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Motorola, Inc. v. Nonin Medical

December 8, 2008

MOTOROLA, INC., GMP/WIRELESS MEDICINE, INC., PLAINTIFFS,
v.
NONIN MEDICAL, INC., DEFENDANT.



The opinion of the court was delivered by: Elaine E. Bucklo United States District Judge

MEMORANDUM OPINION AND ORDER

On July 13, 2007, plaintiffs Motorola Inc., and GMP/Wireless Medicine, Inc. ("GMP"), respectively the owner and exclusive licensee of United States Patent Nos. 6,289,238 (the "'238 patent") and 7,215,991 (the "'991 patent"), filed a second amended complaint alleging infringement of those patents by defendant Nonin Medical, Inc. ("Nonin"). Both patents are titled "Wireless Medical Diagnosis and Monitoring Equipment," and they share a specification. As their title suggests, the patents relate generally to wireless medical systems used to monitor body functions in a patient, such as electrical activity in the brain or heart, body temperature, pulse, or oxygen saturation levels in the blood.

GMP and Nonin each assert that certain claim terms require judicial construction pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). With respect to some terms, the parties have offered competing constructions. With respect to others, one party has proposed a construction while the other maintains that the terms are readily understandable as written and need not be construed.

Based on the parties' briefs, oral argument, and my review of the cited evidence, I resolve the parties' disputes as follows.*fn1

I.

Markman's holding that claim construction is a matter of law for the court to resolve does not require trial judges to "repeat or restate every claim term." U.S. Surgical Corp., v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Instead, judicial construction is reserved for "when the meaning or scope of technical terms and words of art is unclear and in dispute." Eli Lilly and Co., v. Aradigm Corp., 376 F3d 1352, 1360 (Fed. Cir. 2004)(quoting U.S. Surgical, at 1568).

The starting point for claim construction is always the language of the claims themselves. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)("the words of the claims themselves...define the scope of the patented invention"). Claim terms "are generally given their ordinary and customary meaning," id., which is to say, the meaning those words would have to a person of ordinary skill in the art at the time of the patent's effective filing date.*fn2 Phillips v. AWH Corp., 415 F.3d 1303 at 1313.

Because a person of skill in the art is deemed to read the claims in the context of the patent as a whole, while the claims define the invention, the specification "is always highly relevant to the claim construction analysis." Phillips, at 1314 (quoting Vitronics, at 1582). Nevertheless, "limitations from the specification are not to be read into the claims." Golight, Inc., v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004)(citations omitted). Although "there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification," Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed.Cir. 1998), this line can generally be discerned by maintaining a focus on how a person of skill in the art would understand the claim terms. Phillips, at 1323.

In addition to the patent itself, I may consider any portions of the prosecution history that are in evidence for claim construction. Markman, 52 F.3d at 980. The claims, the specification, and the prosecution history are the "intrinsic" evidence that form the most reliable basis from which to ascertain the meaning of claim terms. See Phillips, at 1313-14.

"Extrinsic" evidence, including dictionaries, treatises, and inventor testimony, can also shed light on the meaning of claim terms. In particular, "dictionaries, and especially technical dictionaries...have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art." Phillips, 415 F.3d at 1318 (citing Teleflex, Inc., v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). Although extrinsic evidence as a whole is considerably less reliable than intrinsic evidence for determining "the legally operative meaning of claim language," Phillips, at 1317 (citation omitted), I may consult and rely on dictionary definitions when construing claim terms, "so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents." Phillips, at 1322-23 (quoting Vitronics, 90 F.3d at 1584 n. 6).

With these principles in mind, I turn to the disputed claim terms.

1. "Electrode"

I conclude that "electrode" means, as GMP asserts, "a collection of electronic components including an electrical conductor." This construction defines "electrode" with reference to the structural and functional characteristics associated with the device. This understanding of the term is supported by the specification and is consistent with technical definitions of "electrode." E.g., McGraw Hill Dictionary of Scientific and Technical Terms 5th ed. (1994) ("1. An electric conductor through which an electric current enters or leaves a medium..."); The American Heritage(r) Stedman's Medical Dictionary. Houghton Mifflin Company. http://dictionary.reference.com/browse/electrode (accessed: December 01, 2008)("1. A solid electric conductor through which an electric current enters or leaves an electrolytic cell or other medium. 2. A collector or emitter of electric charge or of electric-charge carriers, as in a semiconducting device.")

Defendant contends that "electrode" should be defined more narrowly as "a self-contained device with no exposed wires or cables" and seeks to limit the term so that "electrode does not include a system in which the signals of individual sensors are transmitted via cable to a separate emitter unit for wireless transmission to an evaluator station." This construction is not supported by the weight of the intrinsic and extrinsic evidence.

Nowhere do the claims themselves refer to a "wireless electrode" or describe an "electrode" as a device without exposed wires or cables. Defendant asserts that its proposed construction is nevertheless compelled by the specification and prosecution history, which, according to defendant, demonstrate that the patentees affirmatively disclaimed devices with exposed wires or cables.

Defendant first points to the use of the phrase "wireless electrodes" in the specification. At the outset, I note that the very presence of the modifier "wireless" strongly implies that the term "electrode" as used in the patent does not inherently mean a wireless device. See Phillips, at 1314 ("the claim in this case refers to "steel baffles," which strongly implies that the term "baffles" does not inherently mean objects made of steel"). Defendant therefore must offer compelling evidence that the phrase "wireless electrode" in the specification reveals "a special definition given to ["electrode"] by the patentee that differs from the meaning it would otherwise possess." Id., at 1316.

Defendant argues that limiting the scope of "electrode" to a device with no external wires does not improperly import limitations from the specification because the phrase "wireless electrode" appears prominently in the specification (in the abstract and in what defendant calls "the very first paragraph to substantively describe the invention"), as well as in sentences that allegedly define explicitly what "the invention is." In support of the latter point, defendant cites Honeywell Int'l v. ITT Industries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006), for the proposition that where a patentee describes exactly what "the invention" is in the specification, claim terms may not be construed in a way that conflicts with the definition of "the invention" as described in those statements.

Defendant's arguments are unavailing. First, defendant offers no authority for the proposition that the specific location of a term in the specification---whether it appears in the abstract, the first substantive paragraph, or elsewhere---is material to claim construction. Moreover, Honeywell offers little support for defendant's construction on the facts presented here. In Honeywell, the phrase "the invention" was used consistently throughout the specification in relation to a particular device (a fuel filter in that case). The patents asserted in this case, by contrast, use phrases like "the invention" or "this invention" in a much broader variety of contexts.

Finally, both intrinsic and extrinsic evidence support GMP's argument that "wireless" as used in the specification refers not to the electrode device, but to the mode of data transmission. For example, claim 1 of the '238 patent recites:

A medical system for acquiring measured data, in particular for monitoring body functions, comprising: at least one evaluation station having at least one receiver and at least one transmitter for wireless digital data transmission... (emphasis added).*fn3

Defendant next argues that because all of the embodiments described or depicted in the specification show a self-contained unit with no exposed wires or cables, the claims cannot be construed to cover an electrode with exposed wires or cables. Defendant is correct that where there is "nothing in the context to indicate that the patentee contemplated any alternative embodiment to the one presented," Phillips, at 1323, it is appropriate to limit the claim terms to the disclosed embodiment. The Federal Circuit has admonished, however, that "although the specification often ...


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