Blog January 17, 2023
Biosimilars 2022 Year in Review
This post is a part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders.
Palomar Techs., Inc. v. MRSI Sys., LLC, 18-10236-FDS (D. Mass. May 16, 2019) (Saylor, J.)
Memorandum and Order on Claim Construction
Plaintiff Palomar Technologies, Inc. ("Palomar") alleges that defendant MRSI Systems, LLC ("MRSI") infringes U.S. Patent No. 6,776,327 (the "'327 patent"). The '327 patent is directed to an automated placement method for attaching two workpieces, a technique useful in the production of many electronic applications, dies, and small semiconductor devices. The parties' dispute concerns the construction of several claim terms. Two terms are of particular interest, as the Court rejected both parties' proposed constructions for both terms.
"target intermediate location" (Claims 1, 4, 19, 22, 24)
Palomar sought to construe "target intermediate location" as the "desired intermediate location for placing the first workpiece." MRSI, on the other hand, based its construction on dependent claim 4, which recites "[t]he method of Claim 1 wherein said first workpiece is displaced from said origination location to said actual intermediate location with reference to a first place path determined by referencing said target intermediate location." In MRSI's view, "target intermediate location" means a "predetermined location, different from the origination location, upon which the first place path is based."
Turning first to MRSI's construction, the Court looked to the specification and noted that the "first place path" is based upon both the target intermediate location and the origination location. Then, the Court applied the doctrine of claim differentiation, which provides that a dependent claim that adds a particular limitation raises a presumption that the added limitation is not found in the independent claim. Here, claim 4 depended from claim 1, and claim 4 included the limitation of "a first place path." Thus, the Court found that "target intermediate location" in claim 1 should not be read, as MRSI suggested, to include the limitation of a "first place path."
The Court turned to the disputed term and observed that the key word in the term was "target." While Palomar used the term "desired" location and MRSI used the term "predetermined" location to describe the target location, neither of those terms were used in the claims or the specification. Finding both concepts of "desired" and "predetermined" inherent in the word "target" and that an "intermediate" location is neither the "original" nor the "final" location, the Court ultimately determined that construction was not necessary.
"actual attach location" (Claims 1, 2, 3, 14, 19, 20, 22, 23, 24)
Palomar asserted that "actual attach location" means "the location on the second workpiece where the first workpiece is actually placed and attached," and MRSI argued that the term means the "calculated location on the second workpiece where the first workpiece is physically attached."
As to Palomar's proposed construction, the Court rejected the unnecessary word "placed," reasoning that in the context of the claim, "attach" standing alone was sufficiently clear. Regarding MRSI's construction, the Court rejected MRSI's addition of "calculated" and "physically" as improper attempts to import limitations that were neither stated nor suggested by the claims or the specification. Ultimately, the Court construed "actual attach location" as "the location on the second workpiece where the first workpiece is actually attached."
Abiomed, Inc. v. Maquet Cardiovascular LLC, 16-10914-FDS (D. Mass. May 22, 2019) (Saylor, J.)
Memorandum and Order on Motion for Reconsideration and/or Clarification of Order on Claim Construction
Abiomed sued Maquet seeking declaratory judgment of non-infringement and invalidity of U.S. Patent Nos. 7,022,100; 8,888,728; 9,327,068; 9,545,468; 9,561,314; and 9,597,437, which all belong to the same patent family, descending from provisional application No. 60/152,249, and generally relate to systems for intravascular blood pumps. Maquet counterclaimed for infringement of the same patents.
During claim construction, the Court construed "passing purge fluid" in line with Abiomed's narrower proposed construction, after concluding that Maquet's statements during IPR directly contradicted statements in the specification. In IPR proceedings related to the '728 patent, Maquet stated in its discussion of a prior art reference that "running purge fluid through…bearings and into the bloodstream…is a bad idea." This disparaging statement, the Court found, directly conflicted with the specification, which contemplated passing purge fluid through bearing assemblies and into the bloodstream. Given this direct conflict, the Court viewed Maquet's statement as a disclaimer and adopted Abiomed's proposed construction.
Following the Court's claim construction order, Maquet filed a motion seeking reconsideration and/or clarification, asserting that Abiomed did not present the entire section of Maquet's IPR brief from which the relevant statement was taken, and that the Court erred by failing to consider its statement in the context of the entire IPR proceeding. According to Maquet, if the entire section had been submitted, its statement would not have been understood as broadly disparaging systems that contemplate passing purge fluid through any part of any bearing assemblies.
The Court rejected Maquet's argument, observing that "the section in question is very brief," and emphasized that Maquet's disparaging statement "was not limited in any way, either expressly or implicitly, by context or otherwise." It further observed that "Maquet perhaps could have made a narrow or technical argument, but it elected not to." Accordingly, the Court denied Maquet's motion for reconsideration and/or clarification of the order on claim construction.
In its motion, Maquet further argued that any disclaimer arising from the IPR proceeding for the '728 patent should only apply to that patent, and not the remaining patents-in-suit. Given that disclaimers apply across all claims of related patents, the Court also denied Maquet's additional request.
Author: Philip Chen, Matthew Berntsen, Meaghan Annett
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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