. Relying in part on our decisions in Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313 (Fed. Cir. 2016), and In re Varma, 816 F.3d 1352 (Fed. Cir. 2016), the district court explained that the claim term provided certain functions that the "said microprocessor" must be "necessarily configured to perform as well as the structural relationship between 'said microprocessor' and other structural elements." Claim Construction Op., 2020 WL 5608640, at *19.
Defendants attempt to identify such an exception in their cite to In re Varma, 816 F.3d 1352 (Fed. Cir. 2016). In that case, the disputed claim phrase recited “a statistical analysis request corresponding to two or more selected investments.”
Defendants contend that whether a claim term preceded by an indefinite article in a "comprising" claim is limited to the singular depends on the context of the claim language in light of the specification. (Dkt. No. 86 at 4 (citing Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1341-42 (Fed. Cir. 2016); In re Varma, 816 F.3d 1352, 1362-63 (Fed. Cir. 2016); Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016)).) Defendants contend that, here, the context of the claim language at issue is consistent only with a singular construction.
We have no reason to believe that a in (Xn)a means something different elsewhere in the same patent. See In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) ("[T]he principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if 'it is clear' that the same phrase has different meanings in different claims." (quoting Fin Control Systems Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001))).
“Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.” Phillips, 415 F.3d 1314; In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (“[T]he principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if it is clear' that the same phrase has different meanings in different claims.”).
In support of this argument, Baxalta cites several cases constraining the use of the term "comprising." ( Id. ) (citing In re Varma , 816 F.3d 1352, 1362 (Fed. Cir. 2016) (stating that "[comprising] does not render each limitation or phrase within the claim open-ended"); Mitsubishi Chem. Corp. v. Barr Labs., Inc. , 435 F. App'x 927, 935 (Fed. Cir. 2011) (rejecting the interpretation of "comprising" as permitting the addition of unrecited compounds that "would defeat the ‘pharmaceutical’ character" of the composition); Trading Techs. Int'l, Inc. v. eSpeed, Inc. , 595 F.3d 1340, 1354 (Fed. Cir. 2010) (holding that "comprising" cannot "negate a claimed requirement")). In response, Bayer argues that Dr. Russell's application is correct because the claimed R structure is present.
The Court agrees with Defendants that under Federal Circuit precedent, at least one microprocessor must satisfy all the functional (and relational) limitations recited for "said microprocessor." The parties dispute the import of two Federal Circuit opinions: Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313 (Fed. Cir. 2016) and In re Varma, 816 F.3d 1352 (Fed. Cir. 2016). Both opinions involve interpretation of a claim element introduced with the indefinite article "a" and further defined by claim-recited characteristics of the element.
Id. (citing Dkt. No. 52-1 at 35:13-19; 20:2-19). Finally, Plaintiffs contend that Defendant's reliance on TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F.3d 1290 (Fed. Cir. 2008) is misplaced, and that In re Varma, 816 F.3d 1352 (Fed. Cir. 2016) and Plano Encryption Techs., LLC v. Alkami, Inc., 2:16-cv-01032, Dkt. 168 (E.D. Tex. Aug. 23, 2017) are distinguishable. (Id. at 7-8).
[Id.] In support of that proposition, Plaintiff cites to two Federal Circuit opinions, Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011) and In re Varma, 816 F.3d 1352 (Fed. Cir. 2016). [#116 at 7]
Plaintiffs' argument fails because "[a]lthough the transitional term 'comprising' indicates that the claim is open-ended, the term does not render each limitation or phrase within the claim open-ended." In re Varma, 816 F.3d 1352, 1362 (Fed. Cir. 2016) (citations omitted). Varma further explained as follows when overturning an interpretation of the term "a statistical analysis request corresponding to two or more selected investments" as being covered by a system that required two requests in order to accomplish an analysis of two or more investments: