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Biotras LLC v. Clear Ballistics, LLC

United States District Court, N.D. Texas, Dallas Division

April 27, 2017

BIOTRAS, LLC, Plaintiff,
v.
CLEAR BALLISTICS, LLC and JOEL EDWARDS, Defendants.

          MARKMAN MEMORANDUM OPINION AND ORDER

          ED KINKEADE UNITED STATES DISTRICT JUDGE.

         Before the Court are the parties' briefs on the issue of claim construction of the patents in suit: U.S. Patent Number 9, 275, 556 (“the ‘556 Patent”); U.S. Patent Number 9, 280, 915 (“the '915 Patent”); U.S. Patent Number 9, 378, 661 (“the ‘661 Patent”). The Court has reviewed the parties' briefs and all related filings and evidence, including the patents in suit, the specifications, the patent prosecution histories to the extent it was submitted by the parties, as well as the parties' proposed claim constructions and arguments. The Court hereby construes the disputed claims according to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 360 (1996).

         I. Background

         A. Procedural

         This dispute stems from a prior business relationship between the Plaintiffs and Defendants regarding the creation, research, and development of certain patented inventions. The patents in suit regarding these inventions are currently owned by Biotras, LLC. The Defendants assert that they should be included as an inventor or owner of the patents in suit based on their involvement in the creation of the invention.

         The parties assert that, in order to resolve this inventorship dispute, it is necessary for the Court to construe disputed claim phrases under the Court's authority under Markman, 52 F.3d 967.

         B. The Patents in Suit

         All three patents in suit address very similar inventions used for medical training. In general, the inventions are models that mimic parts of a body. The form of the body is made from a gel, such as a ballistic gel. Ballistic gels are synthetic gels that were developed to mimic the consistency and density of human tissue. Ballistic gels were originally developed for testing the effect of projectiles fired from firearms on human tissue. Because ballistic gels have properties that mimic the consistency and density of human tissue, they also mimic the tactile feel and response of human tissues. The inventions of the patents take advantage of these properties of ballistic gels to create a model that can be used for medical training that provides a simulated human body with realistic tactile response.

         The particular embodiments of the inventions provide examples of these models. These examples have at least part of a human torso shape formed from ballistic gel, with a human spinal column embedded into the gel. The patents also described the addition of other components of the model that may be included, such as simulated vertebral discs between the sections of the spinal column. The net effect is to create a model that its anatomically correct and has tactile properties similar to human tissue.

         Another aspect of ballistic gels is that they are generally clear. This allows teachers and students using the model to observe the inside portion of the model, and in particular to see the bones placed within the model.

         One disclosed use of the models is to use the models for injection training for injections that are placed between the vertebrae of the spinal column. Because the model responds like human tissue, it gives the user realistic tactile feedback, and because the gel is clear, both students and teachers can observe the injection path and the final placement of the needle used for injection.

         Another aspect of the invention is a feature that allows for old needle tracks to be removed from the models after use of the models. The gel used for the models softens and flows when heated. Old needle tracks can be removed from the models by heating the gel until it becomes flowable. The gel then fills in the void created by the needle. After the gel cools, the old needle tracks are gone and the models are ready for use again without interference from the old needle tracks. The patents describe embedding heaters into the gel near the locations of expected needle tracks for this purpose.

         II. Applicable Law

         A. Principles of Claim Construction

         Claim construction is a matter of law. See Markman, 52 F.3d at 979. The Federal Circuit Court has held that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quotation marks omitted). The Supreme Court has stated that the claims are “of primary importance, in the effort to ascertain precisely what it is that is patented.” Phillips, 415 F.3d at 1312 (quotation marks omitted). A court looks to three primary sources when determining the meaning of claims: (1) the claims, (2) the specification, and (3) the prosecution history. Markman, 52 F.3d at 979. The claims of the patent must be read in view of the specification of which they are a part. Id. The specification consists of a written description of the invention which allows a person of ordinary skill in the art to make and use the invention. Id. This description may act as a dictionary explaining the invention and defining terms used in the claims. Id. Although a court should generally give such terms their ordinary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, so long as the special definition of the term is clearly stated in the patent specification or file history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

         The court starts with the claim itself, read in light of the specification. See Vivid Techns., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 804 (Fed. Cir. 1999). While the claims themselves provide significant guidance as to the meaning of a claim term, the specification is generally dispositive as “it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1314-1315. In addition to the claim language and specification, the prosecution history is often helpful in understanding the intended meaning, as well as the scope of technical terms in the claims. See Vivid, 200 F.3d at 804. In particular, the prosecution history is relevant in determining whether the patentee intends the language of the patent to be understood in its ordinary meaning. Using these tools, the court construes only the claims that are in controversy and only to the extent necessary to resolve the dispute. Id. at 803.

         The words of a claim are usually given their ordinary and customary meaning. See Phillips, 415 F.3d at 1312. Ordinary and customary meaning is the meaning the claim term would have to a person of ordinary skill in the art (e.g., field of the invention). See Id. at 1313; Markman, 52 F.3d at 979. A person of ordinary skill in the art would read the claim term in the context of the entire patent, including the specification, not just the particular claim where the term appears. Phillips, 415 F.3d at 1313. There are instances where the ordinary meaning of claim language, as a person of skill in the art would understand it, “may be readily apparent even to lay judges, ” thereby requiring “little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314. In these situations, general purpose dictionaries are useful. Id.

         But, in many cases, the court must determine the ordinary and customary meaning of the claim terms which have a certain meaning in a field of art. Id. The court can look 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.” Id. These sources can 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 the technical terms, and the state of the art.” Id.

         Aside from the written description and the prosecution history, the claims themselves also offer assistance as to the meaning of certain claim terms. Id.

         When the intrinsic evidence, that is the patent specification and prosecution history, unambiguously describes the scope of a patented invention, reliance on extrinsic evidence, which is everything outside the specification and prosecution history, is improper. See Vitronics, 90 F.3d at 1583. While the Court may consult extrinsic evidence to educate itself about the invention and relevant technology, it may not rely upon extrinsic evidence to reach a claim construction that is clearly at odds with a construction mandated by the intrinsic evidence. See Key Pharm. v. Hercon Lab. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998).

         III. Construction of the Patent Claims and Terms

         A. The Disputed Claim Phrases

         The parties dispute the meaning of certain phrases used in the claim language of the patents in suit. The parties disagree to as to the meaning of the following phrases:

• “visibly clear, ” which occurs in claims 1 and 12 of the ‘556 patent; claim 1 of the ‘915 patent; and claims 1-4, 6, 7, 11, 14, and 18 of the ‘661 patent.
• “thermally fusible, ” which occurs in claims 1 and 12 of the ‘556 patent; claim 1 of the ‘915 patent; and claims 1-4, 6, 7, 11, 14, and 18 of the ‘661 patent.
• “visibly clear, thermally fusible, ” which occurs in claims 1 and 12 of the ‘556 patent; and claim 1 of the ‘915 patent. The Defendants argue that this phrase should also be applied to the claims of the ‘661 patent.
• “synthetic gel matrix, ” which occurs in claims 1, 7, 8, 12, 17, and 18 of the ‘556 patent; claims 1 and 9 of the ‘915 patent; and claim 10 of the ‘661 patent.
• “skeletal structure, ” which occurs in claims 1, 2, 11, 12, 13, and 21 of the ‘556 patent and claims 1, 6, 8, 11, 13, 17, and 18 of the ‘661 patent.
• “partial human torso, ” which occurs in claims 1, 10, 12, and 20 of the ‘556 patent and claims 1 and 9 of the ‘915 patent.
• “training and injection practice, ” which occurs in claims 1 and 12 of the ‘556 patent.
• “thermoplastic elastomer matrix, ” which occurs in claims 1, 2, 3, 4, 7, 11, 14 and 18 of the ‘661 patent.

         The full language of all of the claims of each patent in suit are in the record before the Court and the Court has fully reviewed all the claims of these patents, including those containing the disputed phrases. The Court finds no need to repeat the full language of those claims in this order.

         B. Construction of Disputed Claim Phrases

         1. “Visibly clear”

         The Parties dispute the meaning of “visibly clear, ” which is used in claims 1 and 12 of the ‘556 patent; claim 1 of the ‘915 patent; and claims 1-4, 6, 7, 11, 14, and 18 of the ‘661 patent. The Plaintiffs assert that the phrase does not need construction and should be given its plain and ordinary meaning. In the alternative, Plaintiffs propose the phrase be construed to mean “transparent.” The Defendants assert that the phrase should be construed to mean “transparent and colorless.”

         The real dispute between the Parties for the construction of this disputed phrase involves whether or not the gel or elastomer should be colorless. The Plaintiffs propose that, if construction is necessary, the phrase simply be construed to mean “transparent” and that this is essentially the plain meaning of the phrase. The Defendants also acknowledge that the gel or elastomer is transparent. The Defendants include this as part of their proposed construction of the phrase. But, the Defendants also add the requirement that the gel or elastomer also be colorless. Since there is no real dispute over the “transparent” limitation of this construction, the Court will only address the “colorless” limitation proposed by the Defendants.

         The Plaintiffs argue that applying a colorless limitation to the disputed phrase would be improper because doing so would add a limitation to the claims that is not supported by the specifications of the patents. The Plaintiffs point out that nothing in any of the claim language requires the gel or elastomer to be colorless and that the specifications only once refer to ballistic gels being colorless.

         The Defendants argue that the gel or elastomer must be colorless. In support of this argument the Defendants direct the Court's attention to the file wrapper of the ‘556 patent and the ‘915 patent. In the file wrapper, the prosecuting attorney made certain remarks regarding the differences between the claimed invention and the prior art, and the examiner, in a notice of allowance, noted the information contained in this response as part of the reasoning for allowing the claims. The Defendants argue that the inventors silence as to the examiner remarks should be taken to mean the inventor agreed and adopted the remarks and reasoning of the examiner. According to the Defendants, this supports the colorless limitation.

         While an inventor, in certain circumstances, may be held to adopt an examiner's comments and reasoning or may be limited by assertions made during prosecution, the Court does not need to determine if that is the situation here because the attorney arguments and examiner comments do not support the Defendants “colorless” limitation, even if these should be imposed upon the claim language. The Court has reviewed these attorney remarks and examiner comments, all of which are in the record before the Court. The Court sees no need to reproduce these within this order. The attorney remarks and examiner comments are directed toward prior art that used an opaque matrix and distinguished the difference between the opaque prior art, which one cannot see through, and the claimed inventions, which use a gel that one can see through. The remarks and comments also address other prior art that uses a visibly clear gel, but in that case, the gel was a fluid gel that did leave needle tracks in the gel.

         More importantly, for the purposes here, the remarks and comments in no way discuss that the gel or elastomer must be colorless. The remarks and comments do not address the color or absence of color of the claimed inventions or the prior art. The extent of the subject of discussion in the remarks and comments is limited to the unique feature of the claimed invention, the ability of the gel or elastomer to leave needle track marks that can be seen by users and others. This does not involve the color of the material at all. Stating that an object is opaque or clear does not refer to the object's color. This only refers to being able or not able to see through the object. So the attorney arguments and examiner's comments only concern the ability to see through the gel and the gel's ability to hold needle tracks marks, which does not provide any support for the Defendants' “colorless” limitation. So, even if the inventor adopted the examiner's comments, these would not support the construction that the Defendants now propose.

         The Defendants also appear to argue that the patent specifications support the “colorless” limitation. In support of this, the Defendants point toward specification language that refers to the invention using a “matrix of crystal clear ballistic gel” and other similar comments about the clarity of the gel. ‘556 patent 1:18-20, 2:34-37, 2:47, 2:54-55, 2:66-67; ‘915 patent 1:14-17, 2:29-32, 2:41, 2:48-49, 2:60-62. The Defendants also note that the specifications state that “synthetic ballistic gels have been formulated to mimic the properties of natural gelatin, but are odorless and colorless.” ‘556 patent 1:53-55; ‘915 patent 1:53-55.

         The Court finds that these do not provide any more support for the “colorless” limitation than the file wrappers. Like the examiner comments in the file wrapper, the statements regarding the “crystal clear ballistic gel” and other statements about the gel properties all relate to the ability to see through the gel or elastomer, not to the color of the gel or elastomer. The only mention of ballistic gel being colorless is in a general statement regarding common properties of currently commercially available ballistic gels. This reference does not tie the claimed and described invention to a colorless gel. It is merely a general statement about the properties of commercially available ballistic gels. And, the specific descriptions of the inventions provided in the specifications also do not refer to the color of the gel. So, this does very little to support the inclusion of “colorless” in the construction of this disputed phrase.

         So, neither the claim language, the specification language, nor the file wrapper support the Defendants' proposed colorless limitation. For these reasons, the Court finds that construing the disputed phrase to require the gel or elastomer to be colorless would improperly limit the claims of the patents in suit.

         The Plaintiffs propose that this phrase does not need any construction. In support of this contention that “visibly clear” does not need construction, the Plaintiffs direct the Court's attention to claim language that requires needle tracks formed by inserting a needle into the gel or elastomer should be visible to an external viewer, like what is required in claim 1 of the ‘556 patent. Other claims of the patents in suit have the same requirement. And the patent specifications also repeatedly describe the claimed inventions as being made from a gel or elastomer that one can see through.

         The Court agrees with the Plaintiffs that the claims and specifications provide ample support for requiring that the gel be one that a person can see through, but the Court finds that there is no significant difference between the claim language “visibly clear” and the proposed construction “transparent.” Transparent means that a material is clear enough that one can see through the material. This is the same meaning that a person having ordinary skill in the art would understand “visibly clear” to mean, as it is used in the claim language. Both the language of the claims and the specifications of the patents support this by repeatedly referring to the ability of a user or observer to see through the gel or elastomer so that needle tracks can be seen. Transparent is the plain and ordinary meaning of “visibly clear” as it is used in the patents and what would be understood by a person of ordinary skill in the art to be the meaning of this phrase as it is used in these patents. For this reason, the Court finds that there is no need to construe the disputed phrase because the proposed construction does not add any clarity to the disputed phrase beyond its plain and ordinary meaning.

         In summary, the patents and the patent histories do not support inclusion of a colorless limitation into the disputed phrase and the phrase “visibly clear” does not need any construction because, in these patents, it is used so that it has its plain and ordinary meaning. For these reasons, the Court declines to construe ...


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