Exergen Corp. v. Kids-Med, Inc.
| Decision Date | 23 May 2016 |
| Docket Number | CIVIL ACTION NO. 08-cv-11416-DPW |
| Citation | 189 F.Supp.3d 237 |
| Parties | Exergen Corporation, Plaintiff, v. Kids-Med, Inc., American Scientific Resources, Inc., and Tecnimed, S.R.L., Defendants. |
| Court | U.S. District Court — District of Massachusetts |
Kerry L. Timbers, Jakub M. Michna, Robert M. Asher, Sunstein Kann Murphy & Timbers LLP, Boston, MA, for Plaintiff.
Anthony L. Miele, Hayes, Messina, Gilman & Hayes LLC, Harry L. Manion, III, Lawrence K. Demeo, Timothy J. Fazio, Manion Gaynor & Manning LLP, Boston, MA, Janet P. Sistare, Miele Law Group, Natick, MA, for Defendants.
Kidz-Med, Inc., pro se.
American Scientific Resources, Inc., pro se.
MEMORANDUM AND ORDER REGARDING CLAIM CONSTRUCTION
Plaintiff Exergen brings this patent infringement alleging that Defendant Tecnimed's Thermofocus® non-contact infrared forehead thermometer (the "Thermofocus") infringes Exergen's Ear Thermometer
Patent, U.S. Patent No. 5,012,813 (the " '813 Patent") and its Armpit Thermometer Patents (the " '435 Patent Family").1
Patent infringement litigation "involves a two-step process: the court first determines the meaning of disputed claim terms and then compares the accused device to the claims as construed." Wavetronix LLC v. EIS Elec. Integrated Sys. , 573 F.3d 1343, 1354 (Fed.Cir.2009). This case is at the claim construction stage, and I review the claim terms disputed by the parties accordingly.2
Exergen's patents relate to infrared thermometers that measure body temperature by detecting infrared radiation emitted from a body surface such as the tympanic membrane (eardrum) or axilla (armpit). The temperature measurement of a body surface tends to be lower than the temperature within the body because the surface is exposed to the ambient (air) temperature. By correcting a measured surface temperature to account for the ambient temperature, the thermometer calculates the temperature in accordance with temperature relationship formulas described in the patents.
The original temperature relationship described in the '813 Patent is said to have been improved upon in subsequent patents to give more accurate measurements of internal temperature. The '435 Patent Family involves thermometers that account for changes in the "perfusion rate," i.e. the blood flow per unit area, which affects the transfer of heat from within the body to the surface.
Tecnimed's Thermofocus, by contrast, is a non-contact thermometer that measures temperature from the forehead without touching the skin. Unlike the ear and armpit, which are "enclosed," the forehead is entirely exposed to the environment and therefore requires a special means for compensating for the effects of ambient temperature.
As a "bedrock principle" of patent law, "the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381 F.3d 1111, 1115 (Fed.Cir.2004). A patent claim is "the portion of the patent document that defines the scope of the patentee's rights." Markman v. Westview Instruments, Inc. , 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). "The construction of these claims is a question of law to be determined by a judge." Amesbury Group, Inc. v. Caldwell Mfg. Co. , No. 08–10171–DPW, 2008 WL 5396473, at *2 (D.Mass. Dec. 17, 2008) (citing Markman , 517 U.S. at 384, 390–91, 116 S.Ct. 1384 ).
When evaluating "the words of a claim," the court generally gives these terms "their ordinary and customary meaning," Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed.Cir.1996) ), which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1313 (citing Innova , 381 F.3d at 1116 ). Sometimes, "the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent," in which case claim construction "involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314.
However, when that meaning is "not immediately apparent," the court looks at intrinsic evidence, such as the patent itself, the specification, and the prosecution history, to determine the meaning of the disputed claim term. Id. "Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Vitronics , 90 F.3d at 1582. The claim term is to be read "in the context of the particular claim in which the disputed term appears," as well as "in the context of the entire patent, including the specification." Phillips , 415 F.3d at 1313. The specification, which contains a written description of the invention, is "always highly relevant to the claim construction analysis," usually is "dispositive," and "is the single best guide to the meaning of a disputed term." Vitronics , 90 F.3d at 1582.
Limitations from the specification, however, should not be imported into the claims. Abbott Labs. v. Sandoz, Inc. , 566 F.3d 1282, 1288 (Fed.Cir.2009) (en banc); Acumed LLC v. Stryker Corp. , 483 F.3d 800, 808 (Fed.Cir.2007) (). Similarly, if the specification describes a single embodiment, the broader claim language will not be limited "to that single application unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Sandoz , 566 F.3d at 1288 (internal quotation marks and citations omitted); Phillips , 415 F.3d at 1323 (); Innova , 381 F.3d at 1117 ()
Only if the claim term remains ambiguous after an examination of the intrinsic evidence may the court consider extrinsic evidence to determine the meaning of the claim. Vitronics , 90 F.3d at 1583 ; see Phillips , 415 F.3d at 1317 (). Extrinsic evidence includes testimony by experts and the inventor, dictionaries, and learned treatises. Phillips , 415 F.3d at 1317. While the extrinsic evidence "can shed useful light on the relevant art," it is "less significant than the intrinsic record in determining the legally operative meaning of the claim language." Id. (internal quotations marks and citations omitted).
In their Joint Claim Construction and Prehearing Statement, the parties agreed to avoid co-mingling the terms in the positions on whether a claim requires construction, I will construe each term proposed.
Exergen is the assignee to the construction dispute centers on Claim 7 which describes:
'813 Patent col. 14 ll. 55-63 (emphasis added). The disputed claim terms are italicized above.
Exergen's '813 Patent was the subject of another patent infringement suit before the late Judge Lindsay of this court, who previously construed the patent.
Exergen Corp. v. Wal-mart Stores, Inc. ("Exergen I" ), No. 01–cv–11306–RCL, slip op. at 10 (D.Mass. filed Jul. 14, 2004). After trial on the basis of that construction, the Federal Circuit reversed the jury's finding that the '813 Patent was infringed. Exergen Corp. v. Wal – Mart Stores, Inc. ("Exergen II" ), 575 F.3d 1312 (Fed.Cir.2009).
In the prior action, Judge Lindsay construed the term "internal temperature" in Claim 7 to mean "the temperature of the region existing beneath the surface of the biological tissue targeted for measurement." Exergen I , No. 01–cv–11306–RCL, slip op. at 10. On appeal, the Federal Circuit expressly noted that neither party "challenges the construction of 'internal temperature.' " Exergen II , 575 F.3d at 1321.
Tecnimed adopts Judge Lindsay's construction for the term "internal temperature," but separately construes the term "within the biological tissue" to mean "which temperature is within such biological tissue." Exergen argues that Judge Lindsay's construction of "internal temperature" applies to the larger term "internal temperature within the biological tissue," and that to construe the clause "within the biological tissue" yields "redundant verbiage." Tecnimed invokes the doctrines of collateral estoppel and stare decisis, as well as the inventor's position in the '813 Patent reexamination proceedings, to defend its construction of the disputed '813 Patent claim terms.
Under the doctrine of collateral estoppel, also called issue preclusion, "a judgment on the merits in a first suit precludes relitigation in a second suit...
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