Following remand from the Federal Circuit, Judge Richard G. Andrews affirmed the District Court’s original construction of the term “electrode,” finding it is a “microelectrode having a width of 15 [microns] up to approximately 100 [microns].” Roche Diagnostics Operations, Inc. v. Abbott Diabetes Care, Inc., C.A. No. 07-753-RGA (D. Del. Dec. 5, 2014). Following the Court’s claim construction opinion in the prior district court proceeding, plaintiff moved for reconsideration, advancing a different claim construction theory for the term “electrode” than it had initially advanced. Id. at 1. At the pretrial hearing, Judge Andrews tentatively denied plaintiff’s motion for reconsideration, but nevertheless invited plaintiff to file a brief in opposition to that tentative denial. Id. at 4. Because the opposition brief cited authority and made arguments not previously set forth in any of plaintiff’s other briefing, Judge Andrews found that this was essentially “a second motion for reconsideration.” Id. at 4-5. Judge Andrews denied the motion for reconsideration and entered summary judgment of non-infringement based on the electrode construction. Id. at 5. Plaintiff appealed the summary judgment order based in part on the allegedly erroneous construction of “electrode.” Id. at 1. The Federal Circuit vacated the judgment of non-infringement and remanded to the District Court to “consider the parties’ arguments that pertain to the scope of the term ‘electrode.’”
First, on remand, Judge Andrews requested that the parties address “( 1) whether [plaintiff’s] motion for reconsideration was procedurally appropriate, and (2) if so, whether Defendants waived any procedural objections to [plaintiff’s] new claim construction argument by not addressing them on appeal to the Federal Circuit.” Id. at 6. Considering these issues, Judge Andrews found that the motion for reconsideration “was properly denied on procedural grounds,” especially given that plaintiff raised not only an “argument it did not make, but an argument that is contrary to the argument it did make.” Id. at 8. Accordingly, “on that basis alone,” Judge Andrews adopted the District Court’s original construction of the term “electrode.” Id. at 8.
Nevertheless, consistent with the Federal Circuit’s decision, Judge Andrews addressed the merits of plaintiff’s argument with respect to the construction of the term “electrode.” Id. at 8-15. Judge Andrews considered the concept of “non-planar diffusion,” whether certain examples constituted unclaimed embodiments, whether a particular claim was enabled, and new extrinsic evidence presented by plaintiff. Id. at 10-15. Considering all these points, Judge Andrews affirmed the District Court’s original construction of the term “electrode.” Id. at 15.