Wilson v. Corning, Inc.

Background

The court addressed patent claim construction under the procedure established by Markman v. Westview Instruments, Inc. Claim construction is the court’s interpretation of patent language that defines the patent’s scope.

The plaintiffs alleged that John R. Wilson or employees of Wilson Wolf Manufacturing Corp. should be named as inventors of U.S. Patent No. 7,745,209 (the ’209 Patent) and U.S. Patent No. 8,273,572 (the ’572 Patent). They sought to remove Corning scientists Dr. Allison Tanner and Greg Martin as named inventors and name Wilson as the sole inventor. Count I sought a declaration of invalidity or correction of inventorship concerning the ’209 Patent. Count II asserted that Wilson or Wilson Wolf staff should be named sole or joint inventors concerning the ’572 Patent.

The court previously denied Corning’s motion for summary judgment as to the ’209 Patent without prejudice and stated that construing “continuous flow” would assist in deciding inventorship. Corning later renewed its summary-judgment motion concerning inventorship for both patents.

Disputed Claim Term

The dispute concerned “continuous flow” in dependent claims 12 and 31 of the ’209 Patent. Those claims describe multiple modules interconnected in series or staggered “to permit continuous flow.”

The plaintiffs proposed that the phrase did not require perfusion. They argued that it meant the modules were connected so that their cell-growth chambers could be in fluid communication for medium to pass through them, and/or their tracheal spaces could be in fluid communication for gas to pass through them. They pointed to the absence of the words “perfuse” and “perfusion” from the claims and to portions of the specification that, in their view, distinguished continuous flow from perfusion.

Corning argued that “continuous flow” meant “a type of perfusion,” or a perfusion that is continuous. Corning relied on the patent specification’s descriptions of a staggered configuration that allowed “continuous flow or perfusion,” including a description of a related embodiment as a perfusion system.

Court’s Construction

The court adopted Corning’s proposed construction. It held that “continuous flow” in claims 12 and 31 means “a type of perfusion (a perfusion that is continuous).” The court concluded that the claim language and specification showed that the patents encompass perfusion devices and that the phrase refers to the perfusion system described in the patent’s Figure 5 embodiment.

The court rejected the plaintiffs’ argument that the patent’s use of “or” between “continuous flow” and “perfusion” showed that the terms described alternative systems. The court understood “or” in those passages to indicate equivalence. It also found no clear disclaimer excluding the perfusion-system embodiment from the patent’s scope.

Inventorship Motion

Corning argued that the court could enter judgment as a matter of law on both inventorship claims because Wilson had stated that his disclosures concerned static cell-culture devices and did not teach perfusion devices. Corning also argued that sole inventorship required the plaintiffs to show that Wilson conceived every feature covered by the claims.

The plaintiffs argued that deciding inventorship on summary judgment was premature. They maintained that the claim construction did not resolve whether Wilson or Wilson Wolf staff contributed to the claimed inventions and that factual issues remained, including whether certain added features were optional or obvious variations.

The court agreed that summary judgment on the inventorship issue was premature. It declined to enter judgment on Counts I and II. The order therefore construed “continuous flow” as stated above and denied Corning’s renewed motion for summary judgment on inventorship.