Mbo Laboratories v. Becton, Dickinson and Co., No. CIV.A.03-10038 RCL.

Citation385 F.Supp.2d 88
Decision Date06 September 2005
Docket NumberNo. CIV.A.03-10038 RCL.
PartiesMBO LABORATORIES, INC., Plaintiff, v. BECTON, DICKINSON AND COMPANY, Defendant.
CourtUnited States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts

Kevin M. Bell, Patton Boggs LLP, McLean, VA, for Becton, Dickinson & Company, Defendant.

James S. Bolan, Brecher, Wyner, Simons & Bolan, LLP, Newton, for Fish & Richardson, Interested Party.

Scott A.M. Chambers, Patton Boggs LLP, McLean, VA, for Becton, Dickinson & Company, Defendant.

Maria R. Durant, Dwyer & Collora, LLP, Federal Reserve Bank, Boston, for Becton, Dickinson & Company, Defendant.

William H. Kettlewell, Dwyer & Collora, LLP, Boston, for Becton, Dickinson & Company, Defendant.

Marc R. Labgold, Patton Boggs LLP, McLean, VA, for Becton, Dickinson & Company, Defendant.

James K. Lewis, Patton Boggs LLP, Denver, CO, for Becton, Dickinson & Company, Defendant.

Kevin M. Littman, Fish & Richardson, PC, Boston, for MBO Laboratories Inc, Plaintiff.

Laura D. Nammo, Patton Boggs LLP, McLean, VA, for Becton, Dickinson & Company, Defendant.

David A. Simons, Foley & Lardner, LLP, Washington, DC, for MBO Laboratories Inc, Plaintiff.

John M. Skenyon, Fish & Richardson, PC, Boston, for MBO Laboratories Inc, Plaintiff.

Samuel Waxman, Patton Boggs LLP, McLean, VA, for Becton, Dickinson & Company, Defendant.

Michael E. Zeliger, Fish & Richardson, PC, Boston, for MBO Laboratories Inc, Plaintiff.

MEMORANDUM ON CONSTRUCTION OF CLAIMS

LINDSAY, District Judge.

This is a patent infringement action in which the plaintiff, a closely held Massachusetts corporation called MBO Laboratories, Inc. ("MBO"), alleges that the defendant, Becton, Dickinson and Company ("Becton"), a company that manufactures and sells medical devices, infringed MBO's United States Patent No. RE. 36,885 ("the '885 patent"). The '885 patent relates to a safety needle and blood collection and sampling system that is designed to reduce the risk of injury caused to healthcare workers by needlesticks from contaminated needles. MBO claims that Becton's SafetyGlide ™ shielding hypodermic needle infringes claims 13, 19, 20, 27, 28, 32, and 33 of the '885 patent. Both parties briefed their respective views as to the construction of the claims at issue and presented argument at a Markman hearing on July 20, 2005.

Discussion
1. The applicable legal standards
A. Patent infringement analysis — general points

There are two steps to a patent infringement analysis. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). First, the meaning and scope of the patent claims alleged to have been infringed must be determined. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). This step is commonly referred to as "claim construction." Second, the accused device must be compared to the properly construed claims to determine whether the device infringes the patent. Cybor Corp., 138 F.3d at 1454. While the second step presents a question of fact for the fact-finder, the first step is a question of law for the court. Markman, 517 U.S. at 372, 116 S.Ct. 1384 (holding that "the construction of a patent, including terms of art within its claims, is exclusively within the province of the court"). It is this first step, claim construction, that is the subject of this memorandum.

The Supreme Court has emphasized that the purpose of patent claims is to apprise the public of what is protected by a particular patent. Markman, 517 U.S. at 373, 116 S.Ct. 1384 (noting that "[i]t has long been understood that a patent must describe the exact scope of an invention and its manufacture to `secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them'" (quoting McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891))); Phillips v. AWH Corp., 415 F.3d 1303, 2005 WL 1620331, at *4 (Fed.Cir. July 12, 2005) (emphasizing that "it is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled'" [citation omitted]); see also Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.Cir.1989) (stating that "[a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using, or selling the protected invention"). While the construction of the claims of a patent is closely akin to construing other written documents, like contracts or statutes, special considerations apply to patent claim construction, based upon the need for the public, and other inventors, to understand as clearly as possible the scope of a patentee's claimed invention. Therefore, in construing the claims of a patent, a court must first look to matters in the public record. Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.Cir.1999) (emphasizing that "the language of the claims, the specification and the prosecution history are principally involved in construing patent claims because these constitute the public record") (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)).

The primary sources for guidance in claim construction are the intrinsic sources: the language of the claim; the written description portion of the specification, including any relevant drawings; and the prosecution history. Phillips, 415 F.3d 1303, 2005 WL 1620331, at *6; Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1414 (Fed.Cir.2000); see Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324-25 (Fed.Cir.2002) (interpreting the claim terms in light of the intrinsic evidence and explaining that "[t]he intrinsic evidence may provide context and clarification about the meaning of claim terms"); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed.Cir.1996) (noting that "intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language"; emphasizing that allowing the public record to be altered or changed by extrinsic evidence introduced at trial, such as expert testimony, would make the right of the public to be on notice of the patent's limitations meaningless); see also Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed.Cir.1999) (stating that "[d]etermining the limits of a patent claim requires understanding its terms in the context in which they were used by the inventor, considered by the examiner, and understood in the field of the invention").

(1) The words of the claim

In construing the claims of a patent, the court's initial resort is to the words of the claim itself. Teleflex, 299 F.3d at 1324 (beginning claim construction analysis "as always, with the words of the claim"); Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir.1995) (noting that "resort must be had in the first instance to the words of the claim" (quoting Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984))). The court "must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms." Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999). The "ordinary and customary" meaning of a claim term 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, i.e., as of the effective filing date of the patent application." Phillips, 415 F.3d 1303, 1312; Teleflex, 299 F.3d at 1325 (explaining that the court must presume that claim terms carry their ordinary meaning, as understood by someone of ordinary skill in the art of which the invention is a part).

It is important to note that "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." Phillips, 415 F.3d 1303, 1313; see Medrad, Inc. v. MRI Devices, Corp., 401 F.3d 1313, 1319 (Fed.Cir.2005) (explaining that the court "cannot look at the ordinary meaning of the [disputed claim] term ... in a vacuum," but must, instead, "look at the ordinary meaning [of the term] in the context of the written description and the prosecution history"); Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341, 1351 (Fed.Cir.2004) (noting that the proper definition of a disputed claim term is the "definition that one of ordinary skill in the art could ascertain from the intrinsic evidence in the record"). Thus, the construing court should look at "the context in which a [claim] term is used in the asserted claim." Phillips, 415 F.3d at 1314 (explaining that the context "can be highly instructive"). "Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term." Id. (citing Vitronics, 90 F.3d at 1582). Because patentees normally use claim terms "consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims." Phillips, 415 F.3d at 1314 (citing Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.Cir.2001)). Likewise, differences among claims can guide the court in "understanding the meaning of particular claim terms." Phillips, 415 F.3d at 1314.

Furthermore, plain English words are entitled to their plain English meaning, In re Wright, 866 F.2d 422, 425 (Fed.Cir.1989), unless it is apparent from the patent specification and the prosecution history that the inventor used a term with a different meaning, Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed.Cir.1996). In short, while terms used in a patent generally...

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