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Inguran, LLC v. ABS Global, Inc.

United States District Court, W.D. Wisconsin

April 29, 2019

INGURAN, LLC, CYTONOME/ST, LLC, and XY, LLC, Plaintiffs and Counter Defendants,
v.
ABS GLOBAL, INC., GENUS PLC, and PREMIUM GENETICS UK LTD, Defendants and Counter Claimants.

          OPINION AND ORDER

          WILLIAM M. CONLEY DISTRICT JUDGE

         This is the second of two opinions on the parties' cross-motions for claims construction and summary judgment in this patent lawsuit. As detailed in the court's prior order, plaintiffs Inguran, LLC, Cytonome/ST, LLC and XY, LLC, allege that the defendants ABS Global, Inc., Genus PLC and Premium Genetics (UK) Ltd, have infringed six patents, two owned by plaintiff XY and four owned by plaintiff Cytonome. In addition, all parties assert claims and counterclaims under state law. In this opinion and order, the court addresses the parties' arguments as to the four Cytonome patents, as well as plaintiffs' motion for summary judgment on defendants' counterclaims for inequitable conduct and breach of contract.

         For the reasons that follow, the court will construe the “direction” terms in the Cytonome patents consistent with defendants' construction, requiring no overlap between the direction or directions implicated in the first step and the direction or directions implicated in the second step, but will adopt plaintiffs' position with respect to the term “focusing, ” construing that term to include the prosecution disclaimer requiring acceleration and to exclude the mere introducing of a sample fluid at a particular position in a straight flow passage. As for the motions for summary judgment, the court will grant defendants' motion of noninfringement as to the '161 and '912 patents, finding that the only disclosed infringement theory for those patents fails to meet the direction limitation. The court will also grant, in part, defendants' motion of noninfringement as to the '476 and '309 patents, finding any infringement theory based on Detail B as the primary focusing or first step also fails to satisfy the direction limitation. Next, the court will also deny defendants' motion for summary judgment as to the three anticipation claims, finding disputed issues of material fact. For the same reason, the court will deny plaintiffs' motion for a finding in their favor on defendants' anticipation claims based on the prior art reference Tashiro. Finally, the court will deny plaintiffs' motion for summary judgment on defendants' counterclaims for inequitable conduct and breach of contract, finding material factual disputes as to each.

         UNDISPUTED FACTS[1]

         A. Patents-In-Suit

         Plaintiff Cytonome asserts claims of infringement as to four of its patents: U.S. Patent Nos. 7, 311476 (“the '476 patent”), 7, 611, 309 (“the '309 patent”), 8, 529, 161 (“the '161 patent”), and 9, 446, 912 (“the '912 patent”). (Dkt. ##1-1 to 1-4.) The parties refer to these four patents collectively as the “Cytonome patents.” All four share the same title, “Multilayer Hydrodynamic Sheath Flow Structure, ” each name the same three inventors:

         John R. Gilbert, Manish Deshpande and Bernard Bunner, and they share a specification. Generally speaking, the Cytonome patents are directed to microscale devices and techniques for controlling the flow of particles and fluids in small channels, which is useful for flow cytometry and particle-sorting applications. The Cytonome patents all claim priority under the same provisional application, No. 60/516, 033, filed on October 30, 2003, although plaintiffs assert an earlier date of invention of March 3, 2003.

         Figure 1 of the '476 patent, as well as the other Cytonome patents, depicts a "sheath flow structure" (10):

         (Image Omitted)

         ('476 patent at Fig. 1.) "The sheath flow structure 10 includes a primary sheath flow channel 12 for conveying sheath fluid through the sheath flow channel 10." (Id. at 4:38-40.) A sample inlet is identified as 15. (Id. at 4:44.) The "primary focusing region" is identified as 17, and the specification provides that this region "accelerates and focuses the sheath fluid around the injected sample." (Id. at 4:64-65.) A "second focusing region" is disclosed at 19, with 19A disclosing an outlet." (Id. at 4:67-5:1, 5:19.)

         Plaintiffs propose several facts showing figures of the embodiments of the Cytonome patents, purportedly showing a "horizontally-tapered channel in two regions." (Pls.' Add'l PFOFs (dkt. #197) ¶ 97.) Defendants dispute this, pointing to Figure 4A, arguing that there is "no tapering in the secondary focusing region." (Defs.' Resp. to Pls.' Add'l PFOFs (dkt. #219) ¶ 97.) Figure 4A "is a perspective cross-sectional view of the sheath flow structure 100 illustrating the sheath fluid and suspending particle during the different stages of producing a sheath flow."

         (Image Omitted)

         ('476 patent at Fig. 4A.)

         The asserted independent claims of the Cytonome patents contain the same or similar language involving a "direction" requirement or limitation that an action - either focusing, injecting or adjusting - occurs in "at least a first direction," and then at a second region, focusing, injecting or adjusting occurs in "at least a second direction different from the first direction.”[2] Moreover, three of the Cytonome patents -- the '476, '309, and '161 patents -- contain claims that require “focusing” of the sheath fluid around the particle or sample.

         Claim 1 of the '476 patent requires:

1. A sheath flow structure for suspending a particle in a sheath fluid, comprising:
a primary sheath flow channel for conveying a sheath fluid; a sample inlet intersecting the primary sheath flow channel at a sample injection site for injecting a particle into the sheath fluid conveyed through the primary sheath flow channel; a primary focusing region extending downstream of the sample injection site for focusing the sheath fluid around the particle in at least a first direction; and a secondary focusing region provided downstream of the primary focusing region for focusing the sheath fluid around the particle in at least a second direction different from the first direction.

('476 patent at 11:9-23 (emphasis added).)

         Claim 14 of the '309 patent provides:

14. A method of surrounding a particle on at least two sides by a sheath fluid, comprising the steps of:
conveying the sheath fluid through a primary sheath flow channel;
injecting the particle into the sheath fluid conveyed through the primary sheath flow channel;
focusing the sheath flow around the particle in at least a first direction; and
focusing the sheath fluid around the particle in at least a second direction different from the first direction.

('309 patent at 12:27-37 (emphasis added).)

         Claim 1 of the '161 patent requires:

1. A microfluidic system comprising:
a primary flow channel for flowing a sample having one or more particles suspended in a suspension medium; a primary adjustment region including a first set of one or more inlets intersecting the primary flow channel and adapted for introducing additional suspension medium into the primary flow channel, whereby the sample is adjusted in at least a first direction; and
a secondary adjustment region downstream of the primary alignment region and including a second set of one or more inlets intersecting the primary flow channel downstream of the first set of one or more inlets and adapted for introducing additional suspension medium whereby the sample is adjusted in at least a second direction different from the first direction.

('161 patent at 10:63-11:10.) For the '161 patent, some of the independent claims, such as claim 1 quoted above, “adjusting” is disclosed, rather than “focusing.” The dependent claims, however, require “focusing.” (See, e.g., '161 patent, Claim 6 (“The system of claim 1, wherein adjusting the sample in at least a first direction and adjusting the sample in at least a second direction includes focusing the sample.” (emphasis added)).)

         Finally, claim 1 of the '912 patent provides:

1. A flow structure for suspending a particle in a sheath fluid, comprising:
a primary flow channel provided within a substrate and configured to convey fluid in a downstream direction; and a sheath fluid distribution system including:
a first sheath fluid channel in fluid communication with the primary flow channel at a first sheath fluid introduction region for injecting sheath fluid into the primary flow channel in a first direction away from a first wall of the primary flow channel; and a second sheath fluid channel in fluid communication with the primary flow channel at a second sheath fluid introduction region for injecting sheath fluid into the primary flow channel in a second direction away from a second wall of the primary flow channel, wherein the second sheath fluid introduction region is located downstream from the first sheath fluid introduction region, and wherein a width of the primary flow channel at the first sheath fluid introduction region is greater than a width of the primary flow channel at the second sheath fluid introduction region.

('912 patent at 11:21-44.)

         B. Accused Infringing Technology

         Following entry of this court's injunction in ABS I, ABS launched its GSS technology in September 2017. Plaintiffs allege that the GSS technology (or chip) and another ABS technology, the single sheath chip, infringe their patents.[3] ABS contracts with fabricators who make the GSS chip and the single sheath chip. ABS also imports and uses both chips.

         A top-view schematic of the GSS chip is depicted below:

         (Image Omitted)

         (Pls.' Add'l PFOFs (dkt. #197) ¶ 191.) Sheath fluid enters the chip through a sheath fluid inlet (1) and flows to Detail C through branching channels. Sheath fluid also enters the chip through another sheath fluid inlet (2) and flows to Detail B through branching channels. Sample fluid enters the chip through sample fluid inlet (3) and flows to Detail B, where it is introduced to sheath fluid originating from inlet 2. Sample fluid and sheath fluid flow through Details B, C and D. The first focusing step is in the circled area marked as Detail B. The second focusing step takes place at Detail C. Additional focusing occurs at Detail D.

         An enlarged version of Detail B is depicted below:

         (Image Omitted)

         (Id. ¶ 230.) In Detail B, defendants contend that the GSS chip "focuses in all four directions (i.e., away from the top, bottom, and sides of the channel)." (Id. ¶ 231.) Plaintiffs purportedly dispute this characterization, and instead represent that the GSS chip "focuses in a single radially inward direction." (Pls.' Resp. to Defs.' PFOFs (dkt. #196) ¶ 231; see also Pls.' Add'l PFOFs (dkt. #197) ¶ 217.) Since focusing away from external walls would appear to be the same as focusing radially inward, this dispute appears to be a distinction without a difference, as addressed further below. The parties also dispute whether the above depiction shows that "the channel tapers horizontally just after the point where the sample is introduced to the sheath fluid" -- plaintiffs' position -- or that the depiction simply shows "two subchannels coming together, not a taper" -- defendants' position. (Defs.' Resp. to Pls.' Add'l PFOFS (dkt. #219) ¶ 197.) The court also takes up this dispute below.

         An enlarged view of Detail C is depicted below:

         (Image Omitted)

         (Defs.' PFOFs (dkt. #161) ¶ 232.) In Detail C, the parties agree that the GSS chip focuses from above, away from the top wall, in a vertical direction to position the sample in the center of the flow for detection.

         Finally, an enlarged view of Detail D is shown below:

         (Image Omitted)

         (Id. ¶ 234.) The parties dispute the proper characterization of Detail D. Defendants maintain that “the GSS chip employs a vertical ramp along the bottom wall and tapering along the left and right walls to increase the sample velocity just before the detection zone.” (Id. ¶ 235.) However, plaintiffs assert that the ramp and taper are not a “single region.” (Pls.' Resp. to Defs.' PFOFs (dkt. #196) ¶ 235; see also Pl.'s Add'l PFOFs (dkt. #197) ¶¶ 214-15.) The parties also dispute whether the combined ramp and taper focus in all four directions, as defendants contend, or “the horizontal taper in Detail D focuses away from the left and right-side walls and the vertical ramp in Detail D focuses away from the bottom wall, ” disputing that the ramp also focuses from the top, as plaintiffs contend. (Pls.' Resp. to Defs.' PFOFs (dkt. #196) ¶ 235; see also Pl.'s Add'l PFOFs (dkt. #197) ¶¶ 214-15.)

         As set forth in part above, the asserted claims of the Cytonome patents all require two steps: (1) the introduction, adjustment or focusing of fluid “in at least a first direction” and (2) a second introduction, adjustment or focusing of fluid “in at least a second direction different from the first.” (Defs.' PFOFs (dkt. #161) ¶¶ 241-44.) For the GSS chip, plaintiffs' expert describes infringement theories based on: (1) Detail B as the first step and Detail C as the second step; (2) Detail B as the first step and Detail D (including both the ramp and taper regions) as the second step; (3) Detail C as the first step and Detail D (again including both the ramp and taper regions) as the second step; and (4) Detail D's ramp as the first step and Detail D's taper as the second step.

         The accused single sheath chip, as depicted below, has essentially the same design as the GSS chip, but omits the second focusing region identified as Detail C in the GSS chip:

         (Image Omitted)

         (Pls.' Add'l PFOFs (dkt. #197) ¶ 208.) Detail B in the single sheath chip is the same as Detail B in the GSS chip, while Detail C in the ingle sheath chip corresponds to Detail D in the GSS chip. For the single sheath chip, plaintiffs' expert describes infringement theories based on: (1) Detail B as the first step and Detail C (which is the same as GSS chip's Detail D) as the second step; and (2) Detail C's ramp as the first step and Detail C's taper as the second step.[4]

         C. Prior Art References

         The Cytonome patents use hydrodynamic focusing. Hydrodynamic focusing relies on laminar flow in which two fluid layers (sample and sheath) maintain their relative positions without substantial mixing. More specifically, the Cytonome patents rely on a type of laminar flow, called “sheath flow, ” in which the sample fluid is surrounded by sheath fluid on more than one side. Prior to the Cytonome patents, it was known that: (1) increasing the flow rate of the sheath fluid relative to the flow rate of the sample fluid would narrow the diameter of the sample fluid; and (2) narrowing the dimensions of the channel in which both fluids flow would narrow the diameter of the fluids in the channel. With that brief background, the parties' motions concern three prior art references: Weigl, Tashiro and Wada.

         1. Weigl

         U.S. Patent No. 6, 159, 739, identified by one of its inventors Bernhard Weigl and entitled “Device and Methods for 3-Dimentional Alignment of Particles in Microfabricated Flow Channels, ” was filed on March 26, 1997, and issued on December 12, 2000. (Safiullah Decl., Ex. 7 (dkt. #166-7).) Weigl discloses a sheath flow structure that uses a microfabricated flow channel to create a sheath flow around a sample that contains particles. As reproduced below, a side view of an exemplary embodiment is disclosed in Figure 5A:

         (Image Omitted)

         (Defs.' PFOFs (dkt. #161) ¶ 278.) This embodiment includes a sheath fluid inlet (10b) to introduce sheath fluid into the sheath flow channel (8b) at the first inlet junction (11b). Downstream of the sheath fluid inlet is a sample inlet (20b), though which a sample fluid containing particles is introduced into the sheath flow channel (8b) at the second inlet junction (21b). This embodiment also depicts a second sheath fluid inlet (40) further downstream of the sample inlet, which introduces additional sheath fluid at the third inlet injunction (41). Weigl notes that the inlets may be located on the top or bottom of the channel, and that the embodiment as a whole may be oriented in any direction.

         Defendants characterize this embodiment as “pinching” the sheath fluid “away from the channel walls on three sides as it flows downstream, ” with the third inlet used to “introduce sheath fluid on the fourth and final side, ” thus “pinch[ing] the sample away from” the fourth wall. (Defs.' PFOFs (dkt. #218) ¶¶ 283-84.) Plaintiffs dispute this characterization, arguing among other things that there is no “focusing.” Weigl also provides a top-view of this same embodiment, identified as Fig. 5B:

         (Image Omitted)

         (Defs.' PFOFs (dkt. #161) ¶ 287.) Figure 5B discloses a horizontally tapered region (26b) downstream of the first sheath inlet (11b), the sample inlet (21b), and the second sheath inlet (41). The horizontal taper “may or may not occur in conjunction with a decrease in depth of the flow channel, ” such as in conjunction with the vertical ramp shown in the side view in the previous Figure 5A just downstream of the dashed line marked 5D. (Id. ¶ 288 (quoting Weigl at 12:45-47).)

         While the exemplary embodiment at Figure 5A depicts “the tapered region downstream of both the sample inlet and sheath fluid inlet, ” defendants contend Weigl discloses that the tapered portion can alternatively be located at the sample inlet. (Id. ¶ 289 (citing Weigl at 10:3-4).) Indeed, the cited portion of Weigl states that: “In this embodiment, the second inlet is positioned in the upstream portion. It can alternatively be in the tapered portion. It is preferable to position the second inlet in the upstream portion because this allows for greater and more precise horizontal hydrodynamic focusing.” (Weigl at 10:3-6.) Purporting to dispute this, plaintiffs point to the rebuttal report of their expert, Dr. Vacca, but he does not dispute -- nor could he -- that this language is in Weigl. Instead, Dr. Vacca relies on other language in the specification to contend that Weigl teaches away from this configuration. (Vacca Rept. (dkt. #131) ¶ 229.) While this may be true, just as the last sentence just quoted explains that positioning upstream is "preferable," that language does not foreclose Weigl's configuration of the second inlet in the tapered portion. Instead, Dr. Vacca opines that "a person of skill would have no reason to relocate the fluid introductions downstream of any tapered region." (Id.)

         2. Tashiro

         The second prior art reference is an article, titled "Design and Simulation of Particles and Biomolecules Handling Micro Flow Cells with Three-Dimensional Sheath Flow," which appears to have been published in the Micro Total Analysis Systems 2000: Proceedings of the μTAS 2000 Symposium held in Enschede, The Netherlands, 14-18 May 2000. The parties identify this piece of prior art by the last name of the lead author Koichi Tashiro. (Safiullah Decl., Ex. 9 (dkt. #166-9) ("Tashiro").) Tashiro discloses "[p]articles and cell handling micro fluidic devices . . . using laminar behavior in microfabricated flow channels." (Defs.' PFOFs (dkt. #161) ¶ 299 (citing Tashiro at 209).) In this design, sheath fluid enters a wider inlet ("Carrier Inlet") upstream of the sample inlet, as shown below.

         (Image Omitted)

         (Defs.' PFOFs (dkt. #161) ¶ 300 (citing Tashiro at 210, Fig. 2).) Tashiro explains "[t]o realize the vertical sheath flow with simple inlet structure of carrier and sample, [a] two step[] introduction of carrier flows was considered ... to realize three-dimensional sheath flow," as shown in the above graphic. (Id. ¶ 303 (citing Tashiro at 209).) Tashiro also contains the following illustration, which defendants contend illustrates that "the design hydrodynamically focuses the sample in three dimensions away from all four walls of the channel":

         (Image Omitted)

         (Id. ¶ 304 (citing Tashiro at 210, Fig. 1(b)).)

         Plaintiffs dispute whether the design discloses "focusing" of the sample, but there is no dispute that Tashiro states the design "is quite effective to put the sample flow away from the channel wall." (Pls.' Resp. to Defs.' PFOFs (dkt. #196) ¶ 305 (citing Tashiro at 209).) While defendants point out that Tashiro also states that the design realized "lateral and vertical sheath flow" (Defs.' PFOFs (dkt. #161) ¶ 306 (citing Tashiro at 211)), plaintiffs challenge whether Tashiro actually discloses this, directing the court to their expert Dr. Vacca's report, in which he opines that Tashiro discloses "surrounding" the sample with sheath flow, but not "focusing." (Pls.' Resp. to Defs.' PFOFs (dkt. #196) ¶ 306 (citing Vacca Rept. (dkt. #131) ¶ 77).)

         3. Wada

         Finally, U.S. Patent No. 6, 505, 609, identified by one of its inventors H. Garrett Wada, is entitled "Focusing of Microparticles of Microfluidic Systems" and was issued January 14, 2003. Although issued from an application filed on May 11, 2000, the actual claims priority date is based on a provisional application filed on May 17, 1999. (Safiullah Aff., Ex. 8 (dkt. #166-8) ("Wada").) Wada is directed at "[m]ethods and systems for particle focusing to increase assay throughput in microscale systems" and "it includes methods for providing substantially uniform flow velocity to flowing particles in microfluidic devices." (Defs.' PFOFs (dkt. #161) ¶ 307 (quoting Wada, abstract).) In particular, Figure 1A of Wada is reproduced below, which depicts particles that '"are typically flowed from one microchannel into the ...


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