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DSM IP Assets, B.V. v. Lallemand Specialties, Inc.

United States District Court, W.D. Wisconsin

March 7, 2018

DSM IP ASSETS, B.V. & DSM BIO-BASED PRODUCTS & SERVICES, B.V., Plaintiffs and Counter-Defendants,
v.
LALLEMAND SPECIALTIES, INC. & MASCOMA LLC, Defendants and Counterclaimants.

          PROPOSED CLAIMS CONSTRUCTIONS

          WILLIAM M. CONLEY DISTRICT JUDGE

         Plaintiffs DSM IP Assets, B.V. and DSM Bio-Based Products & Services B.V. (collectively “DSM”) bring this patent infringement action against Lallemand Specialties, Inc. and Mascoma LLC (collectively “Lallemand”) concerning U.S. Patent No. 8, 795, 998 (the “'998 patent”). Specifically, DSM alleges that Lallemand's products, TransFerm Yield (“TFY”) and YP3, infringe. The purpose of this opinion is to provide the parties with the court's proposed claim constructions and the reasoning behind them in advance of the scheduled expert colloquy on Friday, March 16, 2018.

         OPINION

         “‘[T]he claims of a patent define the invention to which the patentee is entitled the right to exclude.'” Phillips v. v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). For this reason, the right to exclude “begins and ends . . . with the actual words of the claim.” Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). The goal of claims construction “is to give claim terms the meaning understood by a person of ordinary skill in the art at the time of invention.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1118 (Fed. Cir. 2016) [hereinafter MIT] (citing Phillips, 415 F.3d at 1312-14). While this includes “a heavy presumption that claim terms are to be given their ordinary and customary meaning, ” id. at 1118 (quoting Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013)), this “meaning” is what a person of ordinary skill in the art would have after reading the entire patent, id. (quoting Phillips, 415 F.3d at 1321). See also Renishaw, 158 F.3d at 1250 (“Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.” (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996))).

         For patent claims in highly specialized fields of study, like that at issue here, “determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art, ” yet are “not immediately apparent, ” requiring the court to examine intrinsic and extrinsic evidence “‘concerning the relevant scientific principles, the meaning of technical terms, and the state of the art.'” Phillips, 415 F.3d at 1314 (quoting Innova, 381 F.3d at 1116).[1] Similarly, while the “ordinary meaning” inquiry remains “an objective baseline from which to begin claim interpretation, ” id. at 1313 (citing Innova, 381 F.3d at 1116), where a patent fails to explicitly define a disputed or arguably ambiguous term, the court may look to the patent as a whole, including its prosecution history, to determine that term's meaning, Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1387 (Fed. Cir. 2016) (citing Phillips, 415 F.3d at 1315). See also Renishaw, 158 F.3d at 1248 (“The intrinsic evidence, and, in some cases, the extrinsic evidence, can shed light on the meaning of the terms recited in a claim, either by confirming the ordinary meaning of the claim terms or by providing special meaning for claim terms.” (citing Vitronics, 90 F.3d at 1583)). Still, claims construction is viewed as a question of law, Wi-LAN, 830 F.3d at 1381, reserved only for the court, Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 835 (2015).

         Here, the parties dispute the proper construction of four terms, all found in claim 1. (See Joint Statement on Claims Construction (dkt. #44) 2-3; '998 Patent (dkt. #1-1) 40 (67:12-37).) Plaintiffs claim that all four of their proposed constructions are faithful to the terms' “[p]lain and ordinary meaning[s], ” although even they put a gloss on certain terms, while defendants claim that some terms require further construction to be consistent with the claimed invention and prosecution history. (Joint Statement on Claims Construction (dkt. #44) 2-3.) With emphasis on the terms in dispute, Claim 1 specifies:

1. Transgenic yeast cells comprising one or more recombinant heterologous, nucleic acid sequences encoding a protein with NAD-dependent acetylating acetaldehyde dehydrogenase activity (EC 1.2.1.10), wherein said cells lack enzymatic activity needed for the NADH-dependent glycerol synthesis, or said cells have a reduced enzymatic activity with respect to the NADH-dependent glycerol synthesis compared to a corresponding wild-type yeast cell, and wherein said cells are free of NAD-dependent glycerol 3-phosphate dehydrogenase activity or have reduced NAD-dependent glycerol 3-phosphate dehydrogenase activity compared to corresponding wild-type cells, and/or wherein the cells are either free of glycerol phosphate phosphatase activity or have reduced glycerol phosphate phosphatase activity compared to corresponding wild-type cells, and which comprise a genomic mutation in at least one gene selected from the group consisting of GPD2, GPD2, GPP1 and GPP2, and wherein said cells further comprise one or more nucleic acid sequences encoding an acetyl-Coenzyme A synthetase activity (EC 6.2.1.1) and one or more nucleic acid sequences encoding NAD-dependent alcohol dehydrogenase activity (EC 1.1.1.1).

('998 Patent (dkt. 1-1) 40 (67:12-37) (emphasis added).) The court addresses each of the four disputed terms below.

Term 1

“one or more recombinant heterologous, nucleic acid sequences encoding a protein with NAD+dependent acetylating acetaldehyde dehydrogenase activity (EC 1.2.1.10)”

DSM’s Proposed Construction

Lallemand’s Proposed Construction

“one or more recombinant heterologous, nucleic acid sequences that encode a protein having NAD+dependent acetylating acetaldehyde dehydrogenase activity (EC 1.2.1.10)”

“a recombinant heterologous, nucleic acid encoding an NAD+dependent acetylating acetaldehyde dehydrogenase enzyme”

         DSM proposes changing “nucleic acid sequences encoding a protein with NAD+dependent acetylating acetaldehyde dehydrogenase activity” to “nucleic acid sequences that encode a protein having NAD+dependent acetylating acetaldehyde dehydrogenase activity.” In contrast, Lallemand proposes: (a) limiting the cells to having a “recombinant heterologous, nucleic acid” instead of the possibility of one or more “recombinant heterologous[] nucleic acid sequences” and (b) encompassing an “NAD+dependent acetylating acetaldehyde dehydrogenase enzyme” instead of “a protein with NAD+dependent acetylating acetaldehyde dehydrogenase activity (EC 1.2.1.10).”

         Plaintiffs explain that EC numbers classify enzymes based on the reaction they catalyze, which means the “EC 1.2.1.10” is reserved for proteins that catalyze the conversion of acetyl-Coenzyme A to acetaldehyde. (Pls.' Opening Br. (dkt. #59) 15.) In response, defendants argue that the claim specifies a protein that has “NAD+dependent acetylating acetaldehyde dehydrogenase activity” -- a particular enzymatic activity. (Defs.' Opp'n (dkt. #77) 26-27.) Plaintiffs characterize this dispute as a question whether AdhE and other bifunctional acetylating acetaldehyde dehydrogenase enzymes are included, adding that because the patent identifies AdhE it would be improper to exclude a preferred embodiment. (Pls.' Reply (dkt. #97) 8-9.)

         The court will not adopt either side's proposed construction, having determined that the plain and ordinary meaning of this term is indeed appropriate. As an initial matter, the court sees no reason to limit the term to a single “recombinant heterologous[] nucleic acid, ” where the term specifies “one or more . . . sequences.” As to plaintiffs' proposal to change the word “encoding” to “that encode, ” the court is unconvinced that there is a meaningful difference, as importantly, if there is a difference, no basis to depart from the claim's actual syntax exists. The court also rejects defendants' proposed change of “NAD+dependent acetylating acetaldehyde dehydrogenase activity (EC 1.2.1.10)” to “NAD+dependent acetylating acetaldehyde dehydrogenase enzyme.” As plaintiffs point out, the Enzyme Commission number -- the EC number -- is a unique four-digit number which describes the chemical reaction catalyzed. Specifically, the first digit identifies one of six classes; “the second and third digits describe the type of reaction catalyzed”; and “the fourth digit is employed to distinguish between enzymes of the same function on the basis of the actual substrate in the reaction catalyzed.” Douglas S. Clark & Harvey W. Blanch, Biochemical Engineering 1 (2d. ed. 1997). The enzyme identified by “EC 1.2.1.10” is “acetaldehyde dehydrogenase (acetylating).” Information on EC 1.2.1.10 --acetaldehyde dehydrogenase (acetylating), BRENDA, https://www.brenda-enzymes.org/enzyme.php?ecno=1.2.1.10 (last visited Mar. 1, 2018). Replacing “activity” with “enzyme” would appear to change the claim's meaning since it is the activity -- not the enzyme that performs the activity -- that is at the heart of this portion of the claim term and, indeed, the invention itself. Thus, this term simply means “one or more recombinant heterologous, nucleic acid sequences encoding a protein with NAD+dependent acetylating acetaldehyde dehydrogenase activity (EC 1.2.1.10).” (See '998 Patent (dkt. 1-1) 40 (67:12-15).)

         The parties discuss the second and third terms together, and the court will follow suit, while actually construing the terms in dispute individually.

Term 2

“said cells . . . have reduced NAD-dependent glycerol 3-phosphate dehydrogenase activity [GPD] compared to corresponding wild-type cells”

DSM’s Proposed Construction

Lallemand’s Proposed Construction

“the cells exhibit a reduction in the rate of the reaction catalyzed by GPD in the enzymatic production of glycerol compared to the corresponding wild-type yeast cells”

“the cells include modifications to one or more genes encoding GPD activity such that GPD is expressed considerably less than in the wild-type yeast cell or such that one or more genes encode GPD with reduced activity”

Term 3

“said cells have a reduced enzymatic activity with respect to the NADH-dependent glycerol synthesis compared to corresponding wild-type cells”

DSM’s Proposed Construction

Lallemand’s Proposed Construction

“the cells exhibit a reduction in the rate of enzymatic production of glycerol compared to the corresponding wild-type yeast cell”

“the cells include modifications to one or more genes encoding one or more enzymes needed for NADH-dependent glycerol synthesis such that one or more enzymes are expressed considerably less than in the wild-type yeast cell or such that one or more genes encode a polypeptide with reduced activity”


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