By Robert Margolis, J.D.
Holding that the district court’s construction of the term "electrode" to exclude the products of defendants Lifescan, Inc., and Nova Biomedical Corp. (collectively "Lifescan") was correct, the U.S. Court of Appeals for the Federal Circuit has affirmed the lower court’s judgment of non-infringement, dismissing the claims brought by Roche Diagnostics Operations, Inc., and Corange international Limited (collectively "Roche") (Roche Diagnostics Operations, Inc. v. Lifescan Inc., September 22, 2016, Reyna, J.).
The two patents at issue, Nos. 7,276,146 ("the ‘146 patent") and 7,276,147 ("the ‘147 patent"), claim methods for determining the concentration of glucose in a blood sample. Roche sued Lifescan in 2007 for infringement of both patents, and the parties disagreed about the proper construction of certain claim limitations including the term "electrode." Roche proposed constructions describing the function of electrodes, which may be of any size. Lifescan, by contrast, argued that "electrode" should be construed as "microelectrode having a width of 15 to 100 um." At the Markman hearing, Roche opposed Lifescan’s construction, arguing that "electrode" includes both microelectrodes and macroelectrodes with widths from 300 to 1,000 um.
The district court concluded that the claimed electrodes were limited to microelectrodes by assertions in the shared specifications about the invention and arguments during the patent prosecution process, and issued its claim construction opinion in 2009. Roche moved for reconsideration, which was denied, appealed to the Federal Circuit, which declined to address arguments that had not been made in the district court and remanded back so those arguments could be considered. The district court affirmed its earlier decision in 2014, and entered a judgment of non-infringement, leading to this appeal.
Claim construction. Claim terms are "generally given their ordinary and customary meaning," which is its meaning to the "ordinary artisan after reading the entire patent." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). The district court had construed the term "electrode" in the patents to mean only a "microelectrode having a width of 15 um to approximately 100 um." Roche challenged the upper width limit of "up to approximately 100 um," claiming that the claimed electrodes include electrodes up to 1,000 um. Roche made several arguments; the court rejected each one.
First, Roche contended that the district court improperly limited "electrode" based on a width the shared specification of the two patents describes as a preferred embodiment. It relied on the principle that a claim term expressed in general descriptive words will not typically be limited to a numerical range when such a range is described in the written description as referring to a preferred embodiment. Analyzing the paragraph that Roche relied on to contend that the district court erred, the Court of Appeals held this principle inapplicable.
Next, Roche argued that the shared specification’s discussion of "diffusion" precluded the 100 um width limit. The Court of Appeals cited Roche’s prior admission that "diffusion simply depends on far too many variables to be limited to any particular size electrode," as undermining its argument that the use of "diffusion" in the shared specification was more consistent with the width limit Roche proposed than any other width limit.
Roche also argued that certain examples in the ‘146 patent show that microelectrodes can have widths greater than 100 um, as those examples discuss electrodes with greater width. The district court had noted that those examples were not included in the ‘147 patent, and the parties agreed that the term "electrode" was to be construed the same way for both patents. The district court determined that the examples "must be read in light of the microelectrode definition" in the two patents’ shared specification. The Court of Appeals agreed, finding the examples to be unclaimed embodiments because they include electrodes larger than 100 um.
Finally, Roche cited extrinsic evidence to support the argument that the ordinary meaning of "microelectrode" includes electrodes up to 1,000 um. The court reviewed that evidence, concluded that it did not support Roche’s argument, and thus found the district court did not err in finding it to be unpersuasive.
The case is No. 2015-1356.
Attorneys: Grantland Gilbert Drutchas (McDonnell, Boehnen, Hulbert & Berghoff, LLP) for Roche Diagnostics Operations, Inc., and Corange International Ltd. William C. Rooklidge (Gibson, Dunn & Crutcher LLP) for Lifescan Inc. Bradford J. Badke (Sidley Austin LLP) for Nova Biomedical Corp.
Companies: Corange International Ltd.; Roche Diagnostics Operations, Inc.; Lifescan Inc.; Nova Biomedical Corp.
MainStory: TopStory Patent FedCirNews
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