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Universal Stabilization Technologies Inc. v. Advanced Bionutrition Corp.

United States District Court, S.D. California

April 3, 2018

ADVANCED BIONUTRITION CORP., Defendant. ABN's Construction UST's Construction



         In this correction of inventorship action, the parties seek construction of disputed claim terms found in U.S. Patent No. 8, 097, 245. The parties filed opening claim construction briefs, (Dkt. Nos. 38, 41), and responsive briefs. (Dkt. Nos. 42, 43.) A claim construction hearing was held on November 9, 2017. Based on the parties' brief, oral argument and the applicable law, the Court construes the terms as set forth below.


         Plaintiff Universal Stabilization Technologies, Inc. (“Plaintiff” or “UST”) filed a complaint against Defendant Advanced Bionutrition Corporation (“Defendant” or “ABN”) for correction of inventorship of U.S. Patent No. 8, 907, 245 (“‘245 patent”) pursuant to 35 U.S.C. § 256, unjust enrichment, declaratory relief, and constructive trust and accounting. (Dkt. No. 1, Compl.)

         Dr. Victor Bronshtein (“Dr. Bronshtein”), founder and President of UST, “is a world renowned and recognized expert in the field of preserving biologics including biomacromolecules, bacteria, viruses, and mammalian cells from damage during cryopreservation and preservation in a dry state.” (Id. ¶ 2.) Defendant ABN is designated as the sole owner of the ‘245 patent at the U.S. Patent & Trademark Office. (Id. ¶ 3.)

         According to the complaint, in 2004, ABN hired UST to assist and disclose information to it related to a project concerning the preservation of probiotic bacteria. (Id. ¶ 7.) Dr. Bronshtein met with ABN and disclosed, in confidence, UST's previously developed know-how that became the claimed subject matter of the ‘254 patent. (Id.) On January 17, 2012, the ‘245 patent, concerning the “subject matter of preserving probiotic material, ” issued and identified Mordechi Harei and Keren Kohavi-Beck as the alleged inventors of the compositions and the processes claimed in the ‘245 patent. (Id. ¶ 8.) The complaint alleges that Dr. Bronshtein is the inventor of the claimed processes of the ‘245 patent and the subject matter of the ‘245 patent reflects inventions known and conceived by him and disclosed by him to ABN. (Id. ¶ 9.) The complaint claims that Dr. Bronshtein was incorrectly not named as the sole inventor of the claimed subject matter of the ‘245 patent, or in the alternative, incorrectly not named as a co-inventor of the subject matter of the ‘245 patent. (Id. ¶ 13.)


         A. Legal Standard

         Due to the presumption that patents are presumed valid under 35 U.S.C. § 282, it follows that there is a presumption that the named inventors on a patent are the true and only inventors. Gemstar-TV Guide Int'l Inc. v. Int'l Trade Comm'n, 383 F.3d 1352, 1381 (Fed. Cir. 2004). If there is more than one inventor, all inventors must jointly apply for a patent even if they did not work together, physically or at the same time. Id. (citing 35 U.S.C. § 116). “Because co-inventors need not contribute to the subject matter of every claim of the patent, inventorship is determined on a claim-by-claim basis.” Id. Therefore, similar to an infringement or invalidity analysis, to determine inventorship, it first requires the construction of each disputed claim to determine the subject matter encompassed. Id. at 1381-82.

         Claim construction is a question of law to be determined by the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996). Generally, claim language is given its “ordinary and customary meaning, ” defined as “the meaning that the term would have 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) (en banc) (citations omitted). In cases where the “ordinary and customary meaning” is clear, claim construction involves “little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314.

         If the ordinary meaning of a claim language is not readily apparent, it “is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record. . . .” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Intrinsic evidence includes the language of the claim, the patent specification, and the prosecution history. Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094 (Fed. Cir. 2013) (“a term's ordinary meaning must be considered in the context of all the intrinsic evidence, including the claims, specification, and prosecution history.”)

         In construing a claim, the court first looks to the language of the claims. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). Then, a court must also look at the specification which is “‘always highly relevant'” and “‘[u]sually [] dispositive; it is the single best guide to the meaning of a disputed term.'” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp., 90 F.3d at 1582). Where the inventor gives a term a special meaning, “the inventor's lexicography governs.” Id. at 1316. Where the inventor specifically disclaims a certain scope in the specification, that disclaimer is similarly dispositive. Id. Lastly, the court may also look at the patent's prosecution history, when it is admitted into evidence, which includes the complete record of proceedings before the USPTO, as well as cited prior art references. Id. at 1317.

         If the intrinsic evidence does not resolve any ambiguity in the claim dispute, the Court may consider extrinsic evidence such as “expert, inventor testimony, dictionaries, and technical treatises and articles.” Vitronics Corp., 90 F.3d at 1584. However, extrinsic evidence is “less significant than the intrinsic record” and “less reliable than the patent and its prosecution history in determining how to read claim terms.” Phillips, 415 F.3d at 1317-18 (internal quotation marks and citation omitted).


         The ‘245 patent is entitled “Delivery Vehicle for Probiotic Bacteria Comprising a Dry Matrix of Polysaccharides, Saccharides and Polyols in a Glass Form and Methods of Making Same.” (Dkt. No. 41-1, Ex. A at 15[1].) The patent was issued on January 17, 2012. Claim 1 of the ‘245 patent provides,

A process for producing a glass matrix comprising a probiotic bacteria, the process comprising:
a) dispersing under heating conditions at least one polysaccharide in water;
b) adding trehalose, a sugar alcohol and a probiotic bacteria to the dispersed polysaccharide to form a slurry, wherein the ratio of trehalose to sugar alcohol is 3:1 to 1:3 and wherein the sugar alcohol is selected from a group consisting of mannitol, glycerol, sorbitol, xylitol, maltitol, lactitol and isomalt;
c) contacting the slurry with a bath comprising Ca ions for a sufficient time to allow cross-linking thereby forming a gel matrix;
d) harvesting the gel matrix and placing the harvested gel matrix in a drier wherein the temperature of the harvested gel matrix is maintained above ...

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