United States District Court, S.D. California
ORDER ON CLAIM CONSTRUCTION
Janis L. Sammartino United States District Judge
before the Court are Plaintiff Arbmetrics, LLC's
(“Pl.'s Br., ” ECF No. 66) and Defendant
Dexcom, Inc.'s (“Def.'s Br., ” ECF No.
123) Opening Claim Construction Briefs, as well as each
Party's response to the other's Opening Brief
(“Def.'s Resp., ” ECF No. 68;
“Pl.'s Resp., ” ECF No. 69). The parties
dispute the meaning of seven terms claimed by U.S. Patent No.
6, 343, 225 (the “'225 Patent”). The Court
heard oral argument, including tutorials from the Parties, on
October 31, 2019. See ECF No. 77. Having carefully
considered the Parties' arguments, the evidence, and the
law, the Court rules as follows.
determination of infringement involves a two-step analysis.
‘First, the claim must be properly construed to
determine its scope and meaning. Second, the claim as
properly construed must be compared to the accused device or
process.'” Omega Eng'g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1320 (Fed. Cir. 2003) (citing
Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15
F.3d 1573, 1576 (Fed. Cir. 1993)).
first step, commonly known as claim construction, is
presently before the Court. Claim construction is a matter of
law for the Court's determination. Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388 (1996)
(“[J]udges, not juries, are the better suited to find
the acquired meaning of patent terms.”).
of a claim are “generally given their ordinary and
customary meaning.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“[T]he 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 v. AWH Corp.,
415 F.3d 1303, 1313 (Fed. Cir. 2005). Because the inquiry
into the meaning of claim terms is an objective one, “a
court looks to those sources available to the public that
show what a person of skill in the art would have understood
disputed claim language to mean.” Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1116 (Fed. Cir. 2004). “Those sources
include the words of the claims themselves, the remainder of
the specification, the prosecution history, and extrinsic
evidence concerning relevant scientific principles, the
meaning of technical terms, and the state of the
Id. (citing, inter alia,
Vitronics, 90 F.3d at 1582-83).
construction begins with an analysis of the words of the
claims themselves. See Scanner Techs. Corp. v. ICOS
Vision Sys. Corp., 365 F.3d 1299, 1303 (Fed. Cir. 2004)
(holding that claim construction “begins and
ends” with claim's actual words). “In some
cases, the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent even
to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted
meaning of commonly understood words.”
Phillips, 415 F.3d at 1314. The meaning of a claim
term, however, as understood by ordinarily skilled artisans
often is not immediately apparent. Id. In those
situations, the court looks to “sources available to
the public that show what a person of skill in the art would
have understood disputed claim language to mean.”
Id. Or, when a patentee “chooses to be his own
lexicographer and use terms in a manner other than their
ordinary meaning, ” the court can use the
patentee's meaning “as long as the special
definition of the term is clearly stated in the patent
specification or file history.” Vitronics, 90
F.3d at 1582.
examining the claims themselves, “the context in which
a term is used can be highly instructive.”
Phillips, 415 F.3d at 1314. Moreover, “[o]ther
claims of the patent in question, both asserted and
unasserted can . . . be valuable sources of enlightenment as
to the meaning of a claim term.” Id. (citing
Vitronics, 90 F.3d at 1582). “Because claim
terms are normally used consistently throughout the patent,
the usage of a term in one claim can often illuminate the
meaning of the same term in other claims.” Id.
Conversely, under the doctrine of claim differentiation,
“‘different words or phrases used in separate
claims are presumed to indicate that the claims have
different meanings and scope.'” Andersen Corp.
v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir.
2007) (quoting Karlin Tech., Inc. v. Surgical Dynamics,
Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999)).
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 at 1313. “The specification
acts as a dictionary when it expressly defines terms used in
the claims or when it defines them by implication.”
Vitronics, 90 F.3d at 1582. “In addition to
providing contemporaneous technological context for defining
claim terms, the patent applicant may also define a claim
term in the specification ‘in a manner inconsistent
with its ordinary meaning.'” Metabolite Labs.,
Inc. v. Lab. Corp. of Am., 370 F.3d 1354, 1360 (Fed.
Cir. 2004). “Usually, [the specification] is
dispositive; it is the single best guide to the meaning of a
disputed term.” Vitronics, 90 F.3d at 1582;
accord Phillips, 415 F.3d at 1317 (“It is . .
. entirely appropriate for a court, when conducting claim
construction, to rely heavily on the written description for
guidance as to the meaning of the claims.”).
claims should ordinarily be construed to encompass the
preferred embodiments described in the specification, for
“[a] claim construction that excludes a preferred
embodiment . . . ‘is rarely, if ever,
correct.'” SanDisk Corp. v. Memorex Prods.,
Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005) (quoting
Vitronics, 90 F.3d at 1583). A court should not,
however, import limitations from the specification into the
claims, Phillips, 415 F.3d at 1323
(“[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly
warned against confining the claims to those
embodiments.”), absent a specific reference in the
claims themselves. Reinshaw PLC v. Marposs Societa'
per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998)
(“[A] party wishing to use statements in the written
description to confine or otherwise affect a patent's
scope must, at the very least, point to a term or terms in
the claim with which to draw in those statements.”).
patent's prosecution history, if in evidence, may also
shed light on claim construction. Vitronics, 90 F.3d
at 1582. “This history contains the complete record of
all proceedings before the Patent and Trademark Office
[(“PTO”)], including any express representations
made by the applicant regarding scope of the claims.”
Id. “Like the specification, the prosecution
history provides evidence of how the PTO and the inventor
understood the patent.” Phillips, 415 F.3d at
1317. Although the prosecution history “often lacks the
clarity of the specification, ” it is nevertheless
useful to show “how the inventor understood the
invention and whether the inventor limited the invention in
the course of prosecution, making the claim scope narrower
than it would otherwise be.” Id.
most situations, an analysis of the intrinsic evidence alone
will resolve any ambiguity in a disputed claim term. In such
circumstances, it is improper to rely on extrinsic
evidence.” Vitronics, 90 F.3d at 1583. Thus,
expert testimony on the proper construction of disputed claim
terms “may only be relied upon if the patent documents,
taken as a whole, are insufficient to enable the court to
construe disputed claim terms.” Vitronics, 90
F.3d at 1585. But, Vitronics does not state a rule
of admissibility, nor does it “prohibit courts from
examining extrinsic evidence, even where the patent document
is itself clear.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir.
1999). As the Federal Circuit has made clear:
[B]ecause extrinsic evidence can help educate the court
regarding the field of the invention and can help the court
determine what a person of ordinary skill in the art would
understand claim terms to mean, it is permissible for the
district court in its sound discretion to admit and use such
Phillips, 415 F.3d at 1319; accord Key Pharms.
v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir.
1998) (“[T]rial courts generally can hear expert
testimony for background and education on the technology
implicated by the presented claim construction issues, and
trial courts have broad discretion in this regard.”).
The court is not “barred from considering any
particular sources or required to analyze sources in any
specific sequence, as long as those sources are not used to
contradict claim meaning that is unambiguous in light of the
intrinsic evidence.” Phillips, 415 F.3d at
1324 (emphasis added); see also Biagro W. Sales, Inc. v.
Grow More, Inc., 423 F.3d 1296, 1302 (Fed. Cir. 2005)
(“Extrinsic evidence, such as expert testimony, may be
useful in claim construction, but it should be considered in
the context of the intrinsic evidence.”).
parties dispute the meaning of seven claim terms in the
'225 Patent. A brief description of the '225 patent
is provided below, followed by an analysis of the claim
The '225 Patent
'225 Patent is directed to the creation of an implantable
glucose sensor for use by patients with diabetes. The glucose
sensor measures the amount of glucose present in the blood
through an electrochemical reaction. The reaction is sparked
by an enzyme that causes glucose to react with oxygen, the
end product of the reaction being hydrogen peroxide. The
amount of hydrogen peroxide created by the reaction is a
direct measure of the glucose concentration in the sample.
The hydrogen peroxide is then oxidized back to oxygen, which
transfers electrons to an electrode, creating an electric
current that can be measured. The electric current measured
is directly proportional to the glucose concentration in the
problem found in many implantable glucose monitors is the
high glucose-to-oxygen ratios often found in human tissue.
This ratio creates problems because a surplus of glucose and
a shortage of oxygen will lead to a limited number of
reactions with the enzyme, which lowers the electric current
produced and results in inaccurate readings. To solve this
problem, the present invention attempts to increase the
amount of oxygen that reaches the enzyme. To do this, the
invention teaches to create an enzyme emulsion to spark the
reaction described above. The emulsion is comprised of, among
other things, a substance in which oxygen is extremely
soluble. The oxygen soluble substance increases the oxygen
available to the enzyme by creating oxygen reservoirs, from
which the enzyme can pull to continue the chemical reactions.
disputed terms are found in Claims 1 and 5 of the '225
Patent. Claim 1 describes the present invention as follows:
An implantable sensor for sensing a concentration of an
organic substrate, the sensor comprising:
a conductive electrode; and
a stabilized enzyme emulsion in contact with the electrode,
the enzyme emulsion comprising:
an oxidase enzyme that quantitatively oxidizes the organic
substrate; a water immiscible oxygen dissolving substance
emulsified into intimate contact with the enzyme to provide
a protein crosslinking agent to crosslink and insolubilize
the enzyme forming a stabilized gel comprising crosslinked
protein and particles ...