Perkinelmer, Inc. v. Intema Ltd., Civil Action No. 09-10176-NG, 2010 U. S. Dist. LEXIS 66452 (D. Mass. July 2, 2010) (Gertner, D.J.) [Claim Construction].

Plaintiff Perkinelmer, Inc. and its subsidiary (“Perkinelmer”) brought this action against Intema Ltd. (“Intema”) seeking a declaratory judgment that the patent-in-suit is invalid and not infringed. Intema brought a counterclaim of infringement. (This count was transferred from the Eastern District of New York and consolidated into the present action.) The District Court (Gertner, D.J.) construed several claims of the patent-in-suit, concerning a process for prenatal screening for Down syndrome. This summary will focus upon the scope of the patent-in-suit—U.S. Patent No. 6,573,103—and specifically claims 1 and 20.

The most fundamental claim construction dispute arose from differing interpretations of the overall claim scope. Specifically, the parties disputed the meaning of the following phrase:

determining the risk of Down’s syndrome by comparing the measured levels of both the at least one first screening marker from the first trimester of pregnancy and the at least one second screening marker from the second trimester of pregnancy with observed relative frequency distributions of marker levels in Down’s syndrome pregnancies and unaffected pregnancies.

The parties argued that this phrase could mean that doctors withhold first trimester screening results from patients until second trimester markers are available, or that doctors use information from both first and second trimester screenings in calculating risk estimates.

The District Court ultimately agreed with Intema and construed the patent broadly to include all methods that may result in a single integrated estimate of risk based on data from the first and second trimester of pregnancy. Most notably, the Court rejected Perkinelmer’s attempts to limit claim scope based upon the prosecution file history and an article authored by the inventor. Although the inventor’s article undoubtedly described his preference for withholding information from the patient during the first trimester, he “never claimed that the article addresses the full scope of the patent”—that is, the article may have described a preferred embodiment but did not amount to a clear intention to limit claim scope. At bottom, the inventor’s statements regarding withholding information when read in context were ultimately found not to amount to disavowal.

Citing Bilski v. Kappos, Judge Gertner did comment at the end of her construction that “the patentability of a process for integration of prenatal screening data from more than one trimester will surely present an intriguing question.”