Patent And Trademark Bulletin For The District Of Massachusetts - A Reporter On Recent Patent And Trademark Opinions From The United States District Court For The District Of Massachusetts

This is a four-month issue of the Patent and Trademark Bulletin for the District of Massachusetts following a hiatus for the 2009/2010 holiday season. In this issue:

Judge Ponsor issues Markman ruling in laser probe case Metris U.S.A., Inc. receives favorable claim construction in optical scanning patent Court construes claim terms in patent infringement action brought by Sapidyne Instruments Judge Young reverses jury verdict on obviousness and remands case for new trial, emphasizing that the mere ipse dixit of experts is not substantial evidence Lack of a grant to practice the invention, although not dispositive, found to be a significant factor in finding that licensee lacked standing Court threatens to enter summary judgment of non-obviousness sua sponte in patent dispute concerning internet on airlines Motion to dismiss for lack of personal jurisdiction and to transfer granted in trademark infringement case Performance Food Group Company preliminarily enjoined from using new name and logo Court denies motion to enter preliminary injunction against Big Lots in connection with "Real Deal" advertising campaign PATENT

American Medical Systems, Inc. v. Biolitec, Inc., C.A. No. 08-30061-MAP, Memorandum And Order Regarding Construction Of Patent Claims (D. Mass. Oct. 28, 2009) (Ponsor, D.J.) [Claim Construction].

The District Court (Ponsor, D.J.) construed several disputed claim terms in a patent directed to a side-firing laser probe that delivers laser energy to prostate tissue to vaporize or ablate the tissue and reduce the size of the organ.

Plaintiffs American Medical Systems, Inc. and Laserscope, Inc. (collectively, "AMS") brought suit against Biolitec, Inc. and related companies (collectively "Biolitec") for infringement of U.S. Patent No. 5,428,699. (Note that two other cases involving these same parties and allegations of patent infringement were discussed in the February/March 2009 issue of this publication.) The '699 patent is generally directed to a side-firing laser system that utilizes a laser probe including a fiber-optic core surrounded by a cladding or sheath. Laser light travels along the fiber core before reflecting off a surface at an angle such that 90% of the laser energy or more passes through a particular area on the transmitting surface and ultimately hits the prostate tissue. Prior to the Markman hearing, the parties stipulated to the constructions of ten claim terms, leaving seven terms to be construed by the court.

In construing the claim term "transmitting surface," the court rejected the definition provided by Biolitec because it excluded an embodiment of the patent. In particular, while Biolitec argued that a transmitting surface must lie on the outside of the cladding, the court found that one figure in the patent illustrated a transmitting surface that was located on the external surface of the transparent tube, and thus, should not be limited as Biolitec suggested.

The court similarly looked to intrinsic evidence to construe the claim terms "cladding," "core cladding," and "glass cladding." AMS argued that the term "cladding" should be construed separately from the terms core and glass. But the court found that each claim always recited either core cladding or glass cladding, and never just cladding alone. Biolitec also argued that the terms core cladding and glass cladding should be construed identically. In support of its position, Biolitec pointed to the use of the "doped silica" in the specification as core cladding for a described experiment. This use, it asserted, necessarily meant that glass and core claddings were identical. The court, however, disagreed. The court stated that an experiment's materials are necessarily particular, and as such, a chosen material for the experiment should not limit the invention to that material. It thus found Biolitec's position too restrictive. The court ultimately adopted the construction of the term "glass cladding" from a another case involving the '699 patent in the District of Minnesota. In that case, however, the term "core cladding" was not construed and, therefore, the court was left to construe the claim term in view of the specification.

The court's construction of the limitation related to "said reflecting surface...at least 1.4X greater than the first width" also deserves comment. The court found that limitation was indefinite because it lacked a necessary verb, leaving it open to multiple conflicting interpretations. Because the court may not rewrite the language of a claim so that it makes sense, it deemed the claim indefinite under the written description and enablement requirements of 35 U.S.C .§ 112, first paragraph.

Metris U.S.A., Inc. v. Faro Technologies, Inc., C.A. No. 08-11187-PBS, Memorandum And Order (D. Mass. Oct. 22, 2009) (Saris, D.J.) [Claim Construction].

The District Court (Saris, D.J.) construed a disputed claim term in a patent related to optical scanning for 3D modeling. The dispute resulted from a suit brought by plaintiff Metris U.S.A., Inc. ("Metris") against Faro Technologies, Inc. ("Faro") alleging infringement of U.S. Patent No. 6,611,617, entitled "Scanning Apparatus and Method," and U.S. Patent No. 7,313,264, entitled "Scanning Apparatus and Method."

The parties were unable to agree on the meaning of the claim term "synchronization signal." The dispute centered on whether the term required that the "synchronization signal" originated from a light detector (i.e., a camera). Claim 1 of the '617 patent recites "a trigger pulse generator for receiving the synchronization signal for the light detector defining the recording times thereof...." Faro argued that the term "synchronization signal" should be limited to "a series of electrical timed signals defined by the camera" because the phrase "defining the recording times" directly follows the term "light detector." The court, however, agreed with Metris that the plain language of the claim indicates that the phrase "defining the recording times" modifies the term "synchronization signal." The court further noted that...