Llp v. Carefusion 303 Inc.

• Decision Date: 28 December 2010
• Docket Number: No. 2:08–cv–259–GZS.,2:08–cv–259–GZS.
• Citation: 744 F.Supp.2d 381
• Parties: ERGO LICENSING LLP, et al., Plaintiffs,v.CAREFUSION 303, INC., Defendant.CareFusion 303, Inc., Counterclaimant,v.Ergo Licensing LLP, Counterdefendant.
• Court: U.S. District Court — District of Maine

744 F.Supp.2d 381

ERGO LICENSING LLP, et al., Plaintiffs,

v.CAREFUSION 303, INC., Defendant.CareFusion 303, Inc., Counterclaimant,

v.Ergo Licensing LLP, Counterdefendant.

No. 2:08–cv–259–GZS.

United States District Court, D. Maine.

Dec. 28, 2010.

James G. Goggin, Seth W. Brewster, Elizabeth M. Frankel, Peter S. Black, Timothy R. Shannon, Verrill Dana LLP, Portland, ME, Sara Elizabeth Hirshon, Verrill Dana, LLP, Boston, MA, for Plaintiff.Randall Kay, Jones Day, San Diego, CA, Erica Pascal, Kathryn Riley, DLA Piper LLP, San Diego, CA, Marc Belloli, William Goldman, DLA Piper LLP, East Palo Alto, CA, William D. Hagedorn, Gregory Paul Hansel, Randall B. Weill, Preti, Flaherty LLP Portland, ME, for Defendants.

ORDER ON CLAIMS CONSTRUCTION

GEORGE Z. SINGAL, District Judge.

Defendant CareFusion 303, Inc. (“Defendant” or “Carefusion”) manufactures and sells infusion systems, which are medical devices used to deliver intravenous fluids to patients in controlled amounts. Plaintiffs Ergo Licensing, LLC and Dr. Uvo Holscher (together, “Plaintiffs” or “Ergo”) claim that Carefusion's infusion systems infringe on United States Patent No. 5,507,412 (“the '412 Patent”).

As a result of various agreements by the parties, the Court currently has before it the following terms for construction: (1) “set” (Claims 1 & 18), (2) “adjusting means” (Claims 1 & 18), (3) “programmable control means/control means” (Claims 1 & 18), (4) “data input means” (Claim 1 & 18), and (5) “flow measuring means” (Claim 10). ( See Aug. 3, 2010 Order Setting Hearing (Docket # 184) & Stipulation Regarding Claims (Docket # 196).)

The parties each filed an opening claims construction brief (Docket # s 137 & 139). Each side also filed a responsive claims construction brief. (Docket # s 151 & 153). The Court held a Markman hearing on October 4, 2010.

I. The Claims

The '412 Patent contains twenty claims only three of which are explicitly at issue for purposes of the pending claims construction. The Court begins by laying out those three claims with each instance of the disputed terms highlighted:

Claim 1

Multichannel metering system for metering preselected fluid flows comprising:

a plurality individual fluid flow sources;

a plurality of discharge lines, each line of said discharge lines being connected to a corresponding one of said fluid sources;

adjusting means associated with said fluid flow sources for acting on said fluid flow sources to influence fluid flow of said fluid flow sources;

programmable control means coupled with adjusting means for controlling said adjusting means, said programmable control means having data fields describing metering properties of individual fluid flows;

an operating surface connected to said control means;

data input means for input of data into said control means, said data input means being at least partially connected to said operating surface;

data output means for output of data from said control means, said data output means being connected to said operating surface;

selector switch means forming a part of said data input means, said selector switch means including a plurality of selector switches, each selector switch being associated with a set of fluid flow sources for representing segments of data fields belonging to a corresponding set of fluid flow sources on said operating surface, said each selector switch functionally connecting said data input means with said data fields belonging to said associated set of fluid flow sources.

Claim 10

Metering system according to claim 1, further compromising flow-measuring means for determining fluid flow being metered into said discharge lines, said flow measuring means being in functional connection with said programmable control means.

Claim 18

Multichannel metering system for metering preselected fluid flows, comprising: a plurality of individual fluid flow sources divided into a plurality of sets; a plurality of discharge lines, each line of said discharge lines being connected to a corresponding one of said fluid flow sources;

adjusting means associated with said fluid flow sources for acting on said fluid flow sources to influence fluid flow of said fluid flow sources;

control means coupled with said adjusting means for controlling said adjusting means, said control means having data fields describing said fluid flow sources and metering parameters of said individual fluid flows, said control means including a meter management mode for editing and regulating metering parameters;

an operating surface connected to said operating means;

data input means for input of data into said control means, said data input means being at least partially connected to said operating surface;

data output means for output of data from said control means, said data output means being connected to said operating surface;

a plurality of selector switch means, each of said selector switch means being associated with one of said plurality of sets of said fluid flow sources, said each selector switch means placing said control means in said meter management mode for said associated set of fluid flow sources.

('412 Patent at 8:19–10:47 (emphasis added).)

II. DISCUSSIONA. “Set”/“Sets”

The term “set” appears multiple times in Claim 1 and Claim 18 (where the term appears in singular and plural form). In both of these independent claims, the term “set” appears as part of the phrase “set of fluid flow sources.” Ergo contends that in this context “set” means “one or more.” Carefusion contends that set means “collection” or “two or more.” In short, this Court is asked to determine whether the term “set” can ever mean just one in the context of the '412 Patent. More specifically, whether a “set of fluid flow sources,” as used in Claims 1 and 18, encompasses just one fluid flow source.

The Court begins its construction by considering the “ordinary and customary” meaning of “set” to a “person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed.Cir.2005). “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. at 1313. At oral argument, Carefusion advocated for the ordinary and customary construction of “set” in part by arguing that ordinary references to a set of towels, a set of golf clubs or a set of keys would not be construed to mean a single towel, a single club or a single key. Absent any suggestion that a person of ordinary skill in the art ¹ would subscribe to a different specialized definition of “set,” these examples undoubtedly establish that “set” ordinarily refers to a collection, that is, two or more, when it precedes and describes a plural noun. Thus, a person of skill in the art would construe the plain use of “set” in Claims 1 and 18 to mean “two or more.”

However, the Court's inquiry does not end here. For, the customary “two or more” construction becomes problematic once a person skilled in the art considers dependent Claims 16 and 19. Dependent Claim 16 reads, in relevant part:

A system in accordance with claim 1, wherein: said set associated with said each selector switch contains only one of said fluid flow sources.

('412 Patent at 9:41–43 (emphasis added).) Claim 19 reads in relevant part:

A system in accordance with claim 18, wherein: each of said associated sets of fluid flow sources contain only one fluid flow.

('412 Patent at 10:49–51 (emphasis added).) In short, Claims 16 and 19 explicitly contemplate sets that contain “only one” fluid flow source. Thus, these dependent claims suggest that the patentees of the '412 Patent acted as their own lexicographers using the term “set” to encompass both the customary definition of “two or more” as well as “only one.” See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002) (“[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.”)

Notably, these dependent claims were added to the '412 Patent after the initial patent application was rejected. In the initial application, the term “set” was not used at all. Rather, Original Claim 1 claimed that “a selector switch [was to be] associated with each individual fluid flow source or associated with predetermined groups of said fluid flow sources.” (ERGO004837 (Docket # 140–1).²) The examiner rejected Original Claim 1 explaining that the use of “or” “renders the claim indefinite” and that the use of “predetermined groups of said fluid flow sources” “lack[ed] proper antecedent basis.” (ERGO004963.) In response, Claim 1 was amended to its current form, including the term “set” and adding Claims 16 and 19.³

In addition to the support for the “one or more” construction found in dependent claims and the prosecution history, the specification and figures offer further evidence for the “one or more” construction. See DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed.Cir.2008) (citing Northern Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1295 (Fed.Cir.2000)) (noting that “contravening evidence from the specification or prosecution history” may overcome the otherwise “plain and unambiguous claim language”). At the outset, the specification refers to selector switches beings associated with individual fluid flow sources “and/or” groups of fluid flow sources:

This object [of improving a multichannel metering system] is attained in that individual fluid flow sources and/or predetermined groups of fluid flow sources are associated with selector switches ...

('412 Patent at 2:14–16.) In relevant part, the specification later explains:

The manner of association of the selector switches either to individual fluid flow sources or to...