Friday, September 23, 2016

CAFC affirms D. Delaware in Roche v. Lifescan: the meaning of "microelectrode"

Roche Diagnostics Operations, Inc. and Corange International
Limited (“Roche”) appeal from the United
States District Court for the District of Delaware’s grant
of summary judgment in favor of Lifescan Incorporated
and Nova Biomedical Corporation (“Defendants”). The
district court entered judgment of non-infringement after
construing the term “electrode” in a way that excluded
Defendants’ products. The district court’s claim construction
was correct and we therefore affirm the court’s judgment
of non-infringement.

Of procedural matters:

Roche appealed to this court and repeated the argument
it had first raised in its motion for reconsideration:
it asserted that microelectrodes included electrodes up to
1,000 μm in width. Roche Diagnostics Operations, Inc. v.
Lifescan Inc., 452 F. App’x 989, 994–95 (Fed. Cir. 2012)
(Roche I). Defendants opposed Roche’s arguments, but
did not challenge whether these arguments were properly
before the court. Id. at 994–97.
As the district court had not previously addressed the
parties’ arguments regarding 1,000 μm microelectrodes,
we declined to address them and remanded so that the
district court could consider them in the first instance.

[from footnote 3]

3 On appeal previously, this court noted uncertainty
as to whether Roche’s motion for reconsideration was
procedurally appropriate. Roche I, 452 F. App’x at 994.
On remand, the case was assigned to a different district
court judge. The district court judge stated that it appeared
that Roche’s motion for reconsideration had originally
been denied on procedural grounds, but that it was
uncertain whether Defendants waived procedural challenges
to arguments first asserted in Roche’s reconsideration
motion by not raising them before this court on
appeal. Remand Op., 2014 WL 6871579, at *3–4.
On appeal now, Defendants contend that Roche’s current
claim construction arguments, which are premised
on microelectrodes including electrodes up to 1000 μm in
width, are procedurally barred because they were first
raised in Roche’s reconsideration motion, and Roche did
not appeal the district court’s denial of that motion in the
prior appeal. Roche asserts that Defendants have waived
procedural challenges to these arguments by not raising
them when this case was previously on appeal. Roche
also argues that the district court erred in applying the
Third Circuit’s standards for motions for reconsideration.
We need not address these procedural issues, because
we affirm the district court’s claim construction even
when we consider Roche’s arguments.

Roche's arguments:

Roche presents several arguments why the district
court improperly construed “electrode.” First, Roche
argues that the district court based the construction on a
width the shared specification describes as a preferred
embodiment. Second, Roche asserts that the district court
erred in its analysis of diffusion, examples 3–5 of the ’146
patent, and claim 48 of the ’146 patent. Finally, Roche
claims that “microelectrode” has an ordinary meaning of
any electrode measured in micrometers or μm, up to
1,000 μm.

The CAFC noted:

Considering the specifications as a whole, we agree
with the district court that the language it cited defines
how a microelectrode can be distinguished from a macroelectrode.
See, e.g., Phillips, 415 F.3d at 1315 (The specification
is “the single best guide to the meaning of a
disputed term.”). While other parts of the shared specification
refer to various widths including 100 μm as being
“preferred,” see, e.g., ’146 patent col. 3 ll. 9–12, this does
not prevent the portion of the shared specification that
the district court’s interpretation relied on from providing
a definition of microelectrodes.

Of extrinsic evidence:

We find that the court did not clearly err in finding
Roche’s extrinsic evidence unpersuasive. In fact, Roche’s
extrinsic sources do not demonstrate that microelectrode
has an ordinary meaning of any electrode measured in
micrometers, up to 1,000 μm. For example, one of the
sources Roche cites is the Kirk-Othmer Encyclopedia of
Chemical Technology. This encyclopedia states that
“[s]mall, referring to the diameter of the electrode, is
about a millimeter for microelectrodes.” 9 Raymond E.
Kirk et al., Kirk-Othmer Encyclopedia of Chemical Technology,
97, 4th ed. (1994). This statement arguably
supports Roche’s proposed construction, as it mentions
1,000 μm microelectrodes. (1 millimeter is equal to 1,000
μm.) However, it appears to declare that a 1,000 μm
electrode is a small microelectrode. As Defendants note,
the encyclopedia cites 15 R. Mark Wightman and David
O. Wipf, Voltammetry at Ultramicroelectrodes (1989) as
support for this statement.

[But note also] The article further states that “[t]his area is still
sufficiently new that a uniform nomenclature for these
electrodes has not yet been developed.”

[In passing, R. Mark Wightman was the grad student of
Royce W. Murray.]


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