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ACLARA BIOSCIENCES v. CALIPER TECHNOLOGIES CORP.

December 11, 2000

ACLARA BIOSCIENCES, INC., PLAINTIFF,
V.
CALIPER TECHNOLOGIES CORP., DEFENDANT.



The opinion of the court was delivered by: Breyer, U.S. District Judge.

ORDER DENYING SUMMARY JUDGMENT

Now before the Court is the defendant's motion for summary judgment in light of the Federal Circuit's opinion in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed.Cir. 2000) (en banc). Having carefully considered the parties' papers and with the benefit of oral argument on December 7, 2000, the defendant's motion is hereby DENIED.

BACKGROUND

The plaintiff ACLARA BioSciences, Inc. ("ACLARA") brought the present suit for infringement of U.S.Patent No. 5,750,015 ("the '015 patent") against the defendant Caliper Technologies Corp. ("Caliper"). The Court has described the technology claimed by the '015 patent in some detail in previous orders, see, e.g., Claim Construction Order ("Markman Order"), July 17, 2000; Order Regarding Summary Judgment ("Summary Judgment Order"), Oct. 27, 2000, and will only review the invention here briefly to the extent necessary to decide the present motion.

As a result of this Court's earlier orders, ACLARA is now asserting only Claim 1 of the '015 patent. That claim reads as follows:

A device for moving charged particles through a medium employing an electric field, said device comprising: an electrically non-conductive solid support having an upper surface;
a main trench in said solid support extending downward from said upper surface;
a plurality of branch trenches connected to said main trench for moving charged particles into and out of said main trench; and
a plurality of electrodes positioned to be in electrical contact with a medium when present in said trenches.

In its Markman Order and its Summary Judgment Order, the Court interpreted the phrase "a plurality of electrodes positioned to be in electrical contact with a medium when present in said trenches" to require the placement of electrodes along the medium at intermediate points, and not just at either end of the trench. See Summary Judgment Order at 10 (citing the Markman Order). In the Court's view, such a configuration was consistent with the '015 patent's specification, which indicated that the location of the electrodes was designed to create moving waves achieved by the application of between five and over one thousand electric fields along the length of the trench. See id.

As a result, the Court determined that Caliper's devices could not literally infringe the '015 patent as a matter of law since no reasonable jury could conclude that the claim read on Caliper's products. See id. at 11.*fn1 The only way that ACLARA can establish infringement of its patent, therefore, is if it can show that Caliper's devices infringe the "plurality of electrodes" limitation*fn2 under the doctrine of equivalents.

During the course of prosecuting the '015 patent, ACLARA*fn3 amended the "plurality of electrodes" phrase for a purpose related to patentability. Claim 1 originally read: "a plurality of electrodes positioned to be operatively connected to said trenches for moving said charged particles in said trenches." Caliper Brief, Dec. 4, 2000, at 2; see id., Ex. A, at PTO 353 (containing the original application). The U.S.Patent and Trademark Office ("PTO") examiner rejected the claim on the grounds that it was either anticipated or obvious in light of a 1983 patent issued to Batchelder ("the Batchelder reference"). See id., Ex. B, at PTO 366 (containing the PTO's rejection).

ACLARA distinguished the Batehelder reference in two ways. First, it argued that the Batchelder reference was limited to dielectrophoresis, or the movement of neutral particles, whereas ACLARA's application was directed to the movement of charged particles, thereby necessarily excluding dielectrophoresis. Second, ACLARA observed that the Batchelder reference taught insulating the electrodes from the medium rather than placing the electrodes in direct electrical contact with the medium. See id., Ex. C, at PTO 383-85.

ACLARA accordingly narrowed the "plurality of electrodes" clause to indicate that the electrodes should not be insulated from the medium but should instead be in direct electrical contact. Thus, comparing the original version of the "plurality of electrodes" phrase with the present version, the amendment read (with common language in normal text, old language in brackets, and new language underlined): "a plurality of electrodes positioned to be [operatively connected to] in electrical contact with a medium when present in said trenches [for moving said charged particles in said trenches]." Id., Ex. C, at PTO 371. The effect of that amendment after Festo is the central issue in this summary judgment motion.

DISCUSSION

At a claim construction hearing in a related case between the parties on November 30, 2000, counsel for Caliper notified the Court that it intended to move for summary judgment in the present dispute in light of the Federal Circuit's recent (then one day old) opinion in Festo. Facing a start date for the infringement trial of December 6, 2000, the Court decided to postpone the trial to entertain Caliper's Festo motion.

In Festo, the Federal Circuit significantly limited the scope of the doctrine of equivalents when a patentee has amended his claims for a reason related to patentability. If — as Caliper argues — Festo has eliminated ACLARA's ability to show infringement under the doctrine of equivalents as to the "plurality of electrodes" clause due to claim amendments during prosecution of the '015 patent, ACLARA cannot show infringement at all and Caliper is entitled to summary judgment, making a trial unnecessary. ACLARA counters that Festo is inapplicable since ACLARA's amendment was related to the use of insulation and did not affect the configuration of electrodes under Claim 1.

I. THE FEDERAL CIRCUIT'S RULING IN FESTO

In Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997), the U.S. Supreme Court held that prosecution history estoppel applies to a claim amendment when the amendment was made for "a substantial reason related to patentability." Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040. In light of that decision, the Federal Circuit asked the parties in Festo to brief five "en banc questions" clarifying the extent to which a claim amendment ...


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