Plaintiff Perkinelmer Health Sciences, Inc. (“Perkinelmer”) asserts claims for breach of contract and patent infringement against Defendant Agilent Technologies, Inc. (“Agilent”), a hold-over licensee. The Court (Gorton, D.J.) construed multiple terms of the two patents-in-suit, which are directed to the analysis of charged ions through a form of mass spectrometry.
Multiply Charged
The parties first dispute whether the term “multiply charged” in both patents-in-suit requires a construction and should mean “three or more charges.” Pointing to the prosecution history, the Court noted that the inventors disclaimed application of the inventions to “one or two charges” and, thus, plaintiff is foreclosed from arguing the contrary. The Court further explained that this disclaimer was made express elsewhere in the asserted claims. Because “the prosecution history and claim terms are [] in alignment,” the Court held that further construction of the term “multiply” is unnecessary.
The parties also debated whether “multiply charged” referred solely to ions or to both ions and polar atoms. Because the specifications of the patents-in-suit taught that the charging can be produced from large and complex molecules, other than proteins, provided that, if the subject molecules are not themselves ions, they contain “polar atoms or groups” to which a charge could attach, the Court held that the claims encompass both ions and “polar atoms.”
Limitations on Molecular Weight
The claims of the patents-in-suit direct that the molecular weight involved should be “not less than 5000” daltons and “greater than 5000” daltons. The claims, thus, set a floor for the molecular weight. Defendants argue that by not disclosing a maximum molecular weight that the patentee affirmed that no ceiling exists. The Court, however, rejected this position. Despite case law suggesting that the use of percentages or mathematical expressions to set a floor can plausibly mean that there is no upper limit, the intrinsic evidence here implies the existence of a ceiling. The Court, invoking the person of ordinary skill in the art, stated that the largest known proteins at the time of patenting had a mass of approximately 4 million daltons and no person of ordinary skill in the art—and neither party—suggests that molecules with infinite mass did, or could, exist.
Preambles
The Court found that the preamble of one of the two patents-in-suit limited the claim. It did so after concluding that the inventors relied upon the discovery of a “new composition of matter” during prosecution in order to avoid a prior art reference. That prior art reference concerned a method for producing multiply charged ions. In contrast, the patent-in-suit purports to patent compounds as they exist while under mass analysis and in their multiply charged state, “a state which has not previously occurred because the subject compounds have never been charged to the degree achieved by the inventors.”
