The Regents of the University of Michigan v. Leica Microsystems Inc.

Background

The Regents of the University of Michigan sued Leica Microsystems Inc. in a patent dispute involving U.S. Patent No. 7,277,169, titled “Whole Spectrum Fluorescence Detection With Ultrafast White Light Excitation.” The patent generally concerns a fluorescence-detection system that can detect multiple fluorescent molecules, called fluorophores, in a sample.

The court considered three sets of disputed claim terms. In patent cases, claim construction is the court’s determination of what the words in a patent claim mean. Michigan also moved to strike the testimony of Leica’s claim-construction expert, Wayne Knox, under Patent Local Rule 4-2.

First Set of Terms: The Required Sample and Fluorophores

The first dispute concerned preambles in independent claims 1, 10, and 19. A preamble is the introductory language at the beginning of a patent claim. Both sides agreed that the preamble describing the fluorescence-detection system was a limitation of the claims, but they disagreed about whether the sample and its fluorophores were also required elements.

Michigan argued that the claims required a fluorescence-detection system capable of testing a sample, but did not require the sample containing multiple fluorophores to be part of the claimed system. Leica argued that the claims required a sample containing the specified fluorophores.

The court adopted Leica’s construction. It held that the sample containing a plurality of fluorophores—or, for claim 19, a first and second fluorophore—is a required element of the claim. The court relied in part on Michigan’s position in earlier patent proceedings that a prior-art reference did not disclose a sample with a plurality of fluorophores. The court stated that this admission was binding on Michigan.

Second Set of Terms: “Exciting” and “Outputting”

The parties proposed plain-and-ordinary-meaning constructions for “exciting” and “outputting,” while Leica also sought a ruling that the claimed system affirmatively had to perform the acts described by those terms.

The court gave both terms their plain and ordinary meaning. It declined to decide during claim construction whether the claimed system must actually perform the claimed acts, stating that issue could be addressed on summary judgment or at trial.

Third Set of Terms: Exciting Fluorophores to Emit Fluorescence

The third dispute concerned language describing a supercontinuum white-light pulse exciting fluorophores in the sample to emit fluorescence. The court gave these terms their plain and ordinary meaning without adding either side’s proposed concepts. It stated that expert testimony could assist the court at trial.

Motion to Strike

Michigan argued that Leica had not timely disclosed that Knox would provide claim-construction testimony or disclosed his identity as required by Patent Local Rule 4-2. Leica argued that the rule did not expressly require disclosure of the expert’s identity when the subject matter of the testimony was adequately described. Leica also argued that Michigan was not harmed because it had known of Knox from earlier patent proceedings.

The court said the district’s Patent Local Rules were somewhat ambiguous but concluded that the better interpretation, consistent with the rules’ purpose, required disclosure of the identities of claim-construction experts. Nevertheless, the court held that the dispute was moot because it adopted plain-and-ordinary-meaning constructions for the relevant terms and did not rely on Knox’s positions concerning prosecution history or Michigan’s efforts to distinguish prior art.

The motion to strike was DENIED as moot. The court added that if Leica later submitted Knox’s testimony concerning the merits of the case, Leica would need to disclose his opinions consistently with the purpose and spirit of the district’s Patent Local Rules.

Disposition

The first set of terms was construed to require a fluorescence-detection system for testing a sample having the specified fluorophores. The second and third sets of terms were given their plain and ordinary meanings. Michigan’s motion to strike was DENIED as moot.