1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 THE REGENTS OF THE UNIVERSITY Case No. 19-cv-07470-WHO OF MICHIGAN, 8 Plaintiff, ORDER ON CLAIM CONSTRUCTION 9 AND MOTION TO STRIKE v. 10 Re: Dkt. Nos. 98, 102 LEICA MICROSYSTEMS INC., 11 Defendant.
12 13 Currently before me are the parties’ disputes over the appropriate construction of three sets 14 of claim terms and plaintiff The Regents of the University of Michigan’s (Michigan’s) motion to 15 strike the testimony of defendant Leica Microsystems, Inc.’s (Leica’s) claim construction expert 16 Wayne Knox. Dkt. No. 102. As discussed below, I construe the first set of terms in Leica’s favor, 17 but reject both sides’ proposed constructions of the second and third set of terms, adopting instead 18 the plain meaning of those terms. Given that ruling, the motion to strike the testimony of Knox is 19 no longer relevant and the motion to strike is DENIED as moot.1 20 DISCUSSION 21 I. CLAIM CONSTRUCTION 22 U.S. Patent No. 7,277,169, titled “Whole Spectrum Fluorescence Detection With Ultrafast 23 White Light Excitation,” relates generally to a fluorescence detection system that can detect 24 multiple fluorescent molecules, called fluorophores, in a sample. The parties dispute the 25 appropriate construction of three sets of claim terms. I address each in turn. 26 1 This matter was initially set for hearing on February 13, 2024. Prior to that hearing, I issued a 27 short order identifying my tentative claim construction opinions and opinion on the motion to A. Preambles of Independent Claims 1, 10, and 19 1
2 Claim Term Michigan’s Proposal Leica’s Proposal “A fluorescence detection Preamble is a limitation. Preamble is limiting. 3 system for testing a Plain and ordinary meaning. Plain and ordinary meaning – 4 sample, said sample The claimed “fluorescence “a fluorescence detection having a plurality of detection system” is a required system for testing a sample 5 fluorophores, said element of the claim. The having a [plurality of fluorescence detection claimed “fluorescence detection fluorophores / first 6 system comprising” system” is “for testing a fluorophore and a second 7 (claims 1, 10) sample,” but the “sample” and fluorophore], the system “a plurality of fluorophores” are comprising…” The 8 not required elements of the limitations – “a sample” and “fluorescence detection “a [plurality of fluorophores / 9 system.” first fluorophore and a second fluorophore]” – are required 10 elements of the claim. 11 “A fluorescence detection Preamble is a limitation. Preamble is limiting. system for testing a Plain and ordinary meaning. Plain and ordinary meaning – 12 sample, said sample The claimed “fluorescence “a fluorescence detection having a first fluorophore detection system” is a required system for testing a sample 13 and a second fluorophore, element of the claim. The having a [plurality of said fluorescence claimed “fluorescence detection fluorophores / first 14 detection system system” is “for testing a fluorophore and a second 15 comprising” (claim 19) sample,” but the “sample” and fluorophore], the system “a first fluorophore and a comprising…” The 16 second fluorophore” are not limitations – “a sample” and required elements of the “a [plurality of fluorophores / 17 “fluorescence detection first fluorophore and a second system.” fluorophore]” – are required 18 elements of the claim. 19 20 Both sides agree that the preamble describing the system is limiting. See, e.g., Catalina 21 Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“In general, a 22 preamble limits the invention if it recites essential structure or steps, or if it is “necessary to give 23 life, meaning, and vitality” to the claim.”). They disagree on what the nature of that limitation is. 24 Michigan argues that the limitation is the requirement of a “fluorescence detection system” but not 25 the other structure identified in the preamble, the “sample having a plurality of fluorophores.” 26 Leica asserts that the relevant structural limitation is the “sample having a plurality of 27 1 fluorophores.”2 Leica has the better argument. 2 Michigan contends that “for testing a sample having multiple fluorophores” refers to the 3 intended use of the claimed “florescence detection system,” meaning only that the system is 4 capable of testing that sample, not that the claims require that sample. John Bean Techs. Corp. v. 5 Morris & Assocs., Inc., 828 F. App'x 707, 714 (Fed. Cir. 2020) (“But for us to resolve this case, it 6 is enough to observe that the cited “for” language—in what are product claims to the “tank 7 assembly” itself, not claims to methods of use—is language of capability.”). According to 8 Michigan, the language of Claims 1, 10 and 19 simply define the structural components of the 9 “fluorescence detection system,” and do not include the sample with multiple fluorophores as part 10 of that structure. But the overall invention is the “system”: the question is, what in the preamble 11 limits that system? 12 As Leica notes, in the IPR proceedings Michigan avoided Leica’s obviousness challenge 13 based on an identified reference (Marriott) by noting that Marriott did not “disclose any sample 14 with a plurality of fluorophores.” The PTAB identified and relied on that admission, noting that 15 “the parties agree that the claims require a sample having a plurality of fluorophores and excitation 16 of a sample having multiple fluorophores.” Dkt. No. 98-7 at 21 n.10. That admission is binding 17 on Michigan. Data Engine Techs. LLC v. Google LLC, 10 F.4th 1375, 1381 (Fed. Cir. 2021) 18 (“where, as here, a patentee relies on language found in the preamble to successfully argue that its 19 claims are directed to eligible subject matter, it cannot later assert that the preamble term has no 20 patentable weight for purposes of showing infringement.”). Leica also distinguishes the computer 21 software cases relied on by Michigan3 that address “for [gerund]” capability as irrelevant to this 22
23 2 Both sides agree on the significance of the dispute. Under Michigan’s proposed construction, Leica would possibly be liable for direct infringement because it allegedly makes a system capable 24 of doing this. Under Leica’s proposed construction, where the “sample” and “fluorophores” physical structures are required to be within the system, Leica would escape direct infringement, 25 as according to Michigan, it is the customers of Leica who provide the samples and test the samples. 26
3 Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) and Ericsson, Inc. 27 v. D-Link Sys., Inc., 773 F.3d 1201, 1216–17 (Fed. Cir. 2014), both computer software cases 1 apparatus claim. See Dkt. No. 101 at pages 25-26 of 30. 2 Leica’s construction is adopted; the sample containing a plurality of fluorophores is a 3 required element of the claim. The language of the preamble for this apparatus claim makes it 4 clear that a sample having a plurality of fluorophores is an element of the claim. The system 5 covers an apparatus “for testing a sample” and that “sample has” the plurality of fluorophores. 6 That is consistent with the position taken by Michigan in order to distinguish its invention over 7 prior art throughout patent prosecution and the IPR proceedings,. 8 B.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 THE REGENTS OF THE UNIVERSITY Case No. 19-cv-07470-WHO OF MICHIGAN, 8 Plaintiff, ORDER ON CLAIM CONSTRUCTION 9 AND MOTION TO STRIKE v. 10 Re: Dkt. Nos. 98, 102 LEICA MICROSYSTEMS INC., 11 Defendant.
12 13 Currently before me are the parties’ disputes over the appropriate construction of three sets 14 of claim terms and plaintiff The Regents of the University of Michigan’s (Michigan’s) motion to 15 strike the testimony of defendant Leica Microsystems, Inc.’s (Leica’s) claim construction expert 16 Wayne Knox. Dkt. No. 102. As discussed below, I construe the first set of terms in Leica’s favor, 17 but reject both sides’ proposed constructions of the second and third set of terms, adopting instead 18 the plain meaning of those terms. Given that ruling, the motion to strike the testimony of Knox is 19 no longer relevant and the motion to strike is DENIED as moot.1 20 DISCUSSION 21 I. CLAIM CONSTRUCTION 22 U.S. Patent No. 7,277,169, titled “Whole Spectrum Fluorescence Detection With Ultrafast 23 White Light Excitation,” relates generally to a fluorescence detection system that can detect 24 multiple fluorescent molecules, called fluorophores, in a sample. The parties dispute the 25 appropriate construction of three sets of claim terms. I address each in turn. 26 1 This matter was initially set for hearing on February 13, 2024. Prior to that hearing, I issued a 27 short order identifying my tentative claim construction opinions and opinion on the motion to A. Preambles of Independent Claims 1, 10, and 19 1
2 Claim Term Michigan’s Proposal Leica’s Proposal “A fluorescence detection Preamble is a limitation. Preamble is limiting. 3 system for testing a Plain and ordinary meaning. Plain and ordinary meaning – 4 sample, said sample The claimed “fluorescence “a fluorescence detection having a plurality of detection system” is a required system for testing a sample 5 fluorophores, said element of the claim. The having a [plurality of fluorescence detection claimed “fluorescence detection fluorophores / first 6 system comprising” system” is “for testing a fluorophore and a second 7 (claims 1, 10) sample,” but the “sample” and fluorophore], the system “a plurality of fluorophores” are comprising…” The 8 not required elements of the limitations – “a sample” and “fluorescence detection “a [plurality of fluorophores / 9 system.” first fluorophore and a second fluorophore]” – are required 10 elements of the claim. 11 “A fluorescence detection Preamble is a limitation. Preamble is limiting. system for testing a Plain and ordinary meaning. Plain and ordinary meaning – 12 sample, said sample The claimed “fluorescence “a fluorescence detection having a first fluorophore detection system” is a required system for testing a sample 13 and a second fluorophore, element of the claim. The having a [plurality of said fluorescence claimed “fluorescence detection fluorophores / first 14 detection system system” is “for testing a fluorophore and a second 15 comprising” (claim 19) sample,” but the “sample” and fluorophore], the system “a first fluorophore and a comprising…” The 16 second fluorophore” are not limitations – “a sample” and required elements of the “a [plurality of fluorophores / 17 “fluorescence detection first fluorophore and a second system.” fluorophore]” – are required 18 elements of the claim. 19 20 Both sides agree that the preamble describing the system is limiting. See, e.g., Catalina 21 Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“In general, a 22 preamble limits the invention if it recites essential structure or steps, or if it is “necessary to give 23 life, meaning, and vitality” to the claim.”). They disagree on what the nature of that limitation is. 24 Michigan argues that the limitation is the requirement of a “fluorescence detection system” but not 25 the other structure identified in the preamble, the “sample having a plurality of fluorophores.” 26 Leica asserts that the relevant structural limitation is the “sample having a plurality of 27 1 fluorophores.”2 Leica has the better argument. 2 Michigan contends that “for testing a sample having multiple fluorophores” refers to the 3 intended use of the claimed “florescence detection system,” meaning only that the system is 4 capable of testing that sample, not that the claims require that sample. John Bean Techs. Corp. v. 5 Morris & Assocs., Inc., 828 F. App'x 707, 714 (Fed. Cir. 2020) (“But for us to resolve this case, it 6 is enough to observe that the cited “for” language—in what are product claims to the “tank 7 assembly” itself, not claims to methods of use—is language of capability.”). According to 8 Michigan, the language of Claims 1, 10 and 19 simply define the structural components of the 9 “fluorescence detection system,” and do not include the sample with multiple fluorophores as part 10 of that structure. But the overall invention is the “system”: the question is, what in the preamble 11 limits that system? 12 As Leica notes, in the IPR proceedings Michigan avoided Leica’s obviousness challenge 13 based on an identified reference (Marriott) by noting that Marriott did not “disclose any sample 14 with a plurality of fluorophores.” The PTAB identified and relied on that admission, noting that 15 “the parties agree that the claims require a sample having a plurality of fluorophores and excitation 16 of a sample having multiple fluorophores.” Dkt. No. 98-7 at 21 n.10. That admission is binding 17 on Michigan. Data Engine Techs. LLC v. Google LLC, 10 F.4th 1375, 1381 (Fed. Cir. 2021) 18 (“where, as here, a patentee relies on language found in the preamble to successfully argue that its 19 claims are directed to eligible subject matter, it cannot later assert that the preamble term has no 20 patentable weight for purposes of showing infringement.”). Leica also distinguishes the computer 21 software cases relied on by Michigan3 that address “for [gerund]” capability as irrelevant to this 22
23 2 Both sides agree on the significance of the dispute. Under Michigan’s proposed construction, Leica would possibly be liable for direct infringement because it allegedly makes a system capable 24 of doing this. Under Leica’s proposed construction, where the “sample” and “fluorophores” physical structures are required to be within the system, Leica would escape direct infringement, 25 as according to Michigan, it is the customers of Leica who provide the samples and test the samples. 26
3 Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) and Ericsson, Inc. 27 v. D-Link Sys., Inc., 773 F.3d 1201, 1216–17 (Fed. Cir. 2014), both computer software cases 1 apparatus claim. See Dkt. No. 101 at pages 25-26 of 30. 2 Leica’s construction is adopted; the sample containing a plurality of fluorophores is a 3 required element of the claim. The language of the preamble for this apparatus claim makes it 4 clear that a sample having a plurality of fluorophores is an element of the claim. The system 5 covers an apparatus “for testing a sample” and that “sample has” the plurality of fluorophores. 6 That is consistent with the position taken by Michigan in order to distinguish its invention over 7 prior art throughout patent prosecution and the IPR proceedings,. 8 B. “Exciting” and “Outputting” 9 Claim Term Michigan’s Proposal Leica’s Proposal 10 “exciting” Plain and ordinary meaning Claimed system affirmatively 11 required to perform the claimed act; otherwise plain and ordinary 12 meaning “outputting” Plain and ordinary meaning Claimed system affirmatively 13 required to perform the claimed act; otherwise plain and ordinary 14 meaning 15 These terms will be given their plain and ordinary meaning. It is not appropriate at 16 claim construction to determine – as Leica wants me to and as Michigan opposes – whether the 17 “claimed system” affirmatively requires the “claimed acts” to be performed. That is an issue to be 18 determined on summary judgment or at trial. 19 C. “Said Supercontinuum White Light Pulse Exciting the Plurality of 20 Fluorophores of the Sample to Emit Fluorescence”
21 Claim Term Michigan’s Proposal Leica’s Proposal 22 “said supercontinuum “said supercontinuum white light “the full supercontinuum white white light pulse pulse providing photons for light pulse comprising the entire 23 exciting the plurality of absorption by the plurality of spectrum of white light [as fluorophores of the fluorophores of the sample to emit construed] is used to 24 sample to emit fluorescence” simultaneously excite the 25 fluorescence” (claims plurality of fluorophores and 1, 10) cause the fluorophores to emit 26 fluorescence” “said supercontinuum “said supercontinuum white light “the full supercontinuum white 27 white light pulse pulse providing photons for light pulse comprising the entire fluorophore and the and the second fluorophore to emit construed] is used to 1 second fluorophore to a first fluorescence and a second simultaneously excite the first 2 emit a first fluorescence respectively” and second fluorophores and fluorescence and a cause the fluorophores to emit 3 second fluorescence first and second fluorescence, respectively” (claim respectively” 4 19) 5 6 These terms will be given their plain and ordinary meaning without any other 7 construction, but with the assistance of expert testimony at trial. As above, neither side 8 actually attempts to define the disputed terms. Instead, they ask me to load into these phrases 9 concepts that will help one side prove or the other disprove infringement. That is not appropriate. 10 II. MOTION TO STRIKE 11 Separately Michigan moves to strike the “undisclosed” expert declaration of Wayne Knox, 12 under Patent Local Rule 4-2 (“Exchange of Preliminary Claim Constructions and Extrinsic 13 Evidence”). Dkt. No. 102. Michigan argues that Leica blatantly violated the rule which requires 14 disclosure of not only the subject matter of expert testimony on claim construction but also the 15 identity of the expert who will provide it. Despite notice and objection from Michigan, it claims 16 that Leica failed to disclose definitively whether it would rely on expert testimony at claim 17 construction and, until Leica filed its responsive claim construction brief, failed to disclose that 18 such testimony would come from Knox,. 19 Leica responds that Rule 4-2 does not expressly require disclosure of the identity of an 20 expert for claim construction as long as the subject matter of expert testimony is adequately 21 described. It also notes that the claim construction schedule proposed by Michigan required 22 disclosure of expert reports contemporaneously with the briefing, which is when Leica disclosed 23 Knox’s report. Finally, it argues that Michigan cannot show harm, as Michigan has known of 24 Knox since the IPR proceedings, where it deposed him regarding his 160-page IPR expert report. 25 I acknowledge that the Northern District’s Patent Local Rules are somewhat ambiguous on 26 whether the identity of a claims construction expert has to be disclosed under Rule 4-2. The better 27 interpretation – consistent with the purpose and spirit of the Patent Local Rules intending to 1 streamline patent litigation — is that disclosure of the identity of experts is required.* 2 That said, this dispute is moot in light of the plain and ordinary meaning constructions 3 adopted above. I do not consider nor rely on Knox’s positions regarding the prosecution history 4 || and Michigan’s efforts to distinguish prior art for the third set of terms addressed above. The 5 || motion to strike is DENIED. If Leica intends to submit testimony from Knox in connection with 6 || the merits of this case, it shall disclose his opinions consistent with the purpose and spirit of the 7 District’s Patent Local Rules. 8 CONCLUSION 9 The first set of terms are construed as “a fluorescence detection system for testing a sample 10 || having a [plurality of fluorophores / first fluorophore and a second fluorophore], the system 11 comprising... .” The second and third sets are given their plain and ordinary meaning. The 12 || motion to strike is DENIED as moot. 13 IT IS SO ORDERED. || Dated: February 14, 2024
. 5 illiam H. Orrick | nited States District Judge 18 19 20 21 22 23 24 25 26 * See, e.g., Fluidigm Corp. v. IONpath, Inc., No. C 19-05639 WHA, 2020 WL 5073938, at *5 07 (N.D. Cal. Aug. 25, 2020) (discussing opinions from this District that required disclosure of identities of experts); see also Asia Vital Components Co. v. Asetek Danmark A/S, No. 16-CV- 28 07160-JST, 2018 WL 452109, at *2 (N.D. Cal. Jan. 17, 2018) (requiring disclosure of the identity of the expert).