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Category Archives: Claim Construction

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Clarified Claim Construction Precludes Summary Judgment

Posted in Claim Construction, Summary Judgment

Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill. Dec. 22, 2014) (Coleman, J.).

Judge Coleman denied defendants’ (collectively “CQG” motion for summary judgment of noninfringement in this patent case involving futures trading software.  For more on plaintiff Trading Technologies’ (“TT”) various cases, click here.

CQG argued that TT could not meet its burden of proving infringement because TT did not identify a manual recentering command in CQG’s accused products.  The Court previously adopted Judge Moran’s claim construction of “static display of prices” which had been affirmed by the Federal Circuit:

[A] display of prices comprising price levels that do not change positions unless a manual re-centering command is received.

The Court then clarified its construction of “static”:

The proper construction of the term “static” is that price levels will not change unless a manual re-centering or repositioning command is entered.  [(Dkt. 826 at 3)].  This means that “static” excludes automatic re-centering and repositioning, but includes systems where the prices never move or [are] repositioned or recentered by manual command.

Based upon the clarification, “static” did not require a manual re-centering command.  Because a manual re-centering command is not required by the claims, the absence of the command alone did not warrant summary judgment.  The Court also denied TT’s request for attorney’s fees for responding to the motion.

Ordinary Meaning Relied Upon When the Patent Does Not Require More than That

Posted in Claim Construction

Sonix Tech. Co., Ltd. V. Pubs. Int’l, Ltd., No. 13 C 2082, Slip Op. (N.D. Ill. Oct. 30, 2014) (St. Eve, J.).

Judge St. Eve construed the disputed terms of the patent in suit in this case regarding graphic indicators on a surface that are not visible to the human eye, but when scanned provide additional information.  The Court held that the following three terms need not be construed, relying upon their plain and ordinary meaning:

  1. Capable of distinguishing the corresponding graphical indicator from adjacent graphical indicators;
  2. Main information that overlaps and co-exists with the graphical micro-units on the surface of the object; and
  3. Content information.

The Court construed “header information” as follows:

  • Information in the graphical indicator that is used to retrieve the graphical indicator and corresponding content information and is capable of (1) distinguishing the corresponding graphical indictor from an adjacent graphical indicator, and (2) indicating the orientation of the corresponding graphical indicator to the optical device.

The Court also provided several charts that are very helpful in quickly understanding the relative positions and the Court’s conclusions.  Before the Court’s analysis of each disputed term, the Court provided a chart listing plaintiff’s proposed construction, defendants’ proposed construction and the Court’s construction.  Additionally, at the end of the opinion, the Court concludes with a chart of its constructions.  This is a great practice and makes the opinion much more readable.

District Court Claim Constructions Not Controlling

Posted in Claim Construction

Costar Realty Info., Inc. v. CIVIX-DDI, LLC, Nos. 12 C 4968, 7091 & 8632, Slip Op. (N.D. Ill. Sep. 23, 2013) (Holderman, Sen. J.).

Judge Holderman construed the disputed claim terms in this patent case involving methods of locating points of interest in a geographic region by accessing a remote database.  Before construing the claims, the Court noted the uncertainty regarding the preclusive effect of prior district court constructions with some courts holding prior constructions should be deferred to absent clear error and other courts considering them merely instructive.  The Court held that other opinions were not controlling based upon the Supreme Court’s statements in Markman that making claim construction a matter of law would not create consistency, even within a single district.  Of particular note, were the following constructions:

  • “The request containing (a) at least one user-selected category and (b) a user-selected geographic vicinity” was” construed as “the request containing, in a single electronic representation, (a) at least one user-selected category and (b) a user-selected geographic vicinity”;
  • “Advertising information about a business” was construed as “paid promotion of a business name, service, or product”;
  • “Advertisements” was construed as “paid promotions”;
  • “Database” was construed as “a collection of related information organized for convenient access”;
  • “Geographical/geographic position” was construed as “a specific location within a geographic vicinity”;
  • “Wherein a user at the port may locate the one item of interest” was construed “so that a user at the port has sufficient information to locate an item of interest”;
  • “Spatial detail” was construed as “a system of linked computer networks, world-wide in scope that typically is associated with using TCP/IP as a standard protocol.”
  • “At a database, receiving at least in part through the Internet, a request from one of a plurality of ports” did not require construction; and
  • “Determining, at the database, a plurality of advertisements in response to the request . . .  from the database, transmitting, at least in part through the Internet, the response to the port” did not require a construction.

Trading Technologies: Federal Circuit Claim Constructions are Binding

Posted in Claim Construction

Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05 C 4811, Slip Op. (N.D. Ill.) (Coleman, J.).

Judge Coleman granted plaintiff Trading Technologies’ (“TT”) motion to terminate Markman proceedings in this patent case involving commodities trading software — click here for much more on this case in the Blog’s archives).  Defendants (collectively “CQG”) sought construction of numerous terms, after having participated in the prior action brought against former defendant eSpeed which was ultimately appealed to the Federal Circuit.  The Court held as follows:

  • The Court declined to construe the “static limitation” terms.  In the prior case, Judge Moran construed “static limitation” and that construction was reviewed by the Federal Circuit.  Because the Federal Circuit decision was binding upon the Court and because CQG had fully participated in that proceeding, the Court would not further construe these terms.
  • The Court also declined to construe the “manual re-centering” terms.  These terms appear not in the claims, but in Judge Moran’s construction of the static limitation terms.  The Court, therefore, declined to construe them for the same reasons that it would not further construe the static limitation terms.
  • The Court declined to construe “single action” because it too had already been construed by the Federal Circuit.

Finally, the Court declined to construe “in response … to sending” because the term did not appear in the claims, but in the Federal Circuit’s construction of the claims.  The constructions of claim terms do not warrant construction.

Court Construes Key Term But Declines to Construe Any Others

Posted in Claim Construction

Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, No. 13 C 4417, Slip Op. (N.D. Ill. Sep. 18, 2014) (Hart, Sen. J.).

Judge Hart construed the claims of plaintiff’s patent to methods for screening equipment operators for impairments.  The parties agreed that “expert system(s)” was the key term that required construction.  The Court construed “expert system(s)” as:

[A] computer program consisting of (1) a database module that contains information a specialist would consider in an analysis of an equipment operator for impairment; (2) a decision module that applies logic for screening and testing an equipment operator for impairment and for controlling equipment, and (3) an interface module which interfaces with one or more equipment modules and the equipment operator.

Having construed the key term, the Court held that the parties’ other six disputed terms did not require construction beyond their respective ordinary meetings.


Preliminary Injunction Does Not Apply to Redesigns as Long as They are Not Colorable Imitations

Posted in Claim Construction, Local Rules

Scholle Corp. v. Rapak LLC, No. 13 C 3976, Slip Op. (N.D. Ill. Jul. 24, 2014) (Kendall, J.).

Judge Kendall ruled on numerous motions filed after the Court granted a preliminary injunction in this patent case.  Of particular note, the Court held as follows:

  • The Court granted defendant Rapak’s motion to construe more than five claim terms, despite Rapak’s failure to comply with the Local Patent Rules by identifying which terms were case dispositive.  The Court did so despite Rapak’s deficiencies to avoid further delay in the case.
  • The Court ordered Rapak to show cause why Rapak should not be held in contempt for violating the Court’s preliminary injunction by shipping enjoined smoothie valves after the date of the preliminary injunction.  The Court held that the fact that no bond had been set or provided was not a reason that Rapak could delay compliance.  That was especially true because Rapak did not originally raise the bond, the Court did sua sponte.
  • The Court granted Rapak’s motion clarifying that the preliminary injunction only applies to the smoothie valves that were before the Court in the preliminary injunction proceedings and colorable imitations thereof.  The Court, however, declined to rule upon whether Rapak’s redesigned smoothie valves were colorable imitations of the current smoothie valve.
  • The Court granted Rapak’s motion to amend a counterclaim seeking a declaratory judgment that its redesigned smoothie valve did not infringe.
  • The Court denied Rapak’s motion to strike Scholle’s new proposed claim constructions in its response brief.  While they technically did not follow the Local Patent Rules requirements that the parties disclose and confer regarding their respective constructions, Rapak either had notice of the constructions or they were an explanation of the ordinary meaning which Scholle originally set out as the construction.

Plaintiff’s strategy decisions “hoist [it] with his own petard”

Posted in Claim Construction

R-Boc Reps., Inc. v. Minemyer, No. 11 C 8433, Slip Op. (N.D. Ill. Sep. 18, 2014) (Cole, Mag. J.).

Judge Cole denied plaintiff R-Boc’s motion for reconsideration regarding the Court’s prior denial of its motion for leave to amend its Final Invalidity Contentions and supplement its expert reports to add an indefiniteness argument in this patent case.  In the underlying motion, R-Boc argued that the Supreme Court’s recent Nautilus decision which relaxed the indefiniteness standard — created a new indefiniteness argument regarding the term “approximately perpendicular.”  After an explanation of the meaning of Shakespeare’s phrase “hoist with his own petard.” The Court explained that R-Boc was hoist by its own petard in the form of its strategy decisions to propose a construction of the term which defendant agreed to and the Court adopted.  The Court then turned to French in italics to emphasize R-Boc’s repeated strategy decisions since 2008:

  •  “C’est une petard”:  R-Boc proposed its construction.
  • C’est deux petards”:  After defendant accepted R-Boc’s construction, R-Boc chose to forego a claim construction hearing.
  • Le troisieme petard”:  R-Boc waived its indefiniteness arguments.
  • Le quatrieme petard”:  R-Boc filed a summary judgment motion that undercut its instant motion to amend.

Based upon these strategic decisions, R-Boc could not reclaim its indefiniteness arguments despite the changed indefiniteness standard.

Intrinsic Evidence Controls Claim Construction

Posted in Claim Construction

Intercontinental Great Brands LLC v. Kellogg N. Am. Co., No. 13 C 321, Slip Op. (N.D. Ill. Sep. 22, 2014) (Kennelly, J.).

Judge Kennelly construed the terms in this patent dispute regarding repeatable food containers.  Of particular note, the Court held as follows:

  • “Sealing layer” was construed as being separate from the top of the food container because the claims required that the sealing layer be sealed to the top of the container, which would not be possible if the sealing layer was part of the top of the container as proposed by plaintiff.
  • “Frame” was construed as “a tray with a bottom and sides” as proposed by plaintiff.  The parties’ dispute boiled down to whether the frame was required to have sides.  The Court held that sides were required because the container was for holding food and holding food required sides.
  • “Overwrap” was construed as a synonym for wrapper as it was used elsewhere in the patent.
  • The Court declined, at least at this point, to construe “facing perimeter portions,” “facing Overwrap perimeter portions,” and “additional perimeter portions.”

Improper Inventorship Case Transferred Because of Improper Venue

Posted in Claim Construction

Hester v. j2Global Comm., Inc., No. 13 C 6143, Slip Op. (N.D. Ill. Sep. 19, 2014) (Lefkow, J.).

Judge Lefkow held that venue was improper in this patent inventorship dispute, but instead of dismissing, transferred the case to the N.D. Georgia.  The Court lacked venue because:

  • At least one defendant did not reside in Illinois; and
  • The events giving rise to the claim did not happen in Illinois.  Furthermore, the location of the patent was not relevant, and even if it were, there was no evidence that the patent resided in Illinois.

Because the Northern District was not a proper venue and because the parties agreed that N.D. Georgia was a proper venue, the Court transferred the case to the N.D. Georgia.

Prosecution History Requires Certain Method Steps be Performed in Order

Posted in Claim Construction

VendoNet, Inc. v. Redbox Automated Retail, LLC, No. 13 C 3475, Slip Op. (N.D. Ill. Sep. 15, 2014) (Shah, J.).

Judge Shah construed the claims in this patent dispute regarding methods of giving vending machine customers access to a computer network.  Of particular note, the Court held as follows:

  • The preamble was not limiting.  The fact that the terms “website,” “homepage,” and “database” derived antecedent basis from the preamble did not make the preamble limiting because it provided no further explanation of or limitation upon any of the terms.
  • “A plurality of physical items” was construed as “more than one item, whether or not they are of the same type.”
  • “Permitting the customer to access the Internet/world wide web via the communication network in order to retrieve and/or send information to said website, said home page or said database” did not require that the customer be able to choose his own website or “surf” the Internet.
  • The Court held that step 5 in the claimed method must occur before step 7, but that step 6 need not be sequential.  In order to overcome an obviousness rejection during prosecution, the patented stated that step 5 must occur before step 7.  Having disclaimed the two steps out of order during prosecution, patented was estopped from reclaiming the ground it lost during prosecution.

Claim Differentiation Informs Claim Construction

Posted in Claim Construction

Cumberland Pharms, Inc. v. Mylan Inst. LLC, No. 12 C 3846, Slip Op. (N.D. Ill. Feb. 26, 2014) (Pallmeyer, J.).

Judge Pallmeyer construed the claims in this patent infringement case involving an IV form N-acetylcysteine — used for treating acetaminophen overdoses.  Of particular note, the Court held as follows:

  • “Free From A Chelating Agent & “Free Of A Chelating Agent” were defined as “lacking one or more chelating agents.”  “A” in these terms limited adding chelating agents, not the existence of any chelating agent.  This was supported by dependent claims which specified chelating agents.
  • “Acetylcysteine” was defined as “the nonproprietary name for the N-acetyl derivative of the naturally occurring amino acid, L-cysteine (also known as N-acetyl-L-cysteine and NAC) and impurities associated therewith.”
  • “Stable Aqueous Pharmaceutical Composition” was defined as “a composition that exhibits minimal change over time relative to when it is manufactured,” consistent with its plain meaning.

Court Construes Distributed Data Storage Patents

Posted in Claim Construction

Cleversafe, Inc. v. Amplidata, Inc., No. 11 C 4890, Slip Op. (N.D. Ill. May 20, 2014) (Lee, J.).

Judge Lee construed the disputed claim terms of the patents in this patent dispute regarding distributed data storage systems.  Of particular note, the Court held as follows:

  • “Data slice” and “plurality of data slices” was construed as “data slice” to mean a “data structure consisting of a data subset and a coded value.”  Defendant Amplidata’s narrower construction was required by plaintiff Cleversafe’s amendments during prosecution.
  • “Virtual digital data storage vault” was construed as “software construct stored over multiple slice servers.”
  • The parties agreed that a vault is a “software container” and that it is “stored over more than one slice server.”  The dispute was whether a vault must be associated with user accounts.  The Court held that a vault need not be associated with a user account.  The patents’ specification only stated that vaults “may” be associated with user accounts.
  • “Encode, using a coding algorithm, a plurality of subsets of data to create a plurality of coded values” was construed as “encode, using a coding algorithm, n subsets of data to create n coded values.”  The Court’s construction was broad enough that it was not limited to the preferred embodiments, while creating a one-to-one relationship between data subsets and coded values.
  • “Information dispersal algorithm” was construed as “an algorithm capable of assembling a file from data slices and creating new data slices from a rebuilt file.”
  • “String(s) of data” did not require construction beyond its plain and ordinary meaning.
  • “List of unusable storage nodes” was construed as “list of storage nodes that have been rendered permanently unusable.”
  • “The request is valid” and “the request is invalid” did not require construction.
  • “Supports” was construed as “provides access to.”

Failing to Offer Construction for Indefinite Term Can Leave a Court “at Sea”

Posted in Claim Construction

Saro Golf, Inc. v. Nike, Inc., No. 08 C 1110, Slip Op. (N.D. Ill. Sep. 9, 2013) (Chang, J.).

Judge Chang clarified the claim constructions in this patent case regarding an improved golf club head.  “Radius of curvature” was previously construed to mean “radius of a substantially circular curve of a substantial portion of the back side profile shape.”  This construction presumed that each of the heel and toe of a club head had a profile that was “circular in profile” meaning that it was largely made of a single radius.  Neither party had sought a construction limiting the profile to one composed of a single radius, nor did they address the construction at the claim construction hearing.

The Court considered the parties’ briefs and the intrinsic evidence, but could not “square” the construction with the evidence because:

  1. The single radius requirement read one of the preferred embodiments out of the claim.
  2. The construction was a “mouthful” and did not make sense grammatically within the asserted claim 7.  It is good to see courts concerned with making claims that could go to a jury more reasonable and understandable, although it may be a nearly impossible task.
  3. The prior construction was based upon the faulty premise that a radius of curvature could only be a circle.  In fact, it is a mathematical term that can be applied to any curve.

The Court, therefore, held that the Radius of Curvature was an average measure along a complex curve, and the issue was where it was measured from.  The Court ordered further briefing on the issue because neither party fully addressed it.

The Court also upheld the prior constructions of “Heel” and “Toe” of the club.  In doing so, the Court cautioned defendants to strongly consider offering alternative constructions when arguing terms were indefinite to avoid leaving the Court “at sea” should indefiniteness be denied.  The Court acknowledged that offering a construction could weaken the indefiniteness argument, but pointed out that courts regularly handle arguments in the alternative.

Claim Constructions Rely Upon Specification and Dictionary

Posted in Claim Construction

Bobel v. MaxLite, Inc., No. 12 C 5346, Slip Op. (N.D. Ill. Feb. 5, 2014) (St. Eve, J.).

Judge St. Eve construed the disputed terms in this patent litigation related to compact fluorescent lamps.  Of particular note, the Court held as follows:

  • Resonate Boosting Circuit was construed as “a circuit comprising (i) boosting inductance connected in circuit between the AC input terminals and (ii) boosting capacitance, comprising one or more capacitors, connected in parallel with selected one or more diodes of the rectifier circuit.”
  • Power Line Voltage Rectifier was construed as “a device that converts the AC signal from an alternating voltage source into a pulsating DC signal at the output of the rectifier, with such device including at least two diodes, each of which connects on one side to the AC power line.”
  • Integrated Into was construed as “physically combined into.”
  • A Resonant Boosting Circuit Integrated Into the Power Line Voltage Rectifier was construed as “a circuit operable to provide between the DC terminals a variable DC voltage having an absolute peak magnitude higher than the absolute peak magnitude of a rectified voltage of the alternative voltage source, and the resonant boosting circuit comprising: (i) boosting inductance connected in circuit between the AC input terminals and the alternating voltage source, and (ii) boosting capacitance comprising one or more capacitors connected in parallel with one or more unidirectional devices of the rectifier circuit.”  Because the term was a combination of the previously construed terms, the term was construed consistent with those constructions.
  • Parallels was construed as “of or denoting electrical components or circuits connected to common points at each end, rather than one to another in sequence.”  This construction was based upon a dictionary definition.

The Court helpfully closed its opinion with a chart listing its constructions.

Intrinsic Evidence Supported Claim Construction That Excluded a Preferred Embodiment

Posted in Claim Construction, Federal Rules

Albecker v. Contour Prods., Inc., No. 09 C 00631, Slip Op. (N.D. Ill. Sept. 27, 2013) (Chang, J.).

Judge Chang decided the parties’ respective Fed. R. Civ. P. 60(b) motions for reconsideration: (1) plaintiff’s motion for reconsideration of the Court’s previous claim construction order; and (2) defendant’s motion for reconsideration of the Court’s previous opinion denying defendant’s motion to dismiss the declaratory judgment count for lack of subject matter jurisdiction.  Plaintiff filed affirmative patent infringement claims against defendant, as well as declaratory claims seeking to invalidate defendant’s patent.  Defendant argued that the Court lacked subject matter jurisdiction to declare defendant’s patent invalid because there was no case or controversy.  The Court denied defendant’s motion to dismiss.  Then, during claim construction of plaintiff’s patent, the claim term “secured to” was construed to mean “attached using attachment means,” a construction that allegedly excluded a preferred embodiment disclosed in the patent’s specification.

In its motion for reconsideration, plaintiff argued that the Court’s construction impermissibly excluded a preferred embodiment disclosed in the specification.  Defendant argued that this construction did not impermissibly exclude a disclosed embodiment because the intrinsic evidence supported the construction and plaintiff withdrew the claims directed to the preferred embodiment in favor of prosecuting other embodiments in response to a restriction requirement issued by the PTO. Even heeding the Federal Circuit’s cautionary warning from Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (Fed. Cir. 2013) to not conclude that a patentee has disclaimed claim scope simply by withdrawing claims after receiving an unexplained restriction requirement, the Court found that the bulk of intrinsic evidence supported the Court’s prior construction.  Because the weight of the evidence supported the Court’s prior construction, plaintiff did not meet the burden required of a motion to reconsider.

Defendant’s motion for reconsideration of defendant’s denied motion to dismiss was granted because defendant’s actions toward plaintiff did rise to the standard required by SanDisk Corp. v. STMicroelectronics, Inc. for declaratory judgment actions.  480 F.3d 1372, 1381 (Fed. Cir. 2007) (requiring patentee to take position that “puts the declaratory judgment plaintiff in the position of either pursuing illegal behavior or abandoning that which he claims a right to do.”).

Claim Construction Knocks Out Prior Art

Posted in Claim Construction, Summary Judgment

Carrier Vibrating Equip., Inc. v. General Kinematics Corp., No. 10 C 5110, Slip Op. (N.D. Ill. Sept. 27, 2012) (Dow, J.).

Judge Dow granted plaintiff Carrier Vibrating Equipment’s (“Carrier”) motion for summary judgment of validity and denied defendant General Kinematics’s cross motion for summary judgment of invalidity in this patent case related to controlling retention time of a casting on a vibratory conveyor.  The Court initially construed the claim “modifying” to require automatic modification of the angle of vibratory force.  That construction was critical because the parties agreed that the alleged prior art system did not allow for automatic modification of the angle of vibratory force.  The Court, therefore, granted Carrier summary judgment of validity with respect to the asserted piece of prior art.

Court Construes Fecal Management System Claims

Posted in Claim Construction

Hollister Inc. v. ConvaTec Inc., No. 10 C 6431, Slip Op. (N.D. Ill. Aug. 18, 2012) (Kennelly, J.).

Judge Kennelly construed the terms in this patent dispute regarding fecal management systems:

  • “Passed through” was construed as “passed inside.”
  • “An enema one-way valve” was construed as “a device that enables forward fluid flow but prevents backward fluid flow.”
  • “An enema fluid one-way valve located over said internal balloon and in the colon” was construed as “the enema fluid one-way valve is located at the patient proximal end of the internal balloon.”
  • “An annular supporting plate upwardly disposed” was construed to require that the annular plate was “angled toward the patient proximal end of the multipurpose colostomy device.”
  • “For fixing the multipurpose colostomy device to the abdominal wall of the stoma” was construed as “[t]he annular supporting plate attaches the multipurpose colostomy device to the abdomen wall surrounding a surgically constructed opening connected to the colon or ileum.”
  • “A joint tube disposed under said connecting tube” was construed as “[a] tube portion disposed under the connecting tube and used to connect to a drainage hose or a collecting container.”
  • “The balloon having a proximal-most end coincident to a proximal-most first end of the first catheter section” and “the proximal-most end of the retention balloon is coincident to the proximal-most first end of the patient proximal first section of the waste catheter” were both construed as “[t]he proximal-most end of the retention balloon closest to the patient and the proximal-most end of the first catheter section closest to the patient occupy the same plane in space that is perpendicular to the longitudinal axis of the waste collection catheter, and neither of the proximal-most ends extend[s] axially beyond the other.”
  • “Having an inflated size so as to be sufficiently large enough to retain the patient proximal end of the catheter into the patient’s rectum” and related terms were held not to require construction.
  • “Ease of insertion” was held not to require construction.
  • “Folding” was held not to require construction.
  • “Flush port” was held not to require construction.  The disputed language only required that the flush port allow or make possible irrigation.

Reconsideration Requires New Arguments or Facts

Posted in Claim Construction

AmTab Mfg. Corp. v. SICO Inc., No. 11 C 2692, Slip Op. (N.D. Ill. Aug. 13, 2012) (Darrah, J.).

Judge Darrah denied plaintiff AmTab’s motion for reconsideration of the Court’s prior claim construction order.  While claim construction is an organic process that can be revised throughout a case, AmTab did not present any new arguments.  Even the new construction relied upon old arguments.  The Court, therefore, denied the motion. 

Court Construes Pharmaceutical Terms

Posted in Claim Construction

The Medicines Co. v. Mylan Inc., No. 11 C 1285, Slip Op. (N.D. Ill. Aug. 6, 2012) (St. Eve, J.).

 Judge St. Eve construed the claims in this patent case related to bivalirudin.  Of particular note:

  • “Pharmaceutical Batches” was construed as “may include a single batch, wherein the single batch is representative of all commercial batches (see generally, Manual of Policies and Procedures, Center for Drug Evaluation and Research, MAPP 5225.1, Guidance on the Packaging of test Batches at 1) made by a compounding process, and wherein the levels of, for example, Asp9 -bivalirudin, total impurities, and largest unknown impurity, and the reconstitution time represent levels for all potential batches made by said process.  ‘Batches’ may also include all batches prepared by a same compounding process.”
  •  “Efficiently Mixing” was construed as “a pH-adjusting solution and the first solution are mixed not using inefficient mixing conditions such as described in Example 4.”

As usual, the Court very helpfully provided a glossary of constructions at the end of the opinion.  Hopefully, this is a practice every judge will adopt.


Term Used as an Adjective in Specification Required Constructive When Used as Verb in Claims

Posted in Claim Construction

Fujitsu Ltd. v. Tellabs Ops., Inc., No. 09 C 4530, Slip Op. (N.D. Ill. Jul. 27, 2012) (Holderman, C.J.).

Chief Judge Holderman construed an additional claim term - “transmitting” - one month before trial in this patent involving optical transmission systems.  “Transmitting” was used as an adjective modifying “terminal,” and as a verb describing what a terminal did.  Constructing “transmitting” as an adjective was unnecessary because it was used throughout the patent and one of ordinary skill would have understood the meaning.  But “transmitting” was only used as a verb in the claims, warranting construction.  “Transmitting” was construed to mean “engaged in the transmission of.”  The Court declined to construe terms that were not in the claims to be tried in one month.

Court Construes Terms in Folding Table Patent Case

Posted in Claim Construction

AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. March 29, 2012) (Darrah, J.).

Judge Darrah construed the disputed terms of the patent in suit related to a stool attaching to a folding table.  Of particular note, the Court held as follows:

  • “An elongate seat post having a substantially uniform cross section mating with the support mount” was construed as “a seat post with an unvarying or nearly unvarying cross section for the entire length of the seat post mating with the seat mount.”
  • “An at least substantially vertical extent of the seat post having a noncircular cylindrical surface” was construed as “the portion of the seat post that is vertical or nearly vertical has a noncircular cylindrical shape for the entire length of that portion.”
  • “[A]t least partially inserted into the other noncircular cylindrical surface” did not require construction, its ordinary meaning was clear.
  • “[A]ligned non-circular cylindrical surfaces” did not require construction, its ordinary meaning was also clear.

Special Master Order Not Extended for Complex Summary Judgment

Posted in Claim Construction

Bergstrom, Inc. v. Glacier Bay, Inc., No. 08 C 50078, Slip Op. (N.D. Ill. Mar. 9, 2012) (Kapala, J.).

Judge Kapala accepted a Special Master’s claim constructions with some modifications in this case involving heating and cooling systems for over-the-road trucks.  The Court made the following holdings of particular note:

  • “Minimum speed” meant “a minimum non-zero operating speed.”  The intrinsic and extrinsic evidence did not allow for zero to be included as a minimum speed.
  • “Life of the Battery” meant “remaining life of the battery until it needs to be recharged in order to serve its intended purpose.”
  • “Air Conditioning System” meant “a system for controlling, especially lowering, the temperature of an enclosed space.”
  • “A Vehicle Air Conditioning System” meant “a vehicle air conditioning system capable of providing air conditioning when the vehicle engine is on and off.”
  • “Air Conditioning System Temperature” meant “a temperature of the refrigerant system used in the air conditioning system.”
  • “First Speed” meant “a non-zero speed.”
  • “Second Speed” meant “second non-zero speed different than the first speed.”

Finally, the Court denied defendant Glacier Bay’s motion to extend the order of reference to the special master.  Because plaintiff Bergstrom did not consent to extend the order allowing the special master, Glacier Bay had to show exceptional conditions warranting the extension.  Bergstrom’s arguments that complex and voluminous summary motions were not exceptional.


Mini-Markman Used to Streamline Patent Case

Posted in Claim Construction

Magna Carta Holdings, LLC v. Nextgen Healthcare Information Sys., Inc., No. 08 C 7406, Slip Op. (N.D. Ill. Mar. 9, 2012) (Kendall, J.).

Judge Kendall construed a key term in this patent litigation – the Comparator Term – after the parties each acknowledged that the Comparator Term’s construction would likely resolve the case.  The Court construed the Comparator Term before the full claim construction process, similar to the “Mini-Markman” process that Chief Judge Davis had been employing to great effect in the E.D. Texas.

The Court construed the Comparator Term as follows:

A software tool or data structure that examines one thing to see if it is analogous to a second thing, the two things being: (1) predetermined code words, numbers or symbols recorded on a physical or electronic form; and (2) a longer written description of medical information assigned to the particular code word, number or symbol.  The comparator does not, by itself, decode the predetermined code words, numbers or symbols into the longer written descriptions of medical information.

The Court ordered that the parties meet and confer regarding any additional proceedings necessary in light of the Court’s construction.

Apple v. Motorola: Judge Posner Further Narrows Case by Summary Judgment

Posted in Claim Construction, Summary Judgment

Apple Inc. v. Motorola, Inc., No. 11C 8540, Slip Op. (N.D. Ill. Jan. 16, 2012) (Posner, J. sitting by designation).

In light of the upcoming trial of this case – in stages beginning with liability on June 11, 2012 – and the interest because of both the high profile parties and the fact that Seventh Circuit Judge Posner is presiding over the case, I am going to go out of order and profile a significant number of opinions from this case during June.

Judge Posner granted in part and deferred portions of plaintiffs (collectively “Apple”) and defendants (collectively “Motorola) motions for summary judgment in this patent dispute involving various cell phone technologies.  Here are key rulings:

  • Motorola granted summary judgment of noninfringement re RE 39,486 and U.S. Patent Number 5,929,852.  The ‘486 and ‘852 patents taught network components.  Apple did not show that Motorola’s Android Runtime layer allowed for replacement of meaningful components.  It was not enough that Apple’s expert had replaced components on his phone because he provided no reason that a typical user, or any user, might do so.
  • Motorola denied summary judgment of noninfringement re U.S. Patent Number 5,519,867.  The ‘867 patent taught an apparatus for allowing incompatible applications and operating systems to communicate.  A clash of experts over whether Motorola’s two-step system involving a virtual machine read on the claims created a question of material fact precluding summary judgment.
  • Motorola denied summary judgment of noninfringement re U.S. Patent Number 6,493,002.  The ‘002 patent taught aspects of toolbar buttons within an operating system or application.  Motorola’s status window could not infringe the ‘002 patent, but there was a question of fact as to whether its notification window infringed.
  • The Court construed the terms of Apples U.S. Patent No. 6,343,263.  The ‘263 patent taught real time processing of serial data.  The Court held that “Realtime application program interface (API)” need not have a different construction than “application program interface (API).”  And the Court construed “realtime application program interface” to mean an “API that allows realtime interaction between two or more subsystems.”

Having ruled on multiple summary judgment motions, the Court noted that the following patents were still asserted:

  • Apple patents:  ‘002, ‘263, ‘337, ‘354, ‘647, ‘867 & ‘949
  • Motorola patents:  ‘516, ‘559 & ‘898.