EXHIBIT 1026:
`
`Defendants’ Claim Construction Brief (Doc. 249)
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`
`
`Pharmatech Solutions, Inc.: EXHIBIT 1026
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page1 of 23
`
`WILLIAM RUDY (pro hac vice)
`wrudy@lathropgage.com
`JOHN J. SHAEFFER (SBN No. 138331)
`jshaeffer@lathropgage.com
`LATHROP & GAGE LLP
`1888 Century Park East, Suite 1000
`Los Angeles, CA 90067
`Telephone: (310) 789-4600
`Fax: (310) 789-4601
`
`Attorneys for Defendants
`Instacare Corp. and Pharmatech Solutions, Inc.
`
`ROBERT P. ANDRIS (SBN 130290)
`randris@rmkb.com
`LAEL D. ANDARA (SBN 215416)
`landara@rmkb.com
`ROPERS, MAJESKI, KOHN & BENTLEY
`1001 Marshall Street, Suite 500
`Redwood City, CA 94063-2052
`Telephone
`(650) 364-8200
`Facsimile
`(650) 780-1701
`
`Attorneys for Defendants
`Shasta Technologies, LLC and Conductive Technologies, Inc.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`LIFESCAN, INC. and LIFESCAN
`SCOTLAND, LTD,
`
`
` v.
`
`Plaintiffs,
`
`SHASTA TECHNOLOGIES, LLC,
`INSTACARE CORP., PHARMATECH
`SOLUTIONS, INC. and CONDUCTIVE
`TECHNOLOGIES, INC,
`
`
`
`Defendants.
`
`Case No. 5:11-CV-4494 EJD
`
`DEFENDANTS’ CLAIM CONSTRUCTION
`BRIEF
`
`Hon. Edward J. Davila
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-2
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page2 of 23
`
`TABLE OF CONTENTS
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`INTRODUCTION AND SUMMARY OF ARGUMENT .............................................................. 1
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`.
`
` I
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`II. BACKGROUND ............................................................................................................................. 5
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`III. RELEVANT LAW ON CLAIM CONSTRUCTION ...................................................................... 6
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`IV. THE DISPUTED CLAIM CONSTRUCTION: “PROPORTION(AL)” IN THE ‘105 PATENT .. 7
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`A. The Intrinsic Record Supports Defendants’ Construction ..................................................... 8
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`1.
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` Disclosure in The Patent Specification ........................................................................... 8
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`2.
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` The Prior Art – Intrinsic ................................................................................................. 9
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`3.
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` Preferred and Commercial Embodiments ..................................................................... 13
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`B. The Extrinsic Record Supports Defendants’ Construction .................................................. 15
`
`1.
`
` Dictionary Definition .................................................................................................... 15
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`2.
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` FDA Statement ............................................................................................................. 16
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`V. CONCLUSION .............................................................................................................................. 18
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`i
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
` [Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-3
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page3 of 23
`
`Cases
`
`TABLE OF AUTHORITIES
`
`ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
` 732 F.2d 1572 (Fed. Cir. 1984) .......................................................................................................... 14
`
`Apple, Inc. v. Samsung Electronics Co., Ltd.,
` 877 F. Supp. 2d 838 (N.D. Cal. 2012) ................................................................................................. 6
`
`Chimie v. PPG Industries, Inc.,
`402 F.3d 1371 (Fed. Cir. 2005) .......................................................................................................... 13
`
`EMI Group North America, Inc. v. Cypress Semiconductor Corp.,
` 268 F.3d 1342 (Fed. Cir. 2001) .......................................................................................................... 14
`
`Hoechst Celanese Corp. v. BP Chemicals Ltd.,
` 78 F.3d 1575 (Fed. Cir. 1996) ............................................................................................................ 13
`
`In re Wooddy,
` 331 F.2d 636 (C.C.P.A. 1964) ........................................................................................................... 15
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
` 381 F.3d 1111 (2004) ........................................................................................................................... 9
`
`Intel Corp. v. VIA Technologies, Inc.,
` 319 F.3d 1357 (Fed. Cir. 2003) .......................................................................................................... 16
`
`Int'l Visual Corp. v. Crown Metal Co.,
` 991 F.2d 768 (Fed. Cir. 1993) ............................................................................................................ 14
`
`Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp.,
` 309 F.3d 1365 (Fed. Cir. 2002) ............................................................................................................ 9
`
`K-2 Corp. v. Salomon S.A.,
` 191 F.3d 1356 (Fed. Cir. 1999) ............................................................................................................ 6
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
` 358 F.3d 898 (Fed.Cir.2004) ................................................................................................................ 7
`
`Malico, Inc. v. Cooler Master USA, Inc.,
`2012 WL 3582970 (N.D. Cal. Aug. 20, 2012) ..................................................................................... 9
`
`Markman v. Westview Instruments, Inc.,
` 52 F.3d 967 (Fed. Cir. 1995) .......................................................................................................... 7, 16
`
`North American Vaccine, Inc. v. American Cyanamid Co.,
`7 F.3d 1571 (Fed. Cir. 1993) .............................................................................................................. 16
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`ii
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
` [Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-4
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page4 of 23
`
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 6, 7, 15
`
`TDM America, LLC v. U.S.,
` 85 Fed.Cl. 774 (Fed. Cl. 2009) ............................................................................................................ 9
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
` 103 F.3d 1554 (Fed. Cir. 1997) ............................................................................................................ 6
`
`Vitronics Corp. v. Conceptronic, Inc.,
` 90 F.3d 1576 (Fed. Cir. 1996) .......................................................................................................... 6, 7
`
`Wang Laboratories, Inc. v. America Online, Inc.,
` 197 F.3d 1377 (Fed. Cir. 1999) .......................................................................................................... 14
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`Statutes
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`35 U.S.C. § 101 ...................................................................................................................................... 17
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`35 U.S.C. § 103 ...................................................................................................................................... 17
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`iii
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
` [Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-5
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page5 of 23
`
`MEMORANDUM OF POINTS AND AUTHORITIES
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`Defendants Instacare Corp., Pharmatech Solutions, Inc., Shasta Technologies, LLC and
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`Conductive Technologies, Inc. (collectively, “Defendants”) submit this brief and supporting evidence
`
`responding to Lifescan’s Opening Claim Construction Brief (“LOCCB”), filed by Plaintiffs Lifescan,
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`Inc. and Lifescan Scotland Ltd. (collectively, “Lifescan”) regarding U.S. Patent No. 7,250,105 (the
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`“‘105 Patent”). Proceedings regarding the other patents in this litigation, U.S. Patent Nos. 5,708,247
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`(the “‘247 Patent”) and 6,241,862 (the “‘862 Patent”) have been stayed, and are accordingly not
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`addressed herein.1
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`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT
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`Lifescan detests the thought of anyone marketing and selling disposable test strips compatible
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`with its OneTouch Ultra family of glucose meters. Concerned that the FDA would soon permit
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`Defendants’ Genstrip to compete in this manner, Lifescan filed a preemptive lawsuit on September 9,
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`2011 seeking a declaration from this Court that the Genstrip infringed its ‘247 and ‘862 Patents. (D.E.
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`1) In August 2012, nearly a year later, but before the FDA rendered its decision on the Genstrip,
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`Lifescan announced to this Court that it would promptly seek to enjoin any sale of the Genstrip. Yet it
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`did not do so. Instead, in late October, Lifescan filed a motion to add the ‘105 Patent to this case.
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`(D.E. 152) Thereafter, on December 19, 2012, Lifescan did finally move for a preliminary injunction,
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`but only with respect to the ‘105 Patent. (D.E. 176)
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`As the Court knows from the preliminary injunction briefing and hearing, the parties seek
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`construction of only the term “proportion(al)” in the ‘105 Patent as it appears in the two limitations set
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`forth below.
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`1 Relevant portions of the patents’ prosecution histories as well as other relevant intrinsic and
`extrinsic evidence are attached to the accompanying Declaration of John Shaeffer (“Shaeffer Decl.”)
`to the extent such material was not attached to the Declaration of Sean Marshall (“Marshall Decl.”),
`filed contemporaneously with Lifescan’s LOCCB. For the Court’s convenience, Defendants have
`attached hereto copies of the ‘105, ‘247 and ‘862 Patents as Exhibits A, B, and C, respectively.
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-6
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

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`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page6 of 23
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`Limitation 1: first/second working sensor part for generating charge carriers in
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`proportion to the concentration of said substance in the sample liquid.
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`Limitation 2: measuring an electric current at each working sensor part proportional
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`to the concentration of said substance in the sample liquid.
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`Defendants’ arguments, when viewed through the lens that Lifescan provided the Court in its
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`preliminary injunction reply briefing, accompanying declaration, and Opening Claim Construction
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`Brief are out of focus. This blurred picture naturally led the Court to reach the conclusions that it did
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`regarding “proportion(al)” in the Order Granting Plaintiffs’ Motion for Preliminary Injunction. (D.E.
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`246, at 15-16. There, the Court’s conclusions were predicated on the misunderstanding that: (a) the
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`Defendants “require[e] the electric current itself, rather than the measurement of that current through
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`the manipulation of the current data, to be proportional to the amount of glucose in the blood”; and (b)
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`“the current itself is merely ‘correlated’ to the glucose content in the blood.” (Id.) But Defendants
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`have not, and do not, advance those positions. Further, neither citation to the Declaration of Dr.
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`Joseph Wang (“Wang Decl.”) supports those positions. See Wang Decl., at ¶¶ 26, 28 (discussing
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`measured current, not generated current, and nowhere suggesting that manipulated current cannot be
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`in a fixed ratio with glucose concentration).
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`Instead, and consistent with Dr. Wang’s declaration, the intrinsic evidence, and the extrinsic
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`evidence, Defendants specifically ask the Court to construe “proportion(al)” as “in a fixed ratio,” such
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`that:
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`x
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`charge carriers must be generated in a fixed ratio (in proportion) to a concentration of
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`the substance at issue (e.g., glucose); and
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`x
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`the measurement of electrical current – as opposed to manipulated current data2 – must
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`be in a fixed ratio (proportional) to the concentration of the substance at issue (e.g.,
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`glucose).
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`When viewed through this lens, Defendants’ arguments are in focus and harmonized with all of the
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`evidentiary support.
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`2 Manipulated current data is simply irrelevant to the claims, and may also be in a fixed ratio
`(proportional) to the concentration (though this would not matter under the claims).
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-7
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

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`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page7 of 23
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`As to Limitation 1, the parties do not dispute, and are in full agreement, that the relationship
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`between the charge carriers generated from a blood sample and the concentration of glucose in the
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`blood sample is a fixed ratio (i.e., “proportion(al)”). Defendants’ proposed construction—as it relates
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`to generation of charge carriers – is in accordance with the patent’s specification and all other
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`evidence in this case.
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`The following graph in Figure 1 shows this relationship graphically with an example
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`relationship of:
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`glucose concentration = (4/3)x(generated current).
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`Doubling the generated current from 3 to 6 in this example results in doubled glucose concentration
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`from 4 to 8. Thus, the use of “proportion(al)” in Limitation 1 establishes the meaning of that term as a
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`fixed ratio. This is undisputable and is critical to the construction of claim 1.
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`Generated Current
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`Figure 1
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`Contrary to Lifescan’s contention, however, those knowledgeable in the art customarily
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`distinguish proportional relationships from situations where there is not a fixed ratio because they are
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`different. For example, when discussing the measurement of current in glucose monitoring systems
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`(Limitation 2), which differs from charge carriers generated (Limitation 1) because of such things as
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`background current and temperature, “proportion(al)” is almost never used in the art because there is
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`no fixed ratio. Instead, those knowledgeable in the art typically identify this less exacting relationship
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`3
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-8
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page8 of 23
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`as “correlated to,” depending upon,” or “corresponding to,” and do not use “proportion(al)”
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`interchangeably with these more relaxed relationships. On occasion, “proportional” is used in
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`conjunction with measurement of current, but it is always in such cases defined to mean something
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`other than a fixed ratio. As such, this body of evidence does not defeat the ordinary meaning of the
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`term and the notion that “proportional” in Limiation 2 means what it says, a fixed ratio.
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`So the issue at hand is really whether the Court should eschew the ordinary meaning of the
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`term as it is understood in the art for the more expansive definition proposed by Lifescan (“correlated
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`or correlated to”). Neither the intrinsic evidence nor the extrinsic evidence support such an expansive
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`construction. When analyzing the supporting evidence, care should be taken to consider whether the
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`Limitation 1 (generation) or Limitation 2 (measurement) phrase is implicated. If this distinction is
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`maintained, as it must be, under the tenets of claim construction, all the supporting evidence can be
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`harmonized with Defendants’ constructions.
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`Moreover, it should be understood that even Lifescan’s expert contends that the relationship
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`between glucose concentration and measured current in Lifescan’s commercial embodiment is a very
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`defined linear relationship. (Supp. Meyerhoff Decl, D.E. 242, at 150 (“Note that apart from the
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`adjustments, the calculation relies on a simple linear equation.”)) While the numbers are just
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`examples, a graphical representation of glucose concentration and measured current would look like:
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`Measured Current
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`The graphed relationship above is linear:
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`glucose concentration = (slope)x(measured current)+intercept.
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`In the above example graph, the equation is specifically:
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`4
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-9
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
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`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page9 of 23
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`glucose concentration = (4/3)x(current)+2.
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`But that relationship (current measurement vs. glucose concentration) does not have a constant ratio
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`(or doubling current from 3 to 6 would result in glucose concentration of 12 instead of 10), is not
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`referred to simply as proportional in the art, and should not be adopted as a construction of Limitation
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`2. To do so would place the undisputed meaning of “proportion(al)” in Limitation 1 in direct conflict
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`with that term in Limitation 2.
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`II.
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`BACKGROUND
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`“Glucose monitoring is a fact of everyday life for diabetic individuals.” (Ex. B, ‘247 Patent at
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`1:10). “Known glucose measuring devices now favour an electrochemical measurement method.”
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`(Ex. A, ‘105 Patent at 1:26-27) “[M]eters detect glucose in a blood sample electrochemically, by
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`detecting the oxidation of blood glucose using an enzyme such as glucose oxidase provided as part of
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`a disposable, single-use electrode system,” commonly referred to as a test strip. (Ex. B, ‘247 Patent at
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`1:17-21)
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`“In general, [at the time of the earliest application for any of the patents-in-suit] existing
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`glucose test strips for use in electrochemical meters comprise a substrate, working and reference
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`electrodes formed on the surface of the substrate, and a means for making connection between the
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`electrodes and the meter. The working electrode is coated with an enzyme capable of oxidizing
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`glucose, and a mediator compound which transfers electrons from the enzyme to the electrode
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`resulting in a measurable current when glucose is present.” (Ex. B, ‘247 Patent at 1:25-30)
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`To measure blood glucose, a disposable test strip is inserted into the meter. A droplet of blood
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`is brought into contact with the channel on the edge of the disposable test strip, which travels and
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`comes into contact with the enzyme creating an electric current. “The general principle is that an
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`electric current is measured between two sensor parts called the working and reference sensor parts
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`respectively.” (Ex. A, ‘105 Patent at 1:27-29) “The current generated is proportional to both the area
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`of the sensor part and also the concentration of glucose in the test sample. Since the area of the
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`working sensor part is supposedly known, the electric current should be proportional to the glucose
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`concentration.” (Id. 1:33-38)
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-10
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page10 of 23
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`The application that matured into the ‘105 Patent entitled “Measurement of Substances in
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`Liquids” was filed on May 7, 2003, as a continuation of an application filed on March 8, 2000, which
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`is now U.S. Patent No. 6,733,655 (“‘655 Patent”). The ‘105 Patent includes a single independent
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`method claim. (Ex. A, ‘105 Patent at 6:52-8:5) The ‘105 Patent employs two working sensors and
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`“in accordance with the invention the measuring device compares the current generated by two
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`working sensor parts and gives an error indication if they are too dissimilar – i.e. the current at one
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`sensor part differs too greatly from what would be expected from considering the current at the other.”
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`(Id. 2:27-33) While its specification does not delimit the relationship between the current measured at
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`each working sensor and the concentration of the substance being measured in the sample liquid (id.
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`5:40-43), the ‘105 Patent includes a claim limitation of “measuring the sample liquid at each working
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`sensor part proportional to the concentration of said substance in the sample liquid” (id. 8:11-13). The
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`‘105 Patent issued on July 31, 2007. (Id.)
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`III.
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`RELEVANT LAW ON CLAIM CONSTRUCTION
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`The axioms of construction are well known and adequately described in the LOCCB. A few
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`principles, however, deserve some emphasis.
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`“Claim construction is a matter of resolution of disputed meanings and technical scope, to
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`clarify and when necessary to explain what the patentee covered by the claims, for use in the
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`determination of infringement.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir.
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`1997); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (“the ordinary and
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`accustomed meaning of a disputed claim term is presumed to be the correct one”). “Because the
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`specification must contain a description of the invention sufficiently clear ‘to teach and enable those
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`of skill in the art to make and use the invention,’ the specification is ‘always highly relevant’ and
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`‘[u]sually [] dispositive; it is the single best guide to the meaning of a disputed term.’” Apple, Inc. v.
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`Samsung Electronics Co., Ltd., 877 F. Supp. 2d 838, 860 (N.D. Cal. 2012) (quoting Phillips v. AWH
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`Corp., 415 F. 3d 1303, 1315, 1323 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90
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`F.3d 1576, 1582 (Fed. Cir. 1996))). The Court should also consider the prosecution history, which is
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`considered intrinsic evidence. Phillips, 415 F. 3d at 1307. “Like the specification, the prosecution
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`history was created by the patentee in attempting to explain and obtain the patent.” Id. The
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-11
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

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`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page11 of 23
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`prosecution history “can often inform the meaning of the claim language by demonstrating how the
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`inventor understood the invention and whether the inventor limited the invention in the course of
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`prosecution, making the claim scope narrower than it otherwise would be.” Id.
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`Courts may also use extrinsic evidence, such as dictionaries or treatises, to assist in the
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`construction of claims, so long as such evidence is not used to “vary or contradict the terms of the
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`claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 981 (Fed. Cir. 1995). If the intrinsic
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`evidence resolves the ambiguity in the disputed claim terms, then “it is improper to rely on extrinsic
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`evidence.” Vitronics, 90 F.3d at 1583. “[C]laims should be construed to preserve their validity” only
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`in “cases in which ‘the court concludes, after applying all the available tools of claim construction,
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`that the claim is still ambiguous.’” Phillips, 415 F.3d at 1327 (quoting Liebel-Flarsheim Co. v.
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`Medrad, Inc., 358 F.3d 898, 911 (Fed.Cir.2004)).
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`IV.
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`THE DISPUTED CLAIM CONSTRUCTION: “PROPORTION(AL)” IN THE ‘105
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`Lifescan’s construction
`correlated or correlated to
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`Defendants’ construction
`in a fixed ratio
`
`PATENT
`Claim term
`proportion and proportional
`
`
`Limitation 1:
`first/second working sensor part
`for generating charge carriers in
`proportion to the concentration
`of said substance in the sample
`liquid.
`
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`Limitation 2:
`measuring an electric current at
`each working sensor part
`proportional to the
`concentration of said substance
`in the sample liquid.
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`The Court is asked to construe a single term contained in the ‘105 Patent – proportion(al), as it
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`appears in Limitation 1 and Limitation 2. The specification for the ‘105 Patent uses the disputed term
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`in only one relevant context, when referring to the well-recognized fact that the current generated by a
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-12
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page12 of 23
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`blood sample is in “proportion” (i.e., a fixed ratio) to the concentration of glucose in the sample.3
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`Nowhere in the specification is the term proportional used with the concept of measurement. This
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`well-known, proportional (fixed ratio) relationship between the electric current generated and the
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`concentration of glucose in the sample is precisely why electric biosensors are such an effective tool
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`for measuring glucose levels. (Ex. A, ‘105 Patent at 1:25-38)
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`A.
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`The Intrinsic Record Supports Defendants’ Construction
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`1.
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`Disclosure in The Patent Specification
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`The ‘105 Patent, claim 1 uses the disputed term “proportion(al)” several times.4 First, in the
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`form of the recognized proportional (fixed ratio) relationship between the concentrations of glucose in
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`a sample to the charge carriers generated by the first and second sensors. (Ex. A, ‘105 Patent at 6:55-
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`61) Second, in the form of measuring an electric current at each working sensor part proportional to
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`the concentration of said substance in the liquid. (Id., 7:7-10 (emphasis added)) There is no
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`indication that the meaning of “proportion(al)” in Limitation 1 should be any different than the
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`meaning ascribed to it in Limitation 2.
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`Critically, Limitation 2 is not part of (and does not contradict) the preferred embodiment found
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`in the patent specification, which simply states that “[a]fter a predetermined time the electric current
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`generated by each working sensor is measured and the two measurements compared.” (Id. 5:26-28)
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`As to the meaning of “proportion(al)” in Limitation 2, no guidance is provided by the specification.
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`Lifescan does not dispute either that: (a) the relationship between the charge carriers generated
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`by a blood sample and the concentration of glucose in such sample is a fixed ratio; or (b) proportional
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`is commonly understood as a fixed ratio (at least in the context of mathematics). Lifescan must also
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`recognize the principle of construction that “[o]nce the proper meaning of a term used in a claim has
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`been determined, that term must have the same meaning for all claims in which it appears”. Malico,
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`3 See Ex. A, ‘105 Patent 1:33-38, 2:3-8, 2:25-27; 2:64-67. The specification also recognizes, at 1:33-
`38, that the current generated will be proportional to the size of the senor used, which is not relevant
`to any matter in dispute.
`4 Notably, the examiner referenced the proportionality limitation when describing his grounds for
`allowing the patent to issue. (Shaeffer Decl. Ex. D, p. 34)
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-13
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page13 of 23
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`Inc. v. Cooler Master USA, Inc., 2012 WL 3582970, *2 (N.D. Cal. Aug. 20, 2012) (citing Inverness
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`Med. Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1371 (Fed. Cir. 2002) (“A
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`claim term used in multiple claims should be construed consistently.”)). Because the current
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`measured by its OneTouch Ultra meters is not a fixed ratio to the glucose in the blood sample,
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`Lifescan must convince the Court, and apparently has, to adopt a more relaxed definition of
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`proportion(al) to preserve its infringement claim. To do so, however, leads to a clearly erroneous
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`result. If the Court ultimately adopts the more relaxed definition of “proportion(al)”, that definition
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`would contradict the plain and undisputed meaning of “proportion(al)” in Limitation 1.
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`Since the specification of the ‘105 Patent speaks only to the well-known fact that the electric
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`current generated by a blood sample is in proportion (i.e., in a fixed ratio) to the concentration of
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`glucose in that sample, nothing in the specification supports a broadening of the term proportional to
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`encompass a relationship where A is merely correlated to B, as Lifescan insists. Moreover, the
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`doctrine of claim differentiation strongly suggests that Lifescan intended the creation of charge
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`carriers to be clearly distinguished from the amount of current (charge carriers in motion) that is
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`measured (e.g., due to background noise) through its use of “charge carriers” in the claims when
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`referring to the current specifically created due to the desired reaction and more generally to “current”
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`in the claims when referring to the more expansive current that is actually measured. See TDM
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`America, LLC v. U.S., 85 Fed.Cl. 774, 787 (Fed. Cl. 2009) (citing Innova/Pure Water, Inc. v. Safari
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`Water Filtration Systems, Inc., 381 F.3d 1111, 1119-20 (2004)) (“when an applicant uses different
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`terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a
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`differentiation in the meaning of those terms”). To define “proportional” as merely “correlated to” as
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`Lifescan proposes would strip the true, stated relationship of proportionality between “generating
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`charge carriers” and the concentration of glucose. Defendants’ proposed construction is indeed the
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`only construction in front of the Court that corresponds to the only way that the term is used in the
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`specification.
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`2.
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`The Prior Art – Intrinsic
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`According to Lifescan, to adopt Defendants’ construction would mean that the “usage of
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`“proportion(al) . . . in the prior art would have to be wrong.” (LOCCB, at 10:10-11) To reach this
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF
`[Case No. 5:11-CV-4494 EJD]
`
`Pharmatech Solutions, Inc: 1026-14
`REQUEST FOR INTER PARTES REVIEW
`OF U.S. PATENT NUMBER 7,250,105
`
`

`
`Case5:11-cv-04494-EJD Document249 Filed03/21/13 Page14 of 23
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`bold statement, Lifescan blurs the key distinction set forth above concerning “generation of current”
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`and “measurement of current.” When this key distinction is brought into focus, Defendants’
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`constructions are wholy consonant with the prior art.
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`One of the intrinsic references cited in the prosecution history of the ‘105 Patent does a
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`particularly good job of distinguishing between (a) the principle that the charge generated from a
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`sample is in proportion to the glucose in that sample, and (b) the current measured by a glucose
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`monitor accounts for numerous variables and correlates to, but is not proportional with, glucose
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`concentration.
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`x EP Patent No. 0 942 278 A2 (Kim) – “The presence of hydrogen peroxide generates a
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`current at the biosensor electrode that is directly proportional to the amount of hydrogen
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`peroxide in the reservoir. This current provides a signal which can be detected and
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`interpreted (for example, employing an algorithm using statistical methods) by an
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`associated system controller to provide a glucose concentration value for display.”
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`(Shaeffer Decl. Ex. D, p. 307) (emphasis added)
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`
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`In the prior art, reference to correlated/corresponding means something very different than
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`proportional. In the prior art, the relationship between the measured current and the concentration of
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`glucose in the sample is said to be “correlated to” or “corresponding to” each othe