IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 15-355-SLR-SRF
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`DNA GENOTEK INC.,
`
`Plaintiff,
`
`v.
`
`ANCESTRY.COM DNA, LLC,
`
`Defendant.
`
`DEFENDANT’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`OF COUNSEL:
`
`Jeffrey E. Ostrow
`Jonathan C. Sanders
`JaeWon Lee
`SIMPSON THACHER & BARTLETT LLP
`2475 Hanover Street
`Palo Alto, CA 94304
`Tel: (650) 251-5000
`
`Dated: October 21, 2016
`1236474 / 42476
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant
`Ancestry.com DNA, LLC
`
`DNA Genotek, Inc. Exhibit 2006 Page 1
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ...........................................................................................................................1
`
`BACKGROUND OF THE PURPORTED INVENTION ...............................................................2
`
`ARGUMENT ...................................................................................................................................4
`
`I.
`
`“Configured to removably engage” .........................................................................4
`
`A.
`
`B.
`
`C.
`
`All Intrinsic and Extrinsic Evidence Confirms that the Term
`“Removably Engage” Simply Requires the “Capability” of Removal ........5
`
`Plaintiff’s “Configured to” Cases Are Easily Distinguishable ....................8
`
`Plaintiff’s Analysis of O’Donovan Is Irrelevant and Incorrect ..................10
`
`II.
`
`“Pointed corner” .....................................................................................................12
`
`A.
`
`B.
`
`Plaintiff’s Proposal Places No Structural Limitations on This Term ........12
`
`Prosecution History Estoppel Precludes Plaintiff’s Proposed
`Construction ...............................................................................................15
`
`III.
`
`“A vial comprising . . .” .........................................................................................15
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Defendant’s Proposed Construction Is Firmly Grounded in the Claim
`Language and Specification .......................................................................16
`
`Plaintiff’s Proposed Construction Would Lead to a Non-Sensical Result
`That Its Expert Has Conceded Cannot Be Correct ....................................18
`
`The Patent Never Describes or Enables a Piercing Member in the Lid.....20
`
`“Comprising” Is Not a “Weasel Word” That Can Negate a Claim
`Limitation ...................................................................................................23
`
`The Claimed “Open End” on Its Face Defines One “End” of the Vial .....27
`
`IV.
`
`V.
`
`VI.
`
`“Equivalent” ...........................................................................................................28
`
`“Configured to retain” and “configured to receive” ..............................................29
`
`“Comprising”/“Comprises” ....................................................................................30
`
`CONCLUSION ..............................................................................................................................30
`
`-i-
`
`DNA Genotek, Inc. Exhibit 2006 Page 2
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`Advanced Steel Recovery, LLC v. X-Body Equip., Inc.,
`808 F.3d 1313 (Fed. Cir. 2015)................................................................................... 21, 27
`Allure Home Creation Co. v. Lamont Ltd.,
`12 F. Supp. 2d 287 (S.D.N.Y. 1998)................................................................................... 6
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012)....................................................................................... 8, 9
`Bard Mfg. Co. v. Eubank Mfg. Enters., Inc.,
`No. 3:00 CV 7711, 2002 WL 34477144 (N.D. Ohio Jan. 11, 2002) .............................. 5, 6
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010)......................................................................................... 18
`Boston Sci. Corp. v. Cordis Corp.,
`No. 02-01474 JW, 2006 U.S. Dist. LEXIS 94329 (N.D. Cal. Dec. 20, 2006) ................... 9
`Cellectis S.A. v. Precision Bioscis., Inc.,
`937 F. Supp. 2d 474 (D. Del. 2013) .................................................................................. 24
`Cephalon, Inc. v. Abraxis Biosci., LLC,
`618 F. App’x 663 (Fed. Cir. 2015) ................................................................................... 18
`Compressor Prods. Intern. LLC v. Graco, Inc.,
`No. H–12–3008, 2013 WL 6865541 (S.D. Tex. Nov. 19, 2013) ........................................ 5
`CVI/Beta Ventures, Inc. v. Tura LP,
`112 F.3d 1146 (Fed. Cir. 1997)......................................................................................... 21
`Dippin’ Dots, Inc. v. Mosey,
`476 F.3d 1337 (Fed. Cir. 2007)......................................................................................... 26
`Dow Chem. Co. v. Nova Chems. Corp. (Can.),
`803 F.3d 620 (Fed. Cir. 2015)........................................................................................... 20
`Ekchian v. Home Depot, Inc.,
`104 F.3d 1299 (Fed. Cir. 1997)......................................................................................... 13
`EMD Millipore Corp. v. AllPure Techs., Inc.,
`No. 11–10221–DPW, 2012 WL 4862772 (D. Mass. Oct. 11, 2012) .................................. 5
`Fargo Elecs., Inc. v. Iris Ltd.,
`No. 04–1017 JRT/FLN, 2005 WL 3241851 (D. Minn. Nov. 30, 2005) ............................. 5
`FlatWorld Interactives LLC v. Samsung Elecs. Co.,
`No. 12–804–LPS, 2014 WL 7464143 (D. Del. Dec. 31, 2014) ........................................ 26
`Frazier v. Map Oil Tools, Inc.,
`No. C–10–4, 2010 WL 5067682 (S.D. Tex. Dec. 6, 2010) .................................. 24, 25, 27
`
`-ii-
`
`DNA Genotek, Inc. Exhibit 2006 Page 3
`
`

`
`Gen. Am. Transp. Corp. v. Cryo–Trans, Inc.,
`93 F.3d 766 (Fed. Cir. 1996)............................................................................................. 14
`Honeywell Int’l, Inc. v. ITT Indus.,
`452 F.3d 1312 (Fed. Cir. 2006)................................................................................... 21, 22
`ICU Med., Inc. v. Alaris Med. Sys., Inc.,
`558 F.3d 1368 (Fed. Cir. 2009)......................................................................................... 14
`Impulse Tech. Ltd. v. Microsoft Corp.,
`C.A. No. 11–586–RGA–CJB, 2013 WL 2020055 (D. Del. May 13, 2013) ..................... 21
`In re Man Mach. Interface Techs. LLC,
`822 F.3d 1282 (Fed. Cir. 2016)........................................................................................... 9
`Jack Guttman, Inc. v. Kopykake Enters., Inc.,
`302 F.3d 1352 (Fed. Cir. 2002)......................................................................................... 13
`Kustom Signals, Inc. v. Applied Concepts, Inc.,
`264 F.3d 1326 (Fed. Cir. 2001)......................................................................................... 26
`Liberty Ammunition, Inc. v. United States,
`
`‐‐‐ F.3d ‐‐‐‐, 2016 WL 4488151 (Fed. Cir. Aug. 26, 2016) ............................................. 26
`
`Mistop, Inc. v. Aerofin Corp.,
`298 F. Supp. 2d 224 (D. Conn. 2003) ................................................................................. 5
`Mitek Sys. v. TIS Am. Inc.,
`C.A. No. 12-1208-RGA, 2014 U.S. Dist. LEXIS 107733 (D. Del. Aug. 6, 2014) ............. 9
`Nartron Corp. v. Borg Indak, Inc.,
`848 F. Supp. 2d 725 (E.D. Mich. 2012) ............................................................................ 23
`Orthophoenix LLC v. Dfine Inc.,
`
`C.A. No. 13‐1003‐LPS, 2016 WL 402491 (D. Del. Feb. 2, 2016) ................................... 25
`
`Personalweb Techs., LLC v. Int’l Business Machs. Corp.,
`No. 6:12–CV–661, 2016 WL 922880 (E.D. Tex. Mar. 11, 2016) .................................... 26
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)......................................................................................... 14
`Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC,
`824 F.3d 999 (Fed. Cir. 2016)........................................................................................... 23
`Salazar v. Procter & Gamble Co.,
`414 F.3d 1342 (Fed. Cir. 2005)......................................................................................... 23
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001)......................................................................................... 22
`Searfoss v. Pioneer Consol. Corp.,
`374 F.3d 1142 (Fed. Cir. 2004)......................................................................................... 21
`Server Tech., Inc. v. Am. Power Conversion Corp.,
`No. 3:06–CV–00698–LRH, 2013 WL 3943544 (D. Nev. July 22, 2013) ........................ 25
`
`-iii-
`
`DNA Genotek, Inc. Exhibit 2006 Page 4
`
`

`
`Sipco, LLC v. Abb, Inc.,
`No. 6:11-cv-0048 LED-JDL,
`2012 U.S. Dist. LEXIS 106659 (E.D. Tex. July 30, 2012)................................................. 9
`Spectrum Int’l, Inc. v. Sterilite Corp.,
`164 F.3d 1372 (Fed. Cir. 1998)................................................................................... 24, 26
`Superior Indus., Inc. v. Masaba, Inc.,
`553 F. App’x 986 (Fed. Cir. 2014) ............................................................................... 9, 10
`Toro Co. v. McCulloch Corp.,
`No. CIV. 3-94-664, 1994 WL 901182 (D. Minn. Oct. 21, 1994) ....................................... 6
`Trading Techs. Intern., Inc. v. eSpeed, Inc.,
`595 F.3d 1340 (Fed. Cir. 2010)......................................................................................... 26
`Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc.,
`411 F. Supp. 2d 93 (D. Conn. 2006) ............................................................................. 5, 10
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007)......................................................................................... 21
`Wang Labs., Inc. v. Am. Online, Inc.,
`197 F.3d 1377 (Fed. Cir. 1999)....................................................................... 14, 20, 21, 23
`Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc.,
`103 F.3d 1571 (Fed. Cir. 1997)......................................................................................... 15
`Wesley Jessen Corp. v. Bausch & Lomb, Inc.,
`209 F. Supp. 2d 348 (D. Del. 2002) .................................................................................. 18
`
`Matthews, 1 Annotated Patent Digest § 4:38 (June 2016)............................................................ 25
`
`Other Authorities
`
`-iv-
`
`DNA Genotek, Inc. Exhibit 2006 Page 5
`
`

`
`INTRODUCTION
`
`Plaintiff’s claim construction arguments are inconsistent with the plain language of the
`
`claims, the specification, governing case law, and, indeed, the admissions of its own experts.
`
`First, with respect to “configured to removably engage,” there is no dispute that “configured to”
`
`means “designed to.” There is also no dispute that to “removably engage” means to engage with
`
`the capability of being removed. Simply combining the agreed meanings of these words results
`
`in a construction that requires only a product designed to be capable of removal. Plaintiff
`
`literally deletes the word “removably,” and replaces it with “remove” in order to avoid prior art.
`
`Second, Plaintiff’s proposed definition of “pointed corner” would remove all meaningful
`
`limitations on this term, making it impossible for a person of ordinary skill in the art to know
`
`whether he or she was practicing the invention. Indeed, under Plaintiff’s proposal, a flat wall
`
`that lacked any “point” at all would be sufficient to meet the requirements of this claim element,
`
`as long as it could be pushed with enough force to pierce the membrane (which virtually any
`
`piercing member could). Plaintiff’s proposed construction is also improper because it seeks to
`
`recapture subject matter expressly forfeited in order to overcome a rejection during prosecution.
`
`Finally, with respect to “vial comprising,” Plaintiff’s proposal again removes all
`
`meaningful limitations and renders the patent non-sensical. According to Plaintiff, the vial need
`
`only “include” a piercing member—which apparently encompasses touching, at a point in time, a
`
`“piercing insert” permanently contained in a separately claimed device (the lid). Indeed, under
`
`this logic, the vial would also “comprise” the lid and funnel themselves, the funnel and lid would
`
`“comprise” each other, and so on, which Plaintiff’s expert conceded cannot be correct and which
`
`would eliminate all distinct components of the invention. As this Court and others have held, the
`
`word “comprising” is not a “weasel word” that may be used to negate claim limitations entirely.
`
`DNA Genotek, Inc. Exhibit 2006 Page 6
`
`

`
`BACKGROUND OF THE PURPORTED INVENTION
`
`As the Court is aware, and as set forth in Plaintiff’s opening brief, the ’381 patent is
`
`directed to a “two compartment” system in which a vial is used to collect a sample, a lid contains
`
`a substance to be combined with the sample, and an optional funnel may also be used to facilitate
`
`sample collection. ’381 Patent, Claims 1 & 21. Most relevant here, the vial “comprises” a
`
`“piercing member” that pierces a membrane in the lid, thereby combining the substances. See id.
`
`There are only three components of the invention: vial, lid, and funnel. The patent
`
`expressly describes and claims the piercing member in the vial or, in an unasserted embodiment,
`
`in the funnel—but never depicts, or even mentions, placement of the piercing member in the lid:
`
`-2-
`
`DNA Genotek, Inc. Exhibit 2006 Page 7
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`

`
`It is therefore not surprising that all dependent claims assume placement of the piercing
`
`member either in the vial or in the funnel. Id., Claim 11 (“The container system of claim 1,
`
`wherein the said piercing member extends from a base surface of said chamber.”); id., Claim 12
`
`(“The container system of claim 11, wherein said piercing member extends approximately
`
`perpendicularly from said base.”); id., Claim 13 (“The container system of claim 11, wherein
`
`said piercing member is angled inwardly or outwardly toward said first open end of said vial.”);
`
`id., Claim 27 (“The container system of claim 21, wherein said piercing member extends from an
`
`interior surface of said funnel.”); id., Claim 28 (“The container system of claim 27, wherein said
`
`piercing member is angled inwardly or outwardly toward said first open end of said funnel.”).
`
`The Abstract similarly explains that the claimed “container system includes a vial having
`
`. . . a piercing member for piercing a membrane,” not touching a piercing insert contained in the
`
`lid at a point in time. Id., Abstract (emphasis added). In addition, the vial has an “open end” that
`
`receives the sample and that, by definition, signifies the “end” of the vial—before the lid or
`
`funnel ever begins. See, e.g., id. at 2:19-21 (describing “a vial comprising a first open end for
`
`receiving a sample, a second end comprising a sample storage chamber and a piercing member”).
`
`Finally, while Plaintiff is correct that the patent describes a removable lid that allows
`
`further laboratory testing of the sample, that is just one way that the sample may be analyzed.
`
`See, e.g., id. at 4:2-5 (“in one example of the present invention, the container system includes a
`
`removable vial which is suitable for subsequent processing of samples and/or for use in robotic
`
`systems”) (emphasis added); id. at 8:67-9:3 (“When the container system is used for laboratory
`
`purposes, desirably, vial 500 is sized to fit within a standard test tube rack . . . .”) (emphasis
`
`added). Nothing in the patent precludes other testing or even specifies what testing is to be used.
`
`Unlike in the patent, and unlike in the Plaintiff’s product that purportedly embodies the
`
`-3-
`
`DNA Genotek, Inc. Exhibit 2006 Page 8
`
`

`
`invention, the accused Ancestry device works differently. Most relevant here, the accused
`
`piercing member in the Ancestry product is attached to a separate “piercing insert” that is
`
`physically, permanently integrated into the lid— not the vial—and that rides up and down
`
`grooves in the lid to pierce the membrane, a design that, inter alia, makes the product
`
`significantly less error-prone and easier to use. Declaration of Jonathan C. Sanders (“Sanders
`
`Decl.”) Ex. 11 (Declaration of Terry Layton in Opp. to PI Motion in Cal. (“Layton Decl.”)) ¶¶
`
`26-30, 34-37. When the lid is attached to the vial, the bottom of the piercing insert (not the
`
`accused piercing member itself) sits on threads at the top of the vial for a point in time. Id. ¶ 29.
`
`But the piercing insert, and the alleged piercing member contained therein, is at all times located
`
`in the lid. Id. Finally, unlike the piercing member in the patent, the alleged piercing member in
`
`the Ancestry product is not sharply tapered to form a point, but rather is squared off at the end.
`
`I.
`
`“Configured to removably engage”
`
`ARGUMENT
`
`Term
`
`Asserted
`Claim(s)
`
`DNAG’s Proposed
`Construction
`
`Ancestry’s Proposed
`Construction
`
`“configured to
`removably engage”
`
`1
`
`designed to be engaged
`and to be removed
`
`designed to be capable of
`being held in place and
`removed
`
`The central disputed question with respect to this term is whether the claimed lid must be
`
`designed to be removed in every use of the product, or whether it must be designed to be capable
`
`of removal in some, but not necessarily all, uses. The parties agree the term “designed” as used
`
`in this context does not depend on the inventors’ subjective intent in designing the system, but
`
`rather on “the way the product[] looks,” i.e., whether it has the requisite physical design.
`
`Sanders Decl. Ex. 1 (Aug. 25, 2016 Dep. of J. Collins) (“8/25/16 Collins Depo.”) at 103:2-7.
`
`Defendant’s construction is consistent with the plain meaning of the term, the uniform
`
`-4-
`
`DNA Genotek, Inc. Exhibit 2006 Page 9
`
`

`
`descriptions in the patent, the admissions of Plaintiff’s own experts, and governing case law. By
`
`contrast, Plaintiff’s proposal improperly seeks to change the word “removably” to “remove” and
`
`thus to change the meaning of this term altogether. Defendant’s construction should be adopted.
`
`A.
`
`All Intrinsic and Extrinsic Evidence Confirms that the Term “Removably
`Engage” Simply Requires the “Capability” of Removal
`
`The parties agree that “configured” means “designed.” The parties further agree that “to
`
`removably engage” means to engage with the capability of removal—the word “removably,” an
`
`adverb, modifies the verb “engage.” But notwithstanding the common understanding of these
`
`words, Plaintiff changes the term entirely by replacing an adverb meaning “capable of removal”
`
`with the infinitive “to remove”—transforming the term from one requiring a lid designed to have
`
`the capability of being removed with one requiring actual removal in every single case. Not
`
`surprisingly, case law uniformly interprets “removably” in accordance with its plain meaning, as
`
`Defendant does here. See, e.g., Compressor Prods. Intern. LLC v. Graco, Inc., No. H–12–3008,
`
`2013 WL 6865541, at *14 (S.D. Tex. Nov. 19, 2013) (“removably attached to” is “fastened or
`
`connected in a manner that makes it capable of being separated from”); EMD Millipore Corp. v.
`
`AllPure Techs., Inc., No. 11–10221–DPW, 2012 WL 4862772, at *5 (D. Mass. Oct. 11, 2012)
`
`(“at least one removable, replaceable transfer member” is “at least one transfer member that can
`
`be removed”); Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 411 F. Supp. 2d 93, 108
`
`(D. Conn. 2006) (“removably fastened” is “designed so as to be capable of being held secure to
`
`something else and designed so as also to be capable of being unsecured and taken away from”)
`
`(quoting Webster’s Third New Int’l Dictionary at 1921 (“[C]apable of being removed . . . .”)).1
`
`1
`
`Accord, e.g., Mistop, Inc. v. Aerofin Corp., 298 F. Supp. 2d 224, 233 (D. Conn. 2003)
`(“‘removable’ ordinarily means ‘capable of being removed’”) (citing same dictionary);
`Fargo Elecs., Inc. v. Iris Ltd., No. 04–1017 JRT/FLN, 2005 WL 3241851, at *12-13 (D.
`Minn. Nov. 30, 2005) (construing “removably mounted” as “mounted so as to be capable
`of being removed”); Bard Mfg. Co. v. Eubank Mfg. Enters., Inc., No. 3:00 CV 7711,
`
`-5-
`
`DNA Genotek, Inc. Exhibit 2006 Page 10
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`

`
`Plaintiff’s rewritten claim language is also inconsistent with the plain language of the
`
`claim, the specification, the extrinsic evidence, and, indeed, the admissions of Plaintiff’s own
`
`experts. First, the claim language at all points requires only that the lid be “configured to
`
`removably engage” the vial, see, e.g., ’381 Patent, Claim 1—not configured to be removed in
`
`every use. That comports with the ordinary meaning of “removable,” which, as set forth above,
`
`is indisputably “capable of being removed.” See Sanders Decl. Ex. 2 (Webster’s Third New Int’l
`
`Dictionary) at 1921; id. ¶ 11, Ex. 10 (The Oxford English Dictionary (2d ed. 1989)) at 601.2
`
`The specification likewise makes clear that, while the product must be designed in such a
`
`way that the lid can be removed, there is no requirement that it be always (or ever) be actually
`
`removed. See, e.g., ’381 Patent at 2:21-22 (“a lid configured to removably engage said vial”)
`
`(emphasis added); id. at 2:25 (“closed by removable engagement”) (emphasis added). Indeed,
`
`the purported invention ends before even getting to the question of what happens after the lid is
`
`attached. See, e.g., id. at 2:13-61 (“Summary of the Invention” ends with step, “piercing the
`
`membrane to release said substance into said chamber by moving the system to said piercing
`
`position.”); id. at 12:27-35 (detailed description of the invention ends with optional procedure for
`
`“archiving a biological sample for prolonged periods of time,” up to a year); id., Claim 1 (ending
`
`with step, “said vial and said lid are movable to a piercing position in which the piercing member
`
`disrupts the pierceable membrane to allow fluid communication between said reservoir and said
`
`2002 WL 34477144, at *4-6 (N.D. Ohio Jan. 11, 2002) (“removably fastened within said
`receiving chamber” means that it “may be extracted from the ventilation chamber . . .
`without damage to the unit”) (citing definition of “removable” in the Oxford English
`Dictionary Online (2d ed. 1989) as “capable of being removed”); Allure Home Creation
`Co. v. Lamont Ltd., 12 F. Supp. 2d 287, 291-92 (S.D.N.Y. 1998) (to “removably
`secure[]” a thing means it is “detachable from the apparatus”); see also Toro Co. v.
`McCulloch Corp., No. CIV. 3-94-664, 1994 WL 901182, at *6 (D. Minn. Oct. 21, 1994).
`
`2
`
`The ’381 patent uses the terms “removable” and “removably” interchangeably. See, e.g.,
`’381 Patent at 2:25-26 (“removable engagement”); id. at 2:55 (“removable attachment”).
`
`-6-
`
`DNA Genotek, Inc. Exhibit 2006 Page 11
`
`

`
`chamber, wherein the chamber is sealed against leakage to the outside of the container system in
`
`the piercing position”). Thus, the word “removably” is simply contrasted with words like
`
`“permanently” or “fixedly” attached to, or “integral with”—for example, describing “a funnel
`
`that is permanently or removably attached” to the vial. Id. at 4:8-9 (emphasis added); see id. at
`
`6:1-4, 2:40-43. In other words, “removably” is intended to convey nothing more than the
`
`capability of removal—i.e., not permanently attached. By contrast, where the patentees wanted
`
`to describe actual “removal,” they did so directly. See, e.g., id. at 1:46-49 (describing prior art in
`
`which the “substances [we]re combined by removal of the container closures by a user”); id. at
`
`11:49-53 (“Alternatively, funnel 400 is removed from vial 500.”).
`
`Moreover, while it is true that “the ’381 patent specification provides examples of how to
`
`accomplish that design [of a removable lid] and explains how the design facilitates an objective
`
`of the invention,” Opening Brief (“Op. Br.”) at 8, as set forth above, each of those excerpts
`
`merely describes “one example” of a use of the invention or a “desirable” use when the sample is
`
`analyzed in a lab. Id. (citing ’381 Patent at 5:7-15, 4:3-5, 9:1-9). Nothing in the patent requires
`
`the lid to actually be removed in every use or precludes other types of analysis, such as optical
`
`scanning. See id.; see, e.g., Sanders Decl. Ex. 1 (8/25/16 Collins Depo.) at 113:3-7 (agreeing
`
`that the “product described in the [closely related] ’164 patent [is] something that can be studied
`
`through optical analysis,” without removing the lid). If Ancestry tomorrow decided to analyze
`
`its samples through optical scanning, Plaintiff would not drop this lawsuit on the ground that the
`
`Ancestry lid is only designed to be capable of removal, but is not actually removed in every use.
`
`Finally, and perhaps most tellingly, Plaintiff’s own expert agrees with Defendant’s
`
`construction. At his most recent deposition, when Defendant asked Plaintiff’s invalidity expert
`
`directly whether the lid must actually be removed to practice the claim, he responded, “It needs
`
`-7-
`
`DNA Genotek, Inc. Exhibit 2006 Page 12
`
`

`
`to be capable of doing that,” Sanders Decl. Ex. 1 (8/25/16 Collins Depo.) at 102:14-22,
`
`repeatedly agreeing that the term “configured to removably engage” means “designed to engage
`
`with the ability to remove . . . [w]ithin the context” of the patent. Id. at 130:13-24; accord, e.g.,
`
`id. at 102:6-8 (“Q. Does it have to be removed or removable? A. It has to be designed so that it
`
`can be removed within the context of . . . the patent.”); id. at 113:16-18 (“But what the claim
`
`requires is that the lid is configured to be removable . . . .”); id. at 131:13-15 (“I’m designing it
`
`so that I can remove it in the context in which I’m designing the device for.”); id. at 132:13-14
`
`(“it needs to be designed so that it can be removed”); id. at 139:10-14 (“Q. So you agree there
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`doesn’t have to be a particular way to remove the lid; right? A. No . . . . It needs to be designed
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`to be able to do it.”). The admissions of Plaintiff’s own expert are of course particularly relevant
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`in assessing how a person of ordinary skill in the art would understand these claim terms.3
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`B.
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`Plaintiff’s “Configured to” Cases Are Easily Distinguishable
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`Plaintiff also relies on a number of cases in which the Federal Circuit and district courts
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`have defined “configured” as “designed.” Op. Br. at 6-8. But unlike here, Plaintiff’s cases were
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`not construing terms that themselves required the capability to do something, as “removably”
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`indisputably does. For example, in Plaintiff’s principal case, Aspex Eyewear, the relevant claim
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`term was “said arms and said pair of magnetic members adapted to extend across respective side
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`portions of a primary spectacle frame[,]” not, e.g., “adapted to extendably engage.” See Aspex
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`Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1348-50 (Fed. Cir. 2012) (emphasis
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`added). The court thus construed this phrase as “designed or configured to accomplish the
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`specified objective,” i.e., to extend in the specified manner, based on explicit references in the
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`3
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`Plaintiff’s infringement expert initially construed this term in essentially the same way.
`See, e.g., Sanders Decl. Ex. 3 (Sep. 24, 2015 Dep. of J. Lasheras) at 95:9-21 (“Q. ‘[A] lid
`configured to removably engage said vial, said lid comprising’ . . . . What does it mean
`for a lid to removably engage a vial? A. So you can engage and disengage. You can
`remove it, you can engage it, removable, and you can engage and disengage.”).
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`-8-
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`DNA Genotek, Inc. Exhibit 2006 Page 13
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`

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`specification indicating that “the magnetic members of the auxiliary frame are meant to engage
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`with the magnetic members of the primary frame, not simply that they are capable of doing so.”
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`See id. at 1349. The court further relied on a claim differentiation argument based on the fact
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`that the immediately preceding claim “recite[d] first magnetic members that are ‘capable of
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`engaging’ second magnetic members,” id. (emphasis added), precluding a contrary construction.
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`Similarly, in In re Man Machine, the term at issue was “adapted to be held by the human hand,”
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`which the court interpreted to mean “designed or made to be held” in the specified way, because
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`the specification “expressly disclaimed” a contrary reading. In re Man Mach. Interface Techs.
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`LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (emphasis added).4
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`No such intrinsic evidence here even suggests that the lid in the ’381 patent is designed to
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`be removed in every case, much less expressly disclaims any other use, when the term on its face
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`requires only a “removable” lid. Indeed, as set forth above, and unlike in each of Plaintiff’s
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`cases, the claims here do not even address what happens to the lid after it is attached, providing
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`only that the lid be capable of removal. Put differently, even if “configured to” should simply be
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`replaced with the words “designed to,” the claim still requires only a lid designed to engage with
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`the capability of removal—not designed to engage and remove in every case. See also Superior
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`Indus., Inc. v. Masaba, Inc., 553 F. App’x 986, 991 (Fed. Cir. 2014) (Rader, J., concurring)
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`(addressing “configured to” term and noting that “a system claim generally covers what the
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`system is, not what the system does . . . . Thus, it is usually improper to construe non-functional
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`4
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`Each of Plaintiff’s other cases is to similar effect. See, e.g., Mitek Sys. v. TIS Am. Inc.,
`C.A. No. 12-1208-RGA, 2014 U.S. Dist. LEXIS 107733, at *5 (D. Del. Aug. 6, 2014)
`(construing “configured” without additional claim language that required capability);
`Sipco, LLC v. Abb, Inc., No. 6:11-cv-0048 LED-JDL, 2012 U.S. Dist. LEXIS 106659, at
`*32-33 (E.D. Tex. July 30, 2012) (“configured to” “receive,” “transmit” information);
`Boston Sci. Corp. v. Cordis Corp., No. 02-01474 JW, 2006 U.S. Dist. LEXIS 94329, at
`*2-7 (N.D. Cal. Dec. 20, 2006) (construing “adapted to be multiply folded upon itself”).
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`-9-
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`DNA Genotek, Inc. Exhibit 2006 Page 14
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`

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`claim terms in system claims in a way that makes infringement or validity turn on their
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`function.”) (emphasis added).5 Defendant is unaware of cases holding that a device expressly
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`“configured to” (or “designed to”) have a specific capability must also be designed to actually
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`perform that function in every single instance.
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`C.
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`Plaintiff’s Analysis of O’Donovan Is Irrelevant and Incorrect
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`Finally, Plaintiff’s lengthy analysis of the O’Donovan reference misses the mark.
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`Defendant does not, as Plaintiff suggests, “seek[] to inject an overbroad construction of
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`‘configured to’ that would extend the term to encompass ‘capable of.’” Op. Br. at 9-12. First,
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`Defendant is not suggesting that a lid would be designed to be capable of removal simply
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`because one could destroy the device by, e.g., cutting it open with a laser. Cf. id. at 10 & n.3.
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`Nor does Plaintiff believe that this is the only way to remove the lid in O’Donovan. To the
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`contrary, as Plaintiff’s own expert conceded, “I could do all sorts of things to remove” the
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`O’Donovan lid, ¶Ex. 4 (Nov. 13, 2015 Dep. of J. Collins) at 64:6-8, including not just cutting it
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`but also, e.g., using tools to create friction to pull the lid out. Sanders Decl. Ex. 5 (Aug. 24, 2016
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`IPR Dep. of J. Collins) at 62:6-13. Using a tool that generates friction to remove the lid is hardly
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`equivalent to cutting it open with a laser. See Sanders Decl. Ex. 1 (8/25/16 Collins Depo.) at
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`102:4-5 (noting that the contemplated removal “[d]oesn’t have to be by hand” and can involve a
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`tool).6 Indeed, one use of the invention is in “robotic” processing systems, ’381 Patent at 9:3-9;
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`5
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`6
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`The second portion of the parties’ dispute, relating to the word “engage,” is not critical to
`the outcome here, because the lid in O’Donovan is indisputably both “engaged” and
`“held in place.” Nevertheless, courts have regularly used similar language to aid the jury.
`See, e.g., Tyco Healthcar