1The court notes that Marine Polymer’s format, using smallfont footnotes for citations, violates the local rule of this

district. See LR 5.1(a).

UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Marine Polymer Technologies, Inc.

v. Civil No. 06-cv-100-JD

Opinion No. 2009 DNH 103

HemCon, Inc.

O R D E R

Marine Polymer Technologies, Inc. brings a patent

infringement claim against HemCon, Inc., accusing the HemConTM

Bandage of infringing United States Patent No. 6,864,245 (“the

‘245 patent”). The parties’ summary judgment motions and

objections raise a claim construction issue, which has now been

briefed.1 The claim construction issue is whether the terms

poly-ß-164-acetylglucosamine and poly-ß-164-glucosamine, as used

in the asserted claims of the ‘245 patent, include a limitation

requiring them to be free of protein.

I. Waiver

Marine Polymer contends that HemCon waived the claim

construction issue by not pursuing the protein-free

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 1 of 22
2

interpretation during the first claim construction. “Litigants

waive their right to present new claim construction disputes if

they are raised for the first time after trial.” Cordis Corp. v.

Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009)

(internal quotation marks omitted); see also Eli Lilly & Co. v.

Aradigm Corp., 376 F.3d 1352, 1360 (Fed. Cir. 2004). In

contrast, “a waiver will not necessarily occur if a party simply

presented new or additional arguments in support of the scope of

its claim construction.” 02 Micro Int’l Ltd. v. Beyond

Innovation Tech. Co., Ltd., 521 F.3d 1351, 1359 (Fed. Cir. 2008)

(internal quotation marks omitted). 

In the first claim construction briefing, HemCon asked that

“biocompatible poly-ß-164-acetylglucosamine and biocompatible

poly-ß-164-glucosamine” be construed to mean “material harvested

from plant microalgae . . . that is free of protein,

substantially free of other organic contaminants, substantially

free of inorganic contaminants . . . .” Marine Polymer

interpreted the claim terms to mean “biomedically pure” poly-ß164-acetylglucosamine and poly-ß-164-glucosamine “that

reproducibly exhibits acceptably low levels of adverse

bioreactivity, as determined by biocompatibility tests.” The

terms biocompatible poly-ß-164-acetylglucosamine and

biocompatible poly-ß-164-glucosamine were construed to mean:

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 2 of 22
3

polymers with their stated compositions (poly-ß-164-Nacetylglucosamine and poly-ß-164-glucosamine) and with

low variability, high purity, and no detectable

biological reactivity as determined by biocompatibility

tests. 

For purposes of summary judgment, HemCon contends that the

asserted claims in the patent are limited to materials that are

free of protein. Marine Polymer does not cite a case that

supports waiver in this context. The issue has not been waived.

II. Judicial Estoppel

HemCon asserts that Marine Polymer is judicially estopped

from arguing that the limitation from the court’s previous claim

construction, “high purity,” permits the poly-ß-164-

acetylglucosamine and poly-ß-164-glucosamine claimed to contain

protein. Judicial estoppel “prevents a party from prevailing in

one phase of a case on an argument and then relying on a

contradictory argument to prevail in another phase.” Zedner v.

United States, 547 U.S. 489, 504 (2006) (internal quotation marks

omitted). While the doctrine of judicial estoppel is not clearly

defined, courts consider certain factors to determine its

applicability: (1) whether the arguments are clearly

inconsistent, (2) whether the court adopted the first argument,

which would lead to inconsistent results, and (3) whether the

party’s inconsistent arguments would cause an unfair advantage or

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 3 of 22
2“Whether judicial estoppel applies [in a patent case] is a

matter of regional circuit law.” Minn. Mining & Mfg. Co. v.

Chemque, Inc., 303 F.3d 1294, 1302 (Fed. Cir. 2002).

4

detriment to the opposing party. New Hampshire v. Maine, 532

U.S. 742, 750-51 (2001); accord Decisioning.com, Inc. v.

Federated Dep’t Stores, Inc., 527 F.3d 1300, 1313 (Fed. Cir.

2008). In the First Circuit, the first two factors are necessary

to find judicial estoppel, and the party offering inconsistent

positions need not have benefitted from the court’s acceptance of

its first argument.2 Thore v. Howe, 466 F.3d 173, 182 (1st Cir.

2006). 

During the initial claim construction process, HemCon argued

that the claims of the ‘245 patent were limited to microalgae

sources while Marine Polymer argued that the claims did not

include a source limitation. HemCon contends that because Marine

Polymer was successful in the initial claim construction, it is

now estopped from arguing that poly-ß-164-acetylglucosamine and

poly-ß-164-glucosamine, which was construed to have “high

purity,” can include detectable protein. More specifically,

HemCon contends that Marine Polymer previously argued that the

‘245 patent claims solved the problem of impure chitin, from both

crustacean and microalgae sources, and now contradicts that

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 4 of 22
3Although HemCon quotes sections that it represents are from

Marine Polymer’s brief, it does not provide citations that would

allow the court to find the quoted sections.

5

position by arguing that the claims do not require protein-free

poly-ß-164-acetylglucosamine and poly-ß-164-glucosamine. 

Marine Polymer did not argue in the course of the first

claim construction that biocompatible poly-ß-164-

acetylglucosamine and poly-ß-164-glucosamine, as used in the

asserted claims of the ‘245 patent, was protein free. HemCon’s

theory is that Marine Polymer argued against a source limitation

based on its identification of the problem solved by the ‘245

patent that prior art material contained proteins and other

contaminants.3 HemCon then infers that Marine Polymer relied on

a theory that the ‘245 patent claimed protein-free poly-ß-164-

acetylglucosamine and poly-ß-164-glucosamine from all sources.

HemCon’s judicial estoppel theory is difficult to follow. 

Even assuming that Marine Polymer relied on an argument that the

‘245 patent solved the problem of prior art chitin that had

protein and other contaminants, which HemCon has not established,

that position would not clearly contradict Marine Polymer’s

current position that the claims do not include a protein-free

limitation. Therefore, judicial estoppel does not bar Marine

Polymer’s arguments here. 

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 5 of 22
6

III. Claim Construction

“Claim construction is an issue of law.” Felix v. Am. Honda

Motor Co., Inc., 562 F.3d 1167, 1176 (Fed. Cir. 2009). The

patent claims define the invention for purposes of an

infringement action. Phillips v. AWH Corp., 415 F.3d 1303, 1312

(Fed. Cir. 2005). “[T]he words of a claim are generally given

their ordinary and customary meaning,” which is “the meaning that

the term would have to a person of ordinary skill in the art in

question at the time of the invention.” Id. at 1312-13 (internal

quotation marks omitted). “[T]he court looks to those sources

available to the public that show what a person of skill in the

art would have understood disputed claim language to mean. Those

sources include the words of the claims themselves, the remainder

of the specification, the prosecution history, and extrinsic

evidence concerning relevant scientific principles, the meaning

of technical terms, and the state of the art.” Id. at 1314.

As a preliminary matter, Marine Polymer contends that the

claim construction issue raised by HemCon cannot be addressed

because it requires construing a term used in the court’s

previous claim construction rather than a disputed term in an

asserted patent claim. See E-Pass Techs., inc. v. 3Com Corp.,,

473 F.3d 1213, 1220 (Fed. Cir. 2007). Specifically, Marine

Polymer argues that HemCon is seeking interpretation of the term

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 6 of 22
7

“high purity,” used in the previous claim construction. Although

parts of HemCon’s brief improperly suggests an interpretation of

the term “high purity,” that is not the term which is being

construed. Instead, the terms poly-ß-164-acetylglucosamine and

poly-ß-164-glucosamine, as used in the asserted claims of the

‘245 patent, are construed to determine whether the patent claims

include a protein-free limitation.

A. Claims

The terms poly-ß-164-acetylglucosamine and poly-ß-164-

glucosamine are referred to, collectively, as p-GlcNAc. Neither

the asserted claims nor any of the other claims of the ‘245

patent include an express limitation that the p-GlcNAc claimed is

protein free. The claims do not define p-GlcNAc with respect to

protein. Each claim addresses either biocompatible poly-ß-164-Nacetylglucosamine or biocompatible poly-ß-164-glucosamine with

differing numbers of monosaccharides, molecular weights, amounts

of deacetylization, or elution test scores. Therefore, the

claims alone do not resolve the claim construction issue as to

whether p-GlcNAc claimed in the ‘245 patent is protein free.

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 7 of 22
8

B. Specification

To determine how one skilled in the art would interpret a

particular claim term, the court considers the disputed term in

light of the entire patent, including descriptions of the

invention provided in the specification. Computer Docking

Station Corp. v. Dell, Inc., 519 F.3d 1366, 1373-74 (Fed. Cir.

2008). Limitations, however, cannot be taken from statements in

the specification and imported into the claims. Id. at 1374. 

“[T]he distinction between using the specification to interpret

the meaning of a claim and importing limitations from the

specification into the claim can be a difficult one to apply in

practice.” Phillips, 415 F.3d at 1323. 

The Federal Circuit advises courts to remain focused “on

understanding how a person of ordinary skill in the art would

understand the claim terms.” Id. “That balance turns on how the

specification characterizes the claimed invention.” Alloc, Inc.

v. Int’l Trade Comm’n, 342 F.3d 1361, 1370 (Fed. Cir. 2003). The

court must decide “whether the specification refers to a

limitation only as a part of less than all possible embodiments

or whether the specification read as a whole suggests that the

very character of the invention requires the limitation be a part

of every embodiment.” Id.; accord Praxair, Inc. v. ATMI, Inc.,

543 F.3d 1306, 1324 (Fed. Cir. 2008).

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 8 of 22
9

Patent claims are not limited to specific or preferred

embodiments that are described in the specification, even if the

specification describes only one embodiment. Phillips, 415 F.3d

at 1323. On the other hand, “when a patentee uses a claim term

throughout the entire patent specification, in a manner

consistent with only a single meaning, he has defined that term

‘by implication.’” Bell Atl. Network Servs., Inc. v. Covad

Communc’ns Group, Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001); see

also Computer Docking, 516 F.3d at 1374 (“repeated and definitive

remarks in the written description could restrict a claim

limitation to a particular structure”); Andersen Corp. v. Fiber

Composites, LLC, 474 F.3d 1361, 1366-68 (Fed. Cir. 2007). 

Similarly, when a family of patents shares a common specification

that “repeatedly and consistently describes . . . the claimed

inventions” using a particular limitation or describes the

“overall inventions” in a way that leads to the “inescapable

conclusion” that all of the patent claims share a limitation,

that limitation is read into the claims by implication. 

Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347-48

(Fed. Cir. 2004) (citing SciMed Life Sys., Inc. v. Advanced

Cardiovascular Sys., Inc., 242 F.3d 1337, 1342 (Fed. Cir. 2001)). 

Using a phrase such as “the present invention” in a shared

specification may describe the invention as a whole, thereby

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 9 of 22
4As the court noted in the prior claim construction order,

the shared specification is an impediment to a clear

understanding of the scope of each patent.

10

limiting the meaning of the claim terms to that description,

unless that conclusion is contrary to the context of the entire

specification or the prosecution history. Netcraft Corp. v.

eBay, Inc., 549 F.3d 1394, 1398 (Fed. Cir. 2008).

HemCon asserts that the ‘245 patent specification

demonstrates that the p-GlcNAc of the invention is free of

protein, making that limitation part of each of the claims. 

Marine Polymer disputes HemCon’s interpretation of p-GlcNAc based

on the specification. Noting that the ‘245 patent is one in a

family of related patents, which share the same specification,

Marine Polymer argues that the “free of protein” limitation

included in parts of the specification applies to some but not

all of the patents in the family.4 Marine Polymer contends that

the specification does not require the protein limitation in the

‘245 patent claims and warns against importing limitations from

the specification into the claims.

 The Abstract states: “The p-GlcNAc of the invention is a

polymer of high molecular weight whose constituent monosaccharide

sugars are attached in ß-164 conformation, and which is free of

proteins, and substantially free of single amino acids, and other

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 10 of 22
11

organic and inorganic compounds.” (Emphasis added.) The same

definition is repeated in the Introduction, “[t]he p-GlcNAc of

the invention is a polymer of high molecular weight whose

constituent monosaccharide sugars are attached in a ß-164

conformation, and which is free of proteins, and substantially

free of single amino acids, and other organic and inorganic

contaminants.” Col. 2, ll. 65, Col. 3. ll. 1-5 (emphasis added). 

The “Summary of the Invention” section of the ‘245 specification

also states that “[t]he p-GlcNAc of the invention is a polymer of

high molecular weight whose constituent monosaccharides are

attached in a ß-164 conformation, and which is free of proteins,

substantially free of other organic contaminants, and

substantially free of inorganic contaminants.” Col. 4, ll. 11-15

(emphasis added). 

In the Detailed Description of the Invention, p-GlcNAc is

addressed in more detail. There, the p-GlcNac of the invention

is described as “a polymer of high molecular weight” with a

corresponding number of “N-acetylglucosamine monosaccharides

attached in a ß-164 configuration” and with a preferred number of

N-acetylglucosamine monosaccharides. Col. 9, ll. 16-25. No

mention is made of protein in the first paragraph of the Detailed

Description.

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 11 of 22
12

The Detailed Description continues in the second paragraph

to explain that the p-GlCNAc of the invention has very low

variability and very high purity, which are demonstrated “by

chemical and physical criteria.” The chemical and physical

criteria referred to are “chemical composition and nonpolysaccharide contaminants.” Col. 9, ll. 28-31. Chemical

composition and contaminant data from two different purification

methods (“Mechanical Force Method” and “Chemical/Biological

Method”) are shown in Table I. The Detailed Description explains

that “as is also shown in Table I, the p-GlcNAc produced is free

of detectable protein contaminants, is substantially free of

other organic contaminants such as free amino acids, and is

substantially free of inorganic contaminants such as ash and

metal ions . . . .” Col. 9, ll. 39-44 (emphasis added).

That section further explains that “preferably, the p-GlcNAc

of the invention contains a profile as exemplified in the

Experimental Data on p-GlCNAc mats in Table I.” Col. 9, ll. 52-

54. The part of Table I, labeled “Experimental Data on p-GlcNAc

Mats,” shows results for the two different production methods,

the Mechanical Force Method and the Chemical/Biological Method. 

Under both methods, the average values for protein are “0.00.” 

Although the specification does not define biocompatibility to

require protein-free p-GlcNAc, the p-GlcNAc used in the

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 12 of 22
13

biocompatibility tests was produced by the Mechanical Force

Method, which produces only protein-free p-GlcNAc. Col. 42-43;

Col. 9 - 10, Table I. 

“It is true that [the court] should not import limitations

from the specification into the claims.” ICU Med., Inc. v.

Alaris Med. Sys., Inc., 558 F.3d 1368, 1375 (Fed. Cir. 2009). On

the other hand, however, the specification shows what a person of

ordinary skill in the art would understand the disputed term to

mean in the context of the patent. Id. The specification

describes the scope of the patent claims. Revolution Eyewear,

Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1367 (Fed. Cir.

2009). When the specification indicates that a term is limited

in a particular manner, the ordinary meaning of the term can be

inferred to include that limitation. ICU Med., 558 F.3d at 1375. 

It is improper to adopt an expansive construction of a disputed

term, which goes beyond the ordinary meaning of the term as

described in the specification. Kinetic Concepts, Inc. v. Blue

Sky Med. Group, Inc.. 554 F.3d 1010, 1019 (Fed. Cir. 2009).

Here, the specification repeatedly refers to p-GlcNAc that 

is protein free. Nothing in the specification indicates that

the claimed p-GlcNAc may include protein. On the other hand,

while the specification includes general statements that the pGlcNAc of the invention is free of protein, the section devoted

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 13 of 22
14

to a detailed description of the p-GlcNAc claimed by the patent

describes it as having very low variability and very high purity,

without specifically limiting the amount of protein. In that

section, the preferred embodiment is described as protein-free. 

“Th[e] description of a preferred embodiment, in the absence

of a clear intention to limit claim scope, is an insufficient

basis on which to narrow the claims.” Decisioning.com, Inc. v.

Federated Dept. Stores, Inc., 527 F.3d 1300, 1314 (Fed. Cir.

2008). “Even when the specification describes only a single

embodiment, the claims of the patent will not be read

restrictively unless the patentee has demonstrated a clear

intention to limit the claim scope using words or expressions of

manifest exclusion or restriction.” Liebel-Flarsheim Co. v.

Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal

quotation marks omitted). 

The p-GlcNAc that is produced by the two purification

methods, the results of which are shown in Table I, are proteinfree. Composition claims and method claims, however, are

directed to different inventions. See Pfizer, Inc. v. Teva

Pharms., 518 F.3d 1353, 1357 (Fed. Cir. 2008). Because the ‘245

patent, with composition claims, shares the specification with

patents for method claims, the description of the methods cannot

be read to limit the composition claims.

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 14 of 22
15

The claims and specification do not resolve the meaning of

p-GlcNAc with respect to a protein limitation. The protein-free

limitation, which is at least a preferred embodiment, can be

imported into the claims of the ‘245 patent only if the rest of

the intrinsic evidence show a clear intent to limit the claims to

protein-free p-GlcNAc. See Abbott Labs. v. Sandoz, Inc., 566

F.3d 1282, 1290 (Fed. Cir. 2009). 

C. Prosecution History

The prosecution history of a patent also informs claim

construction by showing the inventor’s understanding of the

invention and whether claims were limited in scope during patent

prosecution. Phillips, 415 F.3d at 1317. “A disclaimer must be

clear and unmistakable, and unclear prosecution history cannot be

used to limit claims.” Cordis Corp. v. Boston Sci. Corp., 561

F.3d 1319, 1329 (Fed. Cir. 2009). “When the application of

prosecution disclaimer involves statements from prosecution of a

familial patent relating to the same subject matter as the claim

language at issue in the patent being construed, those statements

in the familial application are relevant in construing the claims

at issue.” Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314

(Fed. Cir. 2007); see also Jonsson v. Stanley Works, 903 F.2d

812, 818 (Fed. Cir. 1990).

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 15 of 22
5Some of the related patents include an explicit proteinfree limitation, while others, like the ‘245 patent, do not.

16

The family of fifteen related patents, of which the ‘245

patent is a part, began with Application No. 08/160,569, filed on

December 1, 1993.5 The Abstract of the Disclosure of the ‘569

application states, in part, that “[t]he present invention

relates to a purified, easily produced biocompatible [p-GlcNAc]

polysaccharide species. The p-GlcNAc of the invention is a

polymer of high molecular weight whose constituent monosaccharide

sugars are attached in a ß-164 conformation, and which is free of

proteins, and substantially free of amino acids, and other

organic and inorganic contaminants.” Pl. Br. (doc. no. 48) at 3. 

The ‘569 application explains that broad nature of the invention

which includes “derivatives and reformulations of p-GlcNAc,” and

methods for purification, derivatization and reformulation, and

uses of p-GlcNAc. Id.

In support of the ‘569 application, the inventors submitted

the declarations of David J. Cole, an assistant professor of

surgery at the Medical University of South Carolina; George C.

Ruben, a research professor of biology at Dartmouth College; and

Sergio Finkielstein, one of the inventors. Each declaration

addresses the chitin material produced by a method invented by J.

McLachlan in 1991, along with others, and distinguishes prior art

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 16 of 22
17

chitin from the invention that was the subject of the ‘569

application. The declarations used to support the ‘569

application were resubmitted later in support of patent

applications for the progeny of the ‘569 application. Some of

those patents have claims for protein-free p-GlcNAc, while

others, including the ‘245 patent, do not have a protein-free

limitation.

The declarants noted, as a distinguishing factor, the lack

of contaminants in the p-GlcNAc of the ‘569 application and, in

particular, that the p-GlcNAc of the invention was protein free. 

Dr. Cole stated that “the McLachlan material contains extensive

ash and protein contamination . . . [which] could pose a possible

safety threat . . .” Doc. no. 134, Ex. 4. He also said, “The

‘569 application [p-GlcNAc] material, on the other hand,

represents an extremely promising candidate for use in biomedical

applications . . . . the material shows virtually no

contamination. Specifically, the ‘569 application contains no

protein and very little ash.” Id. Similarly, Dr. Ruben

“expressed [his] belief that the data in the [‘569] application

establishes, for the first time, a method which successfully

yields a protein-free, fully acetylated [p-GlcNAc] polymer.” 

Doc. no. 129, Ex. 11. Dr. Ruben distinguished the McLachlan

materials based on protein contamination.

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 17 of 22
18

In an amendment to the ‘569 patent, dated May 1, 1996,

responding to a patent office action, the applicants described pGlcNAc as protein free. In their remarks, the applicants stated: 

“Importantly, the protein-free, fully acetylated [p-GlcNAc]

compositions described and claimed in the instant application

differ not merely in degree but in kind from the chitan of the

cited art.” Doc. no. 129, Ex.8. “In sum, the cited art does not

suggest the claim protein-free [p-GlcNAc] of the invention . . .

.” Id.

HemCon argues that the prosecution history shows that the

‘569 application distinguished its invention based, in part, on

claiming p-GlcNAc that was protein free. Because the progeny of

the ‘569 application used the same distinguishing factors, HemCon

contends that all of the p-GlcNAC claimed by the family of

patents includes the protein-free limitation. Marine Polymer

asserts that only the patents with a protein-free limitation are

subject to the prosecution history disclaimer because the patents

without the limitation do not include the same terms and,

therefore, the disclaimer does not apply.

The prosecution history of a related patent can be relevant

to claim construction if the history addresses a shared claim

term. Adv. Cardiovascular Sys. v. Medtronic, Inc., 265 F.3d

1294, 1305 (Fed. Cir. 2001). “[T]he same claim term in the same

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 18 of 22
19

patent or related patents carries the same construed meaning.” 

Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir.

2003). Statements made during the prosecution of related

patents, about shared claim terms, may show how the inventor

understood the invention. Ventana Med. Sys. v. Biogenex Labs.,

473 F.3d 1173, 1184 (Fed. Cir. 2006).

Marine Polymer contends that the prosecution history cited

by HemCon addresses “protein-free p-GlcNAc,” claimed in some of

the related patents, not the p-GlcNAc claimed in the ‘245 patent

that lacks the “protein free” limitation. Relying on Ventana and

Adv. Cardiovascular, Marine Polymer asserts that HemCon is

attempting to use prosecution histories from related patents to

construe different claim terms in the ‘245 patent and that the

present dispute, as in Adv. Cardiovascular, involves the absence

of a claim term, the protein-free limitation. HemCon responds

that the inventors relied on the Cole Declaration, which limited

the p-GlcNAc of the invention claimed in the patent family to

protein-free p-GlcNAc, for both patents with an explicit proteinfree limitation and patents without that limitation.

Marine Polymer acknowledges that the inventors relied on the

Cole Declaration in support of applications for related patents

that do not include an explicit protein-free limitation. It

argues, however, that in those cases, the Declaration emphasized

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 19 of 22
6Marine Polymer relies on a theory of claim differentiation,

which, strictly speaking, does not apply in the context of claims

in different related patents as opposed to independent and

dependent claims in the same patent. See Regents of Univ. of

Cal. v. Dakocytomation Cal., Inc., 517 F.3d 1364, 1375 (Fed. Cir.

2008) (doctrine of claim differentiation creates a presumption

that a limitation explicit only in a dependent claim is not in

the independent claim from which the claim depends); Halliburton

Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 n.3 (Fed.

Cir. 2008) (same).

20

the importance of safety for biomedical applications, which

includes both purity and batch reproducibiilty that were unique

to the p-GlcNAc of those inventions. Marine Polymer also points

out that the patent examiners did not mention protein content in

allowing the related patents and that it made no explicit

disclaimer of p-GlcNAc with protein.

D. Limitation in Related Patents

Marine Polymer further argues that because claims in other

related patents include a protein-free limitation, the p-GlcNAc

of the claims in the ‘245 patent should not be construed to

include that limitation.6 A presumption exists that, “‘unless

otherwise compelled, [] the same claim term in the same patent or

related patents carries the same construed meaning.’” Z4 Techs.,

Inc. v. Microsoft Corp., 507 F.3d 1340, 1348 (Fed. Cir. 2007)

(quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334

(Fed. Cir. 2003) (emphasis added)); NTP, Inc. v. Res. in Motion,

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 20 of 22
21

Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because [the

plaintiff’s] patents all derive from the same parent application

and share many common terms, we must interpret the claims

consistently across the asserted patents.”). All terms in a

claim are presumed to have meaning. Innova/Pure Water, Inc. v.

Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1120 (Fed.

Cir. 2004). A construction that avoids rendering a claim term

meaningless or superfluous is preferred. See Mangosoft, Inc. v.

Oracle Corp., 525 F.3d 1327, 1330-31 (Fed. Cir. 2008). On the

other hand, claim construction tools provide guidance rather than

rigid requirements. ICU Med., 558 F.3d at 1376; Netcraft Corp.

v. eBay, Inc., 549 F.3d 1394, 1400 n.1 (Fed. Cir. 2008). 

Marine Polymer provides excerpts from twelve of the fourteen

other patents in the family of patents related to the ‘245

patent. Of those, eight patents, all dated between 1997 and

2000, include a protein-free limitation. The five more recent

patents, including the ‘245 patent, do not include a protein-free

limitation. Marine Polymer argues that if p-GlcNAc were

construed to mean protein-free p-GlcNAc, that limitation, which

is explicit in the earlier patents, would be rendered

superfluous.

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 21 of 22
22

E. Claim Construction

Given the rule that limitations are not to be imported from

a patent specification into the claims and indications that the

“protein free” limitation was intended for only some, but not

all, of the related patents, it is not appropriate to add a

protein-free limitation to the claims of the ‘245 patent. 

Therefore, the claim construction remains as held in the claim

construction order issued on May 6, 2008.

Conclusion

For the foregoing reasons, the terms poly-ß-164-

acetylglucosamine and poly-ß-164-glucosamine, as used in the

asserted claims of the ‘245 patent, do not include a limitation

requiring them to be free of protein.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

July 9, 2009

cc: Julie M. Baher, Esquire

Daniel R. Johnson, Esquire

Joseph A. Kromholz, Esquire

Richard B. McNamara, Esquire

Lynda Q. Nguyen, Esquire

Brian M. Poissant, Esquire

Daniel D. Ryan, Esquire

Ognian V. Shentov, Esquire

Jonathan M. Shirley, Esquire

Daniel E. Will, Esquire

Leigh S. Willey, Esquire

Case 1:06-cv-00100-JD Document 145 Filed 07/09/09 Page 22 of 22