United States District Court, E.D. Virginia, Norfolk Division
SUPPLEMENTAL 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. On April 30,
2019, this Court entered an Opinion and Order explaining its
construction of those eight (8) terms. Doc. 274.
Court has decided that it will CONSTRUE term
(10) as described below. The Court will continue to take term
(9) UNDER ADVISEMENT to continue its
consideration of the matter. However, as the parties are in
the process of narrowing their claims, this Court hereby
issues this Supplemental Opinion and Order on Term (9) to
assist in their process.
Factual Background & Procedural History
facts and procedural posture of this case have been
summarized in this Court's previous Opinions, including
its Claim Construction Opinion & Order, doc. 274.
Accordingly, this Court will not repeat its recitation of the
background of this case.
LEGAL PRINCIPLES OF CORRECTING ERRORS IN CLAIM
district court may correct obvious errors in a patent claim.
CBT Flint Partners. LLC v. Return Path. Inc.. 654
F.3d 1353, 1358 (Fed. Cir. 2011). Generally, a court should
only make corrections where: "(1) the correction is not
subject to reasonable debate based on the consideration of
the claim language and the specification and (2) the
prosecution history does not suggest a different
interpretation of the claims." Id. The Federal
Circuit has held that a court should not make corrections to
claim language if the corrections are "substantively
significan[t]" or require guesswork as to the
patentee's intent. NOVO Industries. LP v. Micro Molds
Corp.. 350 F.3d 1348, 1358 (Fed. Cir. 2003): see
also CBT Flint. 654 F.3d at 1358. If a court finds that
there are multiple reasonable alternatives, the district
court should consider those alternatives from the
POSITA's point of view to determine whether the
correction is appropriate. CBT Flint. 354 F.3d at
1358 (holding that whether to add "and" between
"defect analyze" was obvious to a POSIT A and the
district court should have made that correction).
following table lists the remaining disputed terms, each
parties' proposed construction and the relevant patents
and claims to each disputed term.
"a desaturase [an exogenous desaturase] which
desaturates an acyl-CoA Substrate."
term appears in asserted claims 1, 6, and 7 of the '250
patent. The term also appears in claims 1 and 7 of the
'579 patent and claims 4, 5, 10, 19, and 31-34 of the
'330 patent. The Court ORDERED further
briefing on this term and took its construction UNDER
ADVISEMENT. The dispute on this term is particularly
important, whether the identified patents are limited to a
vertebrate desaturase or cover desaturases regardless of
their origin. Accordingly, the Court will continue to review
the existing briefing and the arguments of counsel and the
evidence in the record.
Court CONTINUES its consideration of this
term. When the Court construes the term, if construction is
necessary, the Court will ...