United States District Court, E.D. Virginia, Norfolk Division
CLAIM CONSTRUCTION OPINION AND ORDER
COKE MORGAN, JR. SENIOR UNITED STATES DISTRICT JUDGE.
April 10, 2019, the Court held a hearing for the purpose of
construing ten (10) disputed terms in the patents at issue
and resolving two (2) motions to dismiss and a motion to
compel discovery. At the hearing, the Court resolved the
meanings for eight (8) of these terms and took the
construction of two (2) terms under advisement. The Court
hereby issues this Opinion and Order further detailing the
Court's claim construction. The terms currently under
advisement will be addressed in a forthcoming Opinion and
Factual Background & Procedural History
case is about United States patents on plant seeds which can
formulate certain "long chain" polyunsaturated
Plant Science, LP (collectively with counterclaim-defendant,
BASF Plant Science GMBH, "BASF") is a
self-described "pioneer" in developing plant-based
biotechnology. Am. Compl.¶ 15. Since 1998, BASF has
attempted to create a plant which can make long chain omega-3
polyunsaturated fatty acids ("LC-PUFA"),
docosahexaenoic acid ("DHA") and eicosapentaenoic
acid ("EPA"). Id. In 2011, BASF and Cargill
entered into an agreement to commercialize a canola oil
product that would contain such fatty acids. Id.
¶¶ 16-18. BASF agreed to develop the seeds and
obtain regulatory approval, and Cargill agreed to cultivate,
process, extract, and commercialize the oil product.
Id. ¶ 17. In November of 2017, BASF petitioned
the United States Department of Agriculture for deregulation
of canola seeds rich in the fatty acids. Id. ¶
21. Approval is expected this year. Id.
instant case began on September 19, 2017, when BASF Plant
Science, LP filed a complaint for declaratory judgment
against CSIRO, Grains Research and Development Corporation
("GRDC"), and Nuseed (collectively,
"CSIRO"). Doc. 1. at 1.
filed a motion to dismiss under rules 12(b)(1), (2), and (7)
on December 26, 2017. Doc. 15. CSIRO argued that this Court
lacked declaratory judgment jurisdiction, CSIRO had sovereign
immunity, and without CSIRO this suit could not proceed as it
is a necessary party. Doc. 16. This Court held a hearing on
April 11, 2018. Doc. 41. On April 11, 2018, this Court
GRANTED the motion in part, holding that there were
insufficient facts to show a case or controversy. Doc. 40.
The Court further GRANTED BASF leave to file a new complaint.
Id. The Court took the sovereign immunity issues
UNDER ADVISEMENT. Id. CSIRO later withdrew its
sovereign immunity argument. Doc. 46.
April 20, 2018, BASF filed its Amended Complaint, which
remains effective today. Doc. 43. In the Amended Complaint,
BASF seeks invalidity of the '849 patent, the '226
patent, the'572 patent, the'377 patent, the'432
patent, and the'410 patent. Am. Comp. ¶¶
183-274. On April 30, 2018, CSIRO filed a motion to dismiss
similar to its earlier motion. Doc. 45. In its second motion
to dismiss, CSIRO argued that Cargill should be joined, there
was no justiciable case or controversy, and withdrew its
sovereign immunities claim. Doc. 46. While that motion was
pending, CSIRO withdrew it on August 30, 2018. Doc. 54.
answered the Amended Complaint on August 31, 2018. Doc. 56.
In its Answer, CSIRO filed sixteen (16) counterclaims for
patent infringement against BASF and joined Cargill as a
counterclaim-defendant. Id. ¶¶ 31-279.
CSIRO also asserted five (5) affirmative defenses, including
lack of subject matter jurisdiction and standing.
Id. ¶¶ 275-279.
answered the counterclaims on September 21, 2018. Doc. 73.
BASF also raised its own counterclaims. BASF counterclaimed
for declaratory judgment that the patents on which CSIRO sues
are invalid. CSIRO answered those counterclaims on October
12, 2018. Doc. 86.
parties agreed that a Markman hearing was necessary.
Doc. 239 at 6. On January 2, 2019, this Court scheduled the
Markman hearing for April 10, 2019, and set the
briefing schedule. Docs. 152, 153.
case concerns the following United States Patents: 7, 642,
346; 7, 807, 849; 7, 834, 250; 8, 106, 226; 8, 288, 572; 8,
575, 377; 8, 853, 432; 9, 458, 410; 9, 963, 723; 9, 926, 579;
9, 951, 357; 9, 970, 033; 9, 994, 880; 9, 994, 792; 9, 969,
954; 9, 932, 541; and 10, 125, 084.
purpose of a Markman hearing is to assist the Court
in construing the meaning of the patent(s) at issue.
Markman v. Westview Instruments. Inc., 517 U.S. 370,
371 (1996); Markman v. Westview Instruments. Inc.,
52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S.
370 (1996). Patents consist of "claims," and the
construction of those claims "is a question of law, to
be determined by the court." Markman, 517 U.S.
at 371: Markman, 52 F.3d at 970-71.
LEGAL PRINCIPLES OF CLAIM CONSTRUCTION
need only construe claims "that are in controversy, and
only to the extent necessary to resolve the
controversy." Vivid Techs.. Inc. v. Am. Science
Eng'g. Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(citations omitted). To be clear, "[c]laim construction
is a matter of resolution of disputed meanings and technical
scope, to clarify and when necessary to explain what the
patentee covered by the claims, for use in the determination
of infringement. It is not an obligatory exercise in
redundancy." NTP, Inc. v. Research in Motion,
Ltd., 418 F.3d 1282, 1311 (Fed. Cir. 2005) (citing
U.S. Surgical Corp. v. Ethicon. Inc., 103 F.3d 1554,
1568 (Fed. Cir. 1997)).
construction begins with the words of the claims.
Vitronics Corp. v. Conceptromc, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996) ("First, we look to the words of
the claims themselves . . . ."). Words in a claim are
generally given their ordinary meaning as understood by a
person of ordinary skill in the art (a "POSITA").
Id. This "person of ordinary skill in the art
is deemed to read the claim term not only in the particular
claim in which the disputed term appears but also in the
context of the entire patent, including the
specification." Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc). "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 application of the widely accepted meaning
of commonly understood words." Id. at 1314.
Often, however, "determining the ordinary and customary
meaning of the claim requires examination of terms that have
a particular meaning in a field of art. Because the meaning
of a claim term as understood by persons of skill in the art
is often not immediately apparent, and because patentees
frequently use terms idiosyncratically, the court looks to
those sources available to the public that show what a person
of skill in the art would have understood disputed claims
language to mean." Id.
the claims themselves can provide substantial guidance as to
the meaning of particular claim terms. Id. First,
"the context in which a term is used within a claim can
be highly instructive." Id. In addition, other
claims of the patent in question, both asserted and
unasserted, can also be useful because claim terms are
"normally used consistently throughout the patent"
and therefore "can often illuminate the meaning of the
same term in other claims." Id.
claims should not be read alone, however, but rather should
be considered within the context of the specification of
which they are a part. Markman, 52 F.3d at 978. As
the Federal Circuit stated in Vitronics and restated
in Phillips, "the specification is always
highly relevant to the claim construction analysis. Usually,
it is dispositive; it is the single best guide to the meaning
of a disputed term." Phillips, 415 F.3d at
1315. The Court, however, must not read in limitations from
the specification without clear intent to do so. Thorner
v. Sony Comp. Entmt. Am. LLC, 669 F.3d 1362, 1366 (Fed.
Cir. 2012). Furthermore, a patentee is free to be his or her
own lexicographer, and thus if the patentee defines a term in
the specification differently than its ordinary meaning, the
patentee's definition controls. Phillips, 415
F.3d at 1316.
addition to consulting the specification, a court may also
consider the patent's prosecution history, if in
evidence, because it provides information regarding how the
United States Patent and Trademark Office and the inventor
understood the patent. See Id. at 1317. It also
enables the Court to determine if the inventor limited the
invention during the course of prosecution. Id.
"[W]here an applicant whose claim is rejected on
reference to a prior patent... voluntarily restricts himself
by an amendment of his claim to a specific structure, having
thus narrowed his claim in order to obtain a patent, he may
not by construction ... give the claim the larger scope which
it might have had without the amendments." I.T.S.
Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 444
(1926). Thus, consulting prior art reference in the
prosecution history is permissible. Vitronics, 90
F.3d at 1583.
elements of the patent itself-the claims, the specification,
and its prosecution history-constitute intrinsic evidence of
claim construction. In addition to such intrinsic evidence, a
court may consider extrinsic evidence to determine the
meaning of disputed claims. Phillips, 415 F.3d at
1317. Such extrinsic evidence "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 (citing
Markman, 52 F.3d at 980). However, the Court should
not rely on extrinsic evidence when the intrinsic evidence
removes all ambiguity. Vitronics, 90 F.3d at 1583.
extrinsic evidence generally is held as less reliable than
the intrinsic evidence and "is unlikely to result in a
reliable interpretation of patent claim scope unless
considered in the context of intrinsic evidence."
Id. at 1317-18. With respect to expert evidence, for
example, "[c]onclusory, unsupported assertions by
experts as to the definition of a claim term are not useful
to a court.. . [and] a court should discount any expert
testimony that is clearly at odds with the claim construction
mandated by the claims themselves, the written description,
and the prosecution history, in other words, with the written
record of the patent." Id. at 1318.
respect to general usage dictionaries, the Federal Circuit
noted that "[dictionaries or comparable sources are
often useful to assist in understanding the commonly
understood meaning of words and have been used ... in claim
construction," and further noted that "a dictionary
definition has the value of being an unbiased source
'accessible to the public in advance of
litigation.'" Id. at 1322 (citing
Vitronics, 90 F.3d at 1585). However, the Federal
Circuit cautions that (1) "'a general-usage
dictionary cannot overcome art-specific evidence of the
meaning' of a claim term;" that (2) "the use of
the dictionary may extend patent protection beyond what
should properly be afforded by the inventor's
patent;" and that (3) "[t]here is no guarantee that
a term is used in the same way in a treatise as it would be
by the patentee." Phillips, 415 F.3d 1322
(quoting Vanderlande Indus. Nederland BV v. Int'l
Trade Comm'n, 366 F.3d 1311, 1321 (Fed. Cir.
2004)).Indeed, "different dictionary
definitions may contain somewhat different sets of
definitions for the same words. A claim should not rise or
fall based upon the preferences of a particular dictionary
editor, ... uninformed by the specification, to rely on one
dictionary rather than another." Id.
a patent is invalid is a legal question. Enzo Biochem,
Inc. v. Applera Corp., 599 F.3d 1325, 1331 (Fed. Cir.
2010). "[A] patent is invalid for indefiniteness if its
claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the
scope of the invention." Nautilus. Inc. v. Biosig
Instruments, Inc., 134 S.Ct. 2120, 2124 (2014).
'"Because a patent is presumed to be valid, the
evidentiary burden to show facts supporting a conclusion of
invalidity is one of clear and convincing
evidence.'" Enzo Biochem, 599 F.3d at 1331
(quoting Young v. Lumenis, Inc., 492 F.3d 1336, 1344
(Fed. Cir. 2007)).
not the Court's "function to rewrite claims to
preserve their validity." Allen Eng'g Corp. v.
Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed Cir.
2002) (citing Rhine v. Casio, Inc.,183 F.3d 1342,
1345 (Fed. Cir. 1999)). Courts have found claims indefinite
and thus invalid if they cannot discern the scope of a
truncated limitation, for example. See Id. at
1348-49. Additionally, a court may not adopt "a
completely subjective construction of a claim term in order
to find it valid. See Datamize, LLC v. Plumtree Software.
Inc.,417 F.3d 1342, 1350-51 (Fed. Cir. 2005) (abrogated