United States Court of Appeals for the Federal Circuit
06-1074
VENTANA MEDICAL SYSTEMS, INC.,
Plaintiff-Appellant,
v.
BIOGENEX LABORATORIES, INC.,
Defendant-Appellee.
Ron E. Shulman, Wilson Sonsini Goodrich & Rosati, of Palo Alto, California,
argued for plaintiff-appellant. With him on the brief were Roger J. Chin, and Nicole W.
Stafford, of Austin, Texas.
Peter B. Goldman, Leonard Felker Altfeld Greenberg & Battaile, P.C., of Tucson,
Arizona, argued for defendant-appellee. With him on the brief were Jeffrey H. Greenberg
and Lorenzo B. Cellini.
Appealed from: United States District Court for the District of Arizona
Judge Raner C. Collins
United States Court of Appeals for the Federal Circuit
06-1074
VENTANA MEDICAL SYSTEMS, INC.,
Plaintiff-Appellant,
v.
BIOGENEX LABORATORIES, INC.,
Defendant-Appellee.
__________________________
DECIDED: December 29, 2006
__________________________
Before LOURIE, DYK, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST. Dissenting opinion filed by Circuit
Judge LOURIE.
PROST, Circuit Judge.
Plaintiff-Appellant, Ventana Medical Systems, Inc. (“Ventana”) appeals the
decision of the United States District Court for the District of Arizona granting judgment
of noninfringement of U.S. Patent No. 6,352,861 (the “’861 patent”) in favor of
Defendant-Appellee, BioGenex Laboratories, Inc. (“BioGenex”). Because the district
court erred in its claim construction, we vacate the judgment of noninfringement and
remand for further proceedings.
BACKGROUND
Ventana is the owner of several patents relating to automated methods and
apparatuses for staining microscope slides. Such methods and apparatuses may be
used, for example, to detect diseases in the tissues of patients. In a process known as
immunostaining, pathologists first mount tissue samples on microscope slides. The
slides then undergo a series of treatment steps including the application of various
reagents such as antibody stains. Each of these treatment steps is separated by
multiple rinse steps, during which unreacted reagents are removed from the slides.
Finally, the stained slides are examined by pathologists to detect the presence of
diseases.
At issue in this case is Ventana’s ’861 patent, entitled “Automated Biological
Reaction Apparatus.” As the title suggests, the ’861 patent claims automated
apparatuses and methods used to perform a variety of biological assays, including
immunostaining. The ’861 patent stems from the same original patent application as six
other patents assigned to Ventana: U.S. Patent No. 5,595,707 (the “’707 patent”); U.S.
Patent No. 5,650,327 (the “’327 patent”); U.S. Patent No. 5,654,199 (the “’199 patent”);
U.S. Patent No. 5,654,200 (the “’200 patent”); U.S. Patent No. 6,827,901 (the “’901
patent”); and U.S. Patent No. 6,943,029 (the “’029 patent”). All seven of these patents
share a common specification. The common specification discusses various previously
known automated staining devices and asserts that such prior art devices “are limited in
their performance and unable to satisfy the needs for automated, high precision
immunohistology.” ’861 patent, col. 2, ll. 26-28. To overcome these problems, the
inventors of this family of patents sought to
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provide a device which provides more rapid, reliable and more
reproducible results than standard methods; can perform any standard
immunochemical assay . . . ; preforms [sic] all steps of the
immunohistochemical assay irrespective of complexity or their order, at
the time and temperature, and in the environment needed; and is cost
effective in terms of equipment, reagent and labor costs.
’861 patent, col. 2, ll. 29-38.
The common specification discloses an automated slide staining apparatus
possessing multiple features, and each of Ventana’s seven patents claims various
combinations of these features and methods related to these features. For example,
the ’327 patent is entitled “Method for Mixing Reagent and Sample Mounted on a Slide”
and the claims relate to methods that use streams of gas to stir the reagents on the
slide surface. In contrast, the claims of the ’861 patent relate to automated dispensing
systems that employ bar code-labeled reagent containers and/or slides. As described
in the patent specification,
[b]ar code reader 231 (FIG. 14) above slide 205 reads a slide bar code
233 (FIGS. 13 and 17) on each slide. The slide bar codes [sic] 233
identifies the slide sample and the particular immunohistochemical
process required for that sample. This information is fed into the computer
and correlated with the indexed position of that slide with respect to
“home”, to control the sequence of reagent chemicals to be applied to that
slide in the reagent application zone.
’861 patent, col. 9, ll. 48-55. The specification further discloses that the reagent
containers may also be labeled with bar codes:
A reagent bar code reader 346 can be mounted on post 302, positioned to
scan a reagent bar code 348 on the reagent bottle 12. Bar code 348
identifies the contents of the reagent bottle. At the beginning of a slide
treatment operation, the reagent carousel 10 is rotated past the bar code
reader 346, and the bar code 348 on each reagent bottle 12 is scanned.
The scanned information is fed to the computer and correlated with the
indexed position of the reagent carousel 10. This information is used to
rotate the reagent carousel 10 to place the correct reagent bottle 12 in the
application zone for each slide treatment step for each slide.
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Id., col. 12, ll. 28-38.
BioGenex manufactures and sells automated staining devices. On February 11,
2003, Ventana filed suit against BioGenex alleging infringement of claims 1, 2, 3, 5, 6,
and 8 of the ’861 patent. The district court held a Markman hearing and construed
certain disputed claim terms in a written opinion. Ventana Med. Sys., Inc. v. BioGenix
[sic] Labs., Inc., No. 03-CV-92, slip op. at 1-17 (D. Ariz. Aug. 23, 2005) (“Claim
Construction Order”). In light of the district court’s construction of the claim term
“dispensing,” which appears in all of the asserted claims, Ventana stipulated to a
judgment of noninfringement and reserved its right to appeal the district court’s claim
construction. Accordingly, the district court entered a final judgment of noninfringement.
Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., No. 03-CV-92, slip op. at 1-2 (D. Ariz.
Oct. 4, 2005). Ventana now appeals.
DISCUSSION
I
The sole issue on appeal is the proper construction of the claim term
“dispensing” in asserted claims 1, 2, 3, 5, 6, and 8 of the ’861 patent. Of the asserted
claims, claims 1 and 5 are independent. Both cover “[a] method of dispensing reagents
onto a slide.” Claim 1 reads:
1. A method of dispensing reagents onto a slide, the method comprising
the steps of:
providing at least one reagent container;
providing at least one slide on a slide support;
automatically identifying the reagent container using a computer;
automatically determining whether reagent in the reagent container should
be dispensed onto the slide; and
dispensing the reagent in the reagent container onto the slide based on
the determination of whether the reagent in the reagent container should
be dispensed onto the slide,
06-1074 4
wherein the step of automatically determining whether reagent in the
reagent container should be dispensed onto the slide includes the steps
of:
providing a bar code reader;
reading a slide bar code placed on the slide using the bar code reader
thereby acquiring slide information, the slide information indicating
reagents to be applied to the slide; and
sending the slide information to the computer.
’861 patent, col. 24, l. 53 - col. 25 l. 6 (emphases added). And claim 5 reads:
5. A method of dispensing reagents onto a slide, the method comprising
the steps of:
providing a plurality of reagent containers in a reagent support, each of the
reagent containers having a reagent barcode;
providing at least one slide on a slide support, the slide having a bar code;
providing a bar code reader;
reading the bar codes on the reagent containers;
determining reagents in the reagent containers based upon the reading of
the bar codes on the reagent containers;
reading the slide bar code on the at least one slide;
determining a sequence of reagents to be applied on the at least one slide
based upon the reading of the slide bar code on the slide; and
dispensing the reagents in the reagent containers based upon the
sequence of reagents to be applied.
’861 patent, col. 25, ll. 18-36 (emphases added).
The district court construed the “dispensing” claim limitation to require “direct
dispensing,” meaning that “the reagent is dispensed directly from the reagent container”
onto the slide, rather than utilizing an intermediate transport mechanism to transfer
reagent from the reagent container to the slide. Claim Construction Order, slip op. at 5-
7. The district court held that the context in which the “dispensing” term is used in the
claim “necessitates ‘direct dispensing’ by stating that the reagent in the reagent
container is dispensed onto the slide, meaning the reagent is dispensed directly from
the reagent container.” Id., slip op. at 6. The district court also noted that the written
description and figures supported a narrow construction of “dispensing” because all of
06-1074 5
the disclosed embodiments dispense reagent directly from the bottom of the reagent
container without using any intermediate transfer device. Id., slip op. at 7.
After construing the term “dispensing” to mean “direct dispensing,” the district
court held that the inventors disclaimed a particular type of dispensing, “sip and spit”
dispensing, during the prosecution of an ancestor application. In “sip and spit”
dispensing, an intermediate transport mechanism such as a pipette uses suction to “sip”
the reagent from the reagent container and then releases or “spits” the reagent onto the
slide. The ’861 patent issued from a continuation of a continuation of a division of a
continuation of U.S. Patent Application No. 07/924,052 (the “’052 application”), which
originally presented 93 claims.1 Independent claim 1 of the ’052 application provided:
1. A biological reaction apparatus for dispensing a selected reagent
directly to a sample, said biological reaction apparatus having:
a reagent carousel having a plurality of reagent container supports
thereon;
homing and indexing means, operatively coupled to the reagent carousel,
for identifying the position of each reagent container support with
reference to a home position; and
drive means, engaging the reagent carousel and operatively coupled to
said homing and indexing means, for rotating the reagent carousel and
positioning a preselected reagent container support in a reagent supply
zone wherein said reagent supply zone is oriented so that a reagent in a
container in said preselected reagent container support is dispensable
directly to a sample.
(emphases added). The examiner rejected independent claim 1 and dependent claims
2-3 and 5-6 of the ’052 application under 35 U.S.C. § 103 as being unpatentable over
two prior art references, Wakatake et al. and Assmann et al. In response, the inventors
argued that neither the Wakatake nor the Assmann reference disclosed the capability to
dispense reagent “directly to a sample”:
1
The six patents that share a common disclosure with the ’861 patent are
all descendants of the ’052 application.
06-1074 6
[E]ven in the unlikely event that Wakatake and Assmann were
successfully combined into one system, the resulting system would still
lack the present invention’s novel capability to dispense reagent “directly
to a sample” as set forth in Applicants’ Claim 1, at line 16.
....
. . . [T]he recited apparatus provides for direct dispensing of
reagent from a reagent container to a sample. . . . The present invention
uses the “drive means” to rotate the “reagent carousel.” The reagent
carousel holds the reagent containers. As can be seen in the Figures, the
Reagent carousel is positioned above the samples and the reagent
containers are oriented within the carousel with their outlet nozzles
pointing down such that they are ready to dispense reagent directly to the
sample below. . . .
In contrast, Wakatake et al teaches reagent tables positioned side
by side with a reaction table. (Wakatake et al, Figure 2). This side by side
configuration precludes dispensing of the reagent “directly to a sample” or
the incorporation of a “reagent delivery zone” as set forth in Claim 1 of the
present invention. The Wakatake side by side configuration requires an
additional device, a reagent pipetting device, to transfer the reagent
between tables and mediate the dispensing of reagent to the sample. The
reagent pipetting device is used to suck up an aliquot of reagent from a
reagent container on one of at least two reagent tables, pivot so that the
pipetting tube of the device is held just above a selected reaction vessel
on a separate reaction table, and dispense the aliquot of reagent to the
vessel (Wakatake at column 4, line 42 to column 5, line 10). Such devices
are referred to in the trade as “sip and spit” devices.
The district court held that these statements during prosecution amounted to a “clear
and unmistakable” disclaimer of “sip and spit” dispensing from claim 1 of the ’052
application. Claim Construction Order, slip op. at 11. The district court further held that
this disclaimer attached to claims 1 and 5 of the ’861 patent
because there is a common claim limitation to which the disclaimer is
directed: “direct dispensing.” The court has already construed the claim
term “dispensing” in the ’861 patent to mean “direct dispensing” and thus,
the ’052 application and ’861 patent have the same claim limitation. The
“sip and spit” disclaimer may properly attach to the ’861 patent (direct)
dispensing limitation.
Id.
06-1074 7
II
This court reviews claim construction de novo. Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). On appeal, Ventana argues that the
district court improperly limited the scope of the term “dispensing” to cover only those
methods of dispensing in which the reagent container is also the reagent dispenser (i.e.,
“direct dispensing”). Accordingly, Ventana asks this court to reverse the district court’s
claim construction and construe the phrase “dispensing” to mean “to apply reagent to
the slide.” We agree that the district court improperly imported limitations from the
specification when it construed the term “dispensing” to require “direct dispensing.”
Claim terms “‘are generally given their ordinary and customary meaning.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). And “the
ordinary and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art.” Id. at 1313. In this case, Ventana argues
that there is nothing in the record to suggest that a person of ordinary skill in the art
would interpret the disclosure and claims of the ’861 patent to mean that the term
“dispensing” is limited to “direct dispensing.” We agree.
To start with, claims 1 and 5 do not contain any language that could be read to
limit the term “dispensing” to require “direct dispensing.” Although “direct dispensing” is
one type of dispensing, BioGenex does not appear to dispute that other types of
dispensing, such as “sip and spit” dispensing, also fall within the ordinary meaning of
“dispensing.” Though the district court held that the word “onto” in the language of the
claim necessitated “direct dispensing” because the claims require that reagent in the
06-1074 8
reagent container be dispensed “onto” the slide, BioGenex agreed at oral argument that
the word “onto” does not by itself exclude the “sip and spit” method of dispensing from
the ordinary meaning of “dispensing.”
Instead, BioGenex argues that the patent’s specification compels a narrow
construction of “dispensing.” BioGenex first points to the “BACKGROUND ART” section
of the patent, which discusses a number of prior art automated staining devices,
including a device that BioGenex alleges employs the “sip and spit” method of
dispensing. ’861 patent, col. 2, ll. 6-16. BioGenex argues that because the patent goes
on to state that “[t]he previously known devices are limited in their performance and
unable to satisfy the needs for automated, high precision immunohistology” and that it
was an object of the invention to “provide a device which provides more rapid, reliable
and more reproducible results than standard methods,” id. at col. 2, ll. 26-31, the patent
makes clear that the invention does not practice the “sip and spit” method of dispensing.
We decline to interpret these general statements by the inventors to effect a
complete surrender from the claims of the ’861 patent of all types of dispensing except
“direct dispensing.” For one thing, the “BACKGROUND ART” section includes
discussion of a number of different prior art devices that employ a number of different
dispensing techniques, including a device that employs a “direct dispensing” technique.
Id. at col. 1, l. 65 - col. 2, l. 5 (“Stark, E. et al, J.Immunol.Methods. 107:89-92 (1988)
describes a microprocessor controlled system including a revolving table or carousel
supporting radially positioned slides. A stepper motor rotates the table, placing each
slide under one of the stationary syringes positioned above the slides. A predetermined
volume of liquid, determined by a dial, is delivered to a slide from each syringe.”). Thus,
06-1074 9
if BioGenex’s argument were correct, the inventors have also disavowed coverage of
“direct dispensing,” which is the type of dispensing employed by the patent’s preferred
embodiment. For this reason, BioGenex’s argument cannot be correct.
Moreover, this is not a case in which the inventor’s distinguishing the invention
over the prior art in the specification results in a disavowal of coverage by the inventor
of features in the prior art. In Phillips, we recognized that in certain cases, “the
specification may reveal an intentional disclaimer, or disavowal, of claim scope by the
inventor.” Phillips, 415 F.3d at 1316. In such cases, this court interprets the claim more
narrowly than it otherwise would to give effect to the inventor’s intent to disavow a
broader claim scope. Id.; Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1319-
20 (Fed. Cir. 2006); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
F.3d 1337, 1342-44 (Fed. Cir. 2001). Here, however, BioGenex points to only general
statements by the inventors indicating that the invention is intended to improve upon
prior art automated staining methods: “The previously known devices are limited in their
performance and unable to satisfy the needs for automated, high precision
immunohistology. It is an object of this invention to provide a device which provides
more rapid, reliable and more reproducible results than standard methods . . . .” ’861
patent, col. 2, ll. 26-31. Such general statements, without more, will not be interpreted
to disclaim every feature of every prior art device discussed in the “BACKGROUND
ART” section of the patent.
Next, BioGenex points out that all of the ’861 patent’s disclosed embodiments
employ a “direct dispensing” method of dispensing. BioGenex submits that when the
specification is read in its entirety, one of skill in the art would come to the “inescapable
06-1074 10
conclusion that the novelty of Ventana’s invention is the birthday cake or over/under
carousel arrangement for direct dispensing.” As a result, BioGenex argues, the
specification has implicitly defined the term “dispensing” to mean “direct dispensing.”
There are, however, several problems with this argument. “It is a ‘bedrock
principle’ of patent law that ‘the claims of a patent define the invention to which the
patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
Cir. 2004)). “[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to those
embodiments.” Id. at 1323. While the fact that the disclosed embodiments are limited
can assist in interpreting claim language, the mere fact that the ’861 patent discloses
embodiments in which the reagent container is also the reagent dispenser does not in
and of itself mean that the method claims at issue are limited to the disclosed
embodiments.
The second problem with BioGenex’s argument is that each claim does not
necessarily cover every feature disclosed in the specification. When the claim
addresses only some of the features disclosed in the specification, it is improper to limit
the claim to other, unclaimed features. Id. at 1327; see also Golight, Inc. v. Wal-Mart
Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to
include within each of their claims all of [the] advantages or features described as
significant or important in the written description.”); E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1370 (Fed. Cir. 2003) (“An invention may possess a number of
advantages or purposes, and there is no requirement that every claim directed to that
06-1074 11
invention be limited to encompass all of them.”). Here, the claims of the ’861 patent are
directed toward automated methods of dispensing that use bar codes to determine
which reagents should be dispensed onto which slides. Although the preferred
embodiments also contain a “direct dispensing” feature, the inventors were not required
to claim this feature in the ’861 patent and, indeed, did not do so.
III
Ventana also argues that the district court erred in holding that the inventors of
the ’861 patent disclaimed coverage of “sip and spit” dispensing during prosecution of
the ’052 application, an ancestor of the ’861 patent. BioGenex responds that the
inventors disclaimed “sip and spit” dispensing when they distinguished the prior art “sip
and spit” devices because of those devices’ inability to dispense reagent “directly to a
sample,” as required claim 1 of the ’052 application.
BioGenex thus raises the doctrine of prosecution disclaimer. “[T]he prosecution
history can often inform the meaning of the claim language by demonstrating how the
inventor understood the invention and whether the inventor limited the invention in the
course of prosecution, making the claim scope narrower than it would otherwise be.”
Phillips, 415 F.3d at 1317. Accordingly, we examine the patent’s prosecution history,
when placed in evidence, to determine whether the inventor disclaimed a particular
interpretation of a claim term during the prosecution of the patent in suit or during the
prosecution of an ancestor application. Id.; Advanced Cardiovascular Sys. v. Medtronic,
Inc., 265 F.3d 1294, 1305-06 (Fed. Cir. 2001). But the doctrine of prosecution
disclaimer generally does not apply when the claim term in the descendant patent uses
different language. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1078 (Fed.
06-1074 12
Cir. 2005) (“[T]he prosecution of one claim term in a parent application will generally not
limit different claim language in a continuation application.”); ResQNet.com, Inc. v.
Lansa, Inc., 346 F.3d 1374, 1383 (Fed. Cir. 2003) (“Although a parent patent’s
prosecution history may inform the claim construction of its descendant, the [parent]
patent’s prosecution history is irrelevant to the meaning of this limitation because the
two patents do not share the same claim language.”); Advanced Cardiovascular Sys.,
265 F.3d at 1305-06.
In this case, the allegedly disclaiming statements were made with respect to
claim language that expressly required reagent in the reagent container to be
“dispensable directly to a sample.” Indeed, in distinguishing the prior art, the inventors
stated that the prior art “sip and spit” devices lacked “the present invention’s novel
capability to dispense reagent ‘directly to a sample’ as set forth in Applicants’ Claim 1,
at line 16” (emphasis added). Because claims 1 and 5 of the ’861 patent use different
claim language—that is, they do not require that reagent be “dispensable directly to a
sample”—the alleged disclaimer of “sip and spit” dispensing during the prosecution of
the ’052 application does not apply to the asserted claims of the ’861 patent.2
2
BioGenex makes a number of arguments in response to a perceived
argument by Ventana that a disclaimer made during prosecution of the ’052 application
does not apply to the claims of the ’861 patent because the ’861 patent resulted from a
divisional application as opposed to a continuation application. We do not understand
Ventana to be making this argument, however, so we need not address BioGenex’s
responses to it. Regardless of whether the ’861 patent resulted from a divisional
application or a continuation application, the alleged disclaimer of “sip and spit”
dispensing does not apply to the asserted claims of the ’861 patent because claim 1 of
the ’052 application and the asserted claims of the ’861 patent do not share a common
claim term in dispute.
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Indeed, we agree with Ventana that the prosecution history of the ’861 patent
supports a broad construction of “dispensing.” For example, during the prosecution of
the application that led to the ’861 patent, the examiner issued a restriction requirement.
With respect to the application claims that eventually resulted in claims 1 and 5 of the
’861 patent, the examiner observed that “the process as claimed can be practiced by
another materially different apparatus or by hand, such as a manual pipette means.”
This statement shows that the patent examiner did not consider the “dispensing” claim
term to be limited to the “direct dispensing” embodiment disclosed in the specification.
Moreover, the inventors did not rely on “direct dispensing” as a distinction between the
claims at issue in this case and the prior art. Instead, in response to rejections over the
prior art, the inventors limited their arguments to the ability of the claimed inventions to
address the shortcomings of manual reagent identification and manual determination of
reagent dispensing protocols.
IV
BioGenex next argues that the inventors disclaimed “sip and spit” dispensing
from claims 1 and 5 of the ’861 patent during the prosecution of two later-issued
patents, the ’901 patent and the ’029 patent. The district court did not address the
relevance, if any, of the prosecution histories of the ’901 and the ’029 patents in its
claim construction opinion. Nevertheless, for the reasons described below, we agree
with Ventana that the prosecution histories of these later patents do not inform the
proper construction of “dispensing” in claims 1 and 5 of the ’861 patent.
The ’861 patent issued from U.S. Patent Application No. 09/452,309 (the “’309
application”). Each of the later-issued patents resulted from continuations of the ’309
06-1074 14
application.3 Independent claim 72 of the ’169 application (which issued as claim 1 of
the ’901 patent) provided, in part:
72. A biological reaction apparatus for dispensing a selected reagent to a
slide containing a sample, said biological reaction apparatus comprising:
a reagent carousel having a plurality of reagent container supports
thereon;
a homing and indexing device, operatively coupled to the reagent
carousel, for identifying the position of each reagent container support with
reference to a home position;
[and] a motor engaging the reagent carousel and operatively coupled to
said homing and indexing device, for rotating the reagent carousel and
positioning a preselected reagent container support in a reagent supply
zone, wherein said reagent supply zone is oriented so that reagent in a
container in said preselected reagent container support is dispensable to a
slide and wherein each of the reagent container supports is arranged to
accommodate a reagent container such that it is positioned above a slide
when in the reagent supply zone whereby the reagent is dispensable from
a lower end of said container onto the slide . . . .
(emphases added).
In responding to a obviousness rejection of application claim 72 and its
corresponding dependent claims, the inventors distinguished a prior art “sip and spit”
reference because it transferred reagents “by pipettes into cuvettes 106 held in sample
analysis carousels 102 that are adjacent to and not below the reagent carousel” as
required by the claims. In distinguishing another prior art reference, the inventors stated
that
the invention of claim 72 et al. includes a sample carousel arranged
beneath a reagent carousel [and] the reagent is dispensed onto a slides
[sic] position below the reagent carousel. . . .
Locating the carousel including samples containing slides below the
reagent carousel is an important feature of the claimed invention because
it allows the reagent to be applied directly to the samples on the slides.
3
The ’901 patent issued from U.S. Patent Application No. 10/137,169 (the
“’169 application”), which was a continuation of a continuation of the ’309 application.
The ’029 patent issued from U.S. Patent Application No. 10/054,535 (the “’535
application”), which was a continuation of the ’309 application.
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BioGenex asserts that these statements amount to a disclaimer of “sip and spit
dispensing” that should be applied to the claims of the ’861 patent.
We have held that statements made by the inventor during continued prosecution
of a related patent application can, in some circumstances, be relevant to claim
construction. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed.
Cir. 2004) (recognizing that “the prosecution history of one patent is relevant to an
understanding of the scope of a common term in a second patent stemming from the
same parent application”). As with statements made by the inventor during the
prosecution of an ancestor application, statements made during the continued
prosecution of a sibling application may “inform the meaning of the claim language by
demonstrating how the inventor understood the invention.” Phillips, 415 F.3d at 1317.
But here, once again, BioGenex points to statements made with respect to claim
language that expressly required the reagent to be “dispensable from a lower end of
[the] container onto the slide.” Because claims 1 and 5 of the ’861 patent do not contain
this claim language, these statements are not relevant to the construction of
“dispensing” in claims 1 and 5 the ’861 patent.
Similarly unpersuasive is BioGenex’s assertion that the inventors disclaimed “sip
and spit” dispensing during prosecution of the ’029 patent. Independent claim 92 of the
’535 application (which issued as claim 17 of the ’029 patent) called for “a method of
dispensing reagents onto a slide” where the reagent container and the slide support are
moved “relative to one another to position the reagent container over the slide.” In
response to an obviousness rejection, the inventors distinguished a prior art “sip and
spit” device because it positioned the reagent containers adjacent to the receptacles
06-1074 16
into which the reagents were dispensed. Thus, the prior art device did not position the
reagent container “over the slide,” as required by the claim. Claims 1 and 5 of the ’861
patent, however, do not contain this language. Consequently, the statements pointed to
by BioGenex are not relevant to the construction of “dispensing” in claims 1 and 5 the
’861 patent.4
CONCLUSION
Because the district court erred in its construction of “dispensing,” we vacate the
judgment of noninfringement and remand for further proceedings.
COSTS
Each party shall bear its own costs.
VACATED AND REMANDED
4
BioGenex also points out that the patent examiner issued an obviousness-
type double patenting rejection of all of the claims of the ’535 application over the claims
of the ’861 patent. The inventors responded to the obviousness-type double patenting
rejection by filing a terminal disclaimer. BioGenex argues that the filing of the terminal
disclaimer represents an admission by the inventors “equating all claims of the ’535
application to all claims of the ’861 Patent.” As a result of the terminal disclaimer,
BioGenex argues, any prosecution disclaimer of “sip and spit” dispensing in the ’535
application applies to the claims of the ’861 patent. We disagree. For one thing, “the
filing of a terminal disclaimer simply serves the statutory function of removing the
rejection of double patenting, and raises neither presumption nor estoppel on the merits
of the rejection.” Quad Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874
(Fed. Cir. 1991). Moreover, the inventors’ filing of a terminal disclaimer does not
change the fact that the asserted claims of the ’861 patent do not contain the “over the
slide” limitation present in claim 92 of the ’535 application. As a result, arguments made
during prosecution of the ’535 application with respect to whether the prior art “sip and
spit” devices positioned the reagent container “over the slide” are irrelevant to the
construction of “dispensing” in claims 1 and 5 of the ’861 patent.
06-1074 17
United States Court of Appeals for the Federal Circuit
06-1074
VENTANA MEDICAL SYSTEMS, INC.,
Plaintiff-Appellant,
v.
BIOGENEX LABORATORIES, INC.,
Defendant-Appellee.
LOURIE, Circuit Judge, dissenting.
I respectfully dissent from the majority’s decision to vacate and remand based
upon its construction of the term “dispensing.” I believe that the district court correctly
construed the disputed term in light of the specification and, for that reason, I would
affirm.
“[T]he person of ordinary skill in the art is deemed to read the claim term not only
in the context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The specification “is always highly relevant
to the claim construction analysis. Usually it is dispositive; it is the single best guide to
the meaning of a disputed term.” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). When read in the context of the
specification, the claim term “dispensing” clearly means “direct dispensing.”
The ’861 patent is part of a family of six other patents sharing a common
specification, although only claim 15 of the ’707 patent expressly recites “direct
dispensing.” Claim 1 of application 07/924,052, which eventually was abandoned, was
amended to include the word “direct dispensing” in order to overcome prior art. Claim 1
of the ’861 patent is broader and makes no reference to dispensing directly.
Nonetheless, the claims must be construed in light of the specification, which is the
same for all seven patents and which repeatedly describes dispensing reagent directly
from a reagent container onto a slide.
The Summary of the Invention describes “positioning a preselected reagent
container support and associated reagent container in a reagent supply zone. The
apparatus has a reagent delivery actuator means positioned for engaging a reagent
container positioned on a container support in the reagent supply zone and initiating
reagent delivery from the reagent container to a slide supported on a slide support in
the reagent receiving zone.” ’861 patent, col. 2, ll. 53-59. The Summary further
describes using a “volumetric pump means, and a reagent delivery actuator means
positioned for activating the volumetric pump means, thereby effecting delivery of
reagent from a reagent container by the volumetric pump to the reagent delivery zone.”
’861 patent, col. 3, ll. 53-56. Those statements of delivery from a reagent container to a
slide describe direct dispensing. They describe the essence of the invention and clearly
show that the reagent is dispensed directly from a reagent container positioned in a
support onto a slide.
Such statements are repeated throughout the rest of the specification. For
example, in the Detailed Description of the Invention, the specification describes that
2
“[t]he carousel 10 is rotated by the stepper motor 14 drive belt 16 to a position placing a
selected reagent bottle 12 in the reagent delivery position under the air cylinder reagent
delivery actuator 18 over a slide to be treated with reagent.” ’861 patent, col. 6, ll. 54-
57. The specification further indicates that the “reagent delivery actuator 18, supported
by support arm 216, contacts reagent bottle 218, directly over slide 214.” ’861 patent,
col. 9, ll. 24-26 (emphasis added). The text accompanying Figure 15 describes the
dispensing: “Delivery of pressurized air to the cylinder 18 causes rod 304 and its
attached foot 306 to move downward against a reagent container 12 positioned in the
reagent delivery zone. Downward movement of reagent container 12 causes emission
of a precise volume of reagent liquid 310.” ’861 patent, col. 11, ll. 40-45. Finally,
Figures 1, 2, 3, 4, 11, 15 depict the apparatus that employs direct dispensing. The
figures depict reagent containers in a carousel placed directly over a slide to dispense
the reagent from the container onto the slide.
Statements describing dispensing reagent directly from a reagent container onto
a slide are thus found in the abstract, the summary of the invention, the detailed
disclosure of the invention, and the figures. Those statements do not merely describe a
preferred embodiment of the invention; they broadly disclose the overall invention of all
seven patents. The majority points out that, because the preferred embodiment
discloses direct dispensing, we should not limit the claims to only that which is the
disclosed embodiment. However, this is not a case of limiting the claims by looking at a
preferred embodiment. Direct dispensing is the essence of the invention, and the
specification supports that conclusion. The specification, shared by all seven patents,
leads to the “inescapable conclusion” that the invention of the ’861 patent consists of
3
“direct dispensing.” Microsoft Corp. v. Mult-Tech Sys., Inc., 357 F.3d 1340, 1348 (Fed.
Cir. 2004) (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
1337, 1342 (Fed. Cir. 2001)). Moreover, nowhere does the specification suggest that
the invention includes the alternative “sip and spit” dispensing method, involving
dispensing reagent from an upright container by means of a pipette. Accordingly, I
believe that the district court correctly construed the claims to require “direct
dispensing.”
An examination of the prosecution history confirms that Ventana viewed its
inventions as limited to direct dispensing. In a related grandparent application, in order
to overcome an examiner’s rejection, Ventana argued that the prior art lacked the
“present invention’s novel capability to dispense reagent ‘directly to a sample’” and that
the “apparatus of the present invention” uses a reagent carousel and reagent container
supports, “which minimize the time required to apply a given reagent, and the time
between the application of multiple reagents, by dispensing reagent ‘directly to a
sample.’” Ventana further stated: “As can be seen in the Figures, the reagent carousel
is positioned above the samples and the reagent containers are oriented within the
carousel with their outlet nozzles pointing down such that they are ready to dispense
reagent directly to the sample below.” Those statements made in the prosecution of the
related patent application, having the same specification, reflect that Ventana
understood its own invention to be limited to direct dispensing. We cannot construe the
claims to cover subject matter broader than that which the patentee described in its
specification, regarded as comprising its invention, and represented to the Patent and
Trademark Office.
4
Even though those statements from the prosecution were made in a grandparent
patent application, they relate to the common specification and reflect Ventana’s own
understanding of its invention. I believe, therefore, that the statement in the prosecution
of the ’052 application is indicative of the proper interpretation of the same claim term in
the later-issued ’861 patent.
In sum, the district court appropriately considered the specification and related
prosecution history and determined the ordinary meaning of “dispensing” in light of all
the intrinsic evidence. I see no error in the court’s approach or result. Accordingly, I
would affirm the district court’s claim construction.
5
Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc.
Court: Court of Appeals for the Federal Circuit
Date filed: 2006-12-29
Citations: 473 F.3d 1173
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