(Doc. No. 113 at 9.) Specifically, Plaintiffs cite to the following passage in the specification explaining
`that the claimed “samples” can be “blood, urine, semen, milk, sputum, [and] mucus.” (Id. (citing ’799
`Patent at 8:29-31).) But this statement in the specification is preceded by the following sentence: “The
`portion of the sample comprising or suspected of comprising the target polynucleotide can be any source
`of biological material which comprises polynucleotides that can be obtained from a living organism
`directly or indirectly, including cells, tissue or fluid, and the deposits left by that organism, including
`viruses, mycoplasma, and fossils.” ’799 Patent at 8:21-26. Thus, the cited portion of the specification
`actually supports Defendants’ proposed construction, not Plaintiffs’ proposal.
`
`At the claim construction hearing, Plaintiffs argued that the patent at issue in 3M contained
`
`statements in the specification explaining that the limitation at issue was a central feature of the claimed
`invention. But the citations that Plaintiffs provided to the Court did not actually support this argument.
`The limitation at issue in 3M was whether the claimed “multiple embossed patterns” in U.S. Patent No.
`5,897,930 must be created “sequentially.” See 350 F.3d at 1371. The specification of the ’930 patent
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`contrast, here, despite the fact that the claims were amended during the prosecution history,
`the specification that issued contains clear statements explaining that the invention as a
`whole is directed to the detection and analysis of polynucleotides.5 The Federal Circuit
`has held in several cases that such statements in the specification describing the invention
`as a whole limit the scope of the invention. See Pacing Techs., 778 F.3d at 1025; Luminara
`Worldwide, 814 F.3d at 1353; Regents of Univ. of Minnesota, 717 F.3d at 936; see also
`Phillips, 415 F.3d at 1317 (explaining that the prosecution history “often lacks the clarity
`of the specification and thus is less useful for claim construction purposes”). In addition,
`the Court notes that the prosecution history is at best ambiguous as to why the amendments
`at issue were made. Accordingly, the Court rejects Plaintiffs’ reliance on the prosecution
`history.
`Finally in support of its proposed construction, Plaintiffs also rely on extrinsic
`evidence, specifically expert testimony. (Doc. No. 113 at 9.) But “[e]xtrinsic evidence
`may not be used ‘to contradict claim meaning that is unambiguous in light of the intrinsic
`evidence.’” Summit 6, 802 F.3d at 1290; see Bell Atl. Network, 262 F.3d at 1269. The
`specification contains clear language describing the invention as a whole and explaining
`that the invention is directed to the detection and analysis of polynucleotides. Accordingly,
`Plaintiffs cannot use extrinsic evidence to contradict this clear disclaimer contained in the
`specification.
`In sum, the Court adopts Defendants’ proposed construction for this claim term, and
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`does not refer to sequentially created patterns as being a feature of the claimed invention in any of the
`portions of the specification cited by Plaintiffs. See U.S. Patent No. 5,897,930, at 2:16-18, 6:64-7:6.
`
`
`3M is further distinguishable in that the patent at issue in that case contained an embodiment that
`allowed for the creation of “multiple embossed patterns in a single step.” See ’350 F.3d at 1372. Thus,
`the patent at issue in 3M expressly disclosed an embodiment that did not include the limitation at issue.
`In contrast, here, Plaintiffs have failed to identify any embodiment disclosed in the ’799 patent involving
`a sample that is targeted for anything other than a target polynucleotide.
`
`5
`In addition, the Court notes that 3M is pre-Phillips case law that contains citations to Texas Digital
`Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201 (Fed. Cir. 2002). See, e.g., 3M, 350 F.3d at 1371.
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`the Court rejects Plaintiffs’ proposed construction. The Court construes the term “a
`sample” as “a biological material that is analyzed for a target polynucleotide.”
`
`ii.
`“multichromophore system”
`Plaintiffs propose that the term “multichromophore system” be construed as “a set
`of multiple chromophores working together in an integrated system, which chromophores
`may or may not be chemically bound to one another.” (Doc. No. 113 at 8.) Defendants
`propose that this term be construed as “a polycationic multichromophore.” (Doc. No. 111
`at 7.) Here, the parties dispute whether the claimed “multichromophore system” is cationic
`(positively charged). Because the parties dispute the scope of this claim term, the Court
`must resolve the parties’ dispute. See O2 Micro, 521 F.3d at 1361; Eon, 815 F.3d at 1318.
`The Court notes that its analysis of the parties’ dispute as to the proper construction
`of this claim term is similar to its analysis of the parties’ dispute as to the prior claim term.
`The Court begins its analysis of the parties’ claim construction dispute by examining the
`claim language. The claim language in the ’799 patent does not specifically require that
`the claimed “multichromophore system” be polycationic. For example, claim 1 of the ’799
`patent claims: “[a] method” involving “contacting a sample with a light harvesting
`multichromophore system.” ’799 Patent at 21:51-53. The claim language does not state
`that the multichromophore system is polycationic.
`In support of their contention that the claimed “multichromophore system” is
`polycationic, Defendants rely primarily on language in the specification. The ’799 patent’s
`specification provides: “The multichromophores used in the present invention are
`polycationic and can interact with a sensor polynucleotide electrostatically.” ’799 Patent
`at 11:41-43. The specification further provides: “The method of the invention comprises
`contacting a sample with an aqueous solution comprising at least two components;
`[including] (a) a light harvesting, polycationic, luminescent multichromophore system . . .
`.” Id. at 3:18-21; see also id. at 1:59-60 (“A sample suspected of containing the target
`polynucleotide is contacted with a polycationic multichromophore . . . .”), at 6:1-20
`(“DEFINITIONS . . . Whether modified or unmodified, the sensor polynucleotide is
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`anionic and can interact with the cationic multichromophore in the absence of target
`polynucleotide.”), at 10:53 (“The Polycationic Multichromophore”), at 12:59-62
`(“Chromophores useful in the inventions described herein include any substance which can
`absorb energy from a polycationic multichromophore in an appropriate solution and emit
`light.”). Here, the specification is describing the invention claimed in the ’799 patent as a
`whole and provides that the claimed “multichromophore system” is polycationic. The
`Federal Circuit has explained that “[w]hen a patentee describes the features of the present
`invention as a whole, he alerts the reader that this description limits the scope of the
`invention.” Pacing Techs., 778 F.3d at 1025 (internal quotation marks omitted); accord
`Luminara Worldwide, 814 F.3d at 1353; Regents of Univ. of Minnesota, 717 F.3d at 936.
`Such language constitutes “a clear and unmistakable statement of disavowal,” limiting the
`claims. Pacing Techs., 778 F.3d at 1025. Accordingly, in light of this language in the
`specification describing the invention as a whole, Defendants’ proposed claim construction
`properly includes that the limitation that the claimed “multichromophore system” is
`polycationic.
`In response, Plaintiffs argue that the Court should reject Defendants’ proposed
`construction because a Court should not import limitations from preferred embodiments
`described in the specification into the claims. (Doc. No. 113 at 8; Doc. No. 123 at 2.) The
`Court recognizes that “it is improper to read limitations from a preferred embodiment
`described in the specification—even if it is the only embodiment—into the claims absent
`a clear indication in the intrinsic record that the patentee intended the claims to be so
`limited.” Dealertrack, 674 F.3d at 1327. But in the passages at issue, the specification is
`not merely describing preferred embodiments. Rather, the specification is describing
`features of the present invention as a whole and explaining that the multichromophore
`system claimed in the invention is polycationic. See ’799 Patent at 11:41-43, 3:18-21,
`1:59-60, 6:1-20, 12:59-62. The Federal Circuit has explained that when the patentee uses
`language describing features of the invention as a whole, such language constitutes “a clear
`and unmistakable statement of disavowal,” limiting the claims. Pacing Techs., 778 F.3d at
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`1025; Luminara Worldwide, 814 F.3d at 1353; Regents of Univ. of Minnesota, 717 F.3d
`at 936. Accordingly, the Court rejects Plaintiffs’ contention that the portions of the
`specification at issue are merely describing preferred embodiments.
`Plaintiffs also argue that an examination of the prosecution history for the ’799
`patent demonstrates that the Court should reject Defendants’ proposed construction. (Doc.
`No. 113 at 9; Doc. No. 123 at 1-2.) Plaintiffs note that during the prosecution of the ’799
`patent, earlier proposed claims contained
`language claiming a “polycationic
`multichromophore,” but the “polycationic” language was removed from the claims that
`ultimately issued. (Id. (citing Doc. No. 113-5, Ex. 12).) In 3M Innovative Properties Co.
`v. Avery Dennison Corp., the Federal Circuit found that “[a] broadening claim amendment
`made during the prosecution history of the [patent at issue] support[ed] a plain-meaning
`construction of claim 1 without [the limitation that was removed].” 350 F.3d at 1372. But
`3M is distinguishable. There is nothing in the 3M decision showing that the patent at issue
`in that case contained statements in the specification describing the limitation at issue as a
`feature of the invention