Alcohol Monitoring Systems, Inc. v. BI Incorporated
1:11-cv-00301
D. Colo.Jun 20, 2012Background
- AMS sues BI for infringement of patents ‘149, ‘611, and ‘461; ‘461 claims are dismissed from the case.
- BI counterclaims against AMS alleging SCRAM infringes BI’s ‘884 patent, which covers a tamper-detecting ankle strap.
- AMS later moves to amend to add the ‘919 patent and GEO Care as a defendant; the motion is granted.
- A Markman hearing was held in June 2012 to address claim construction for the ‘149, ‘611, and ‘884 patents, and AMS’s summary judgment motion on the ‘884 patent was argued and briefed.
- The court grants AMS’s summary judgment on the ‘884 patent (non-infringement) based on the ‘impedance detection means’ limitation, and then provides claim constructions for the ‘149 and ‘611 patents, with directions for the parties to confer and file status reports by July 19, 2012.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether AMS infringes the ‘884 patent | AMS contends SCRAM lacks the ‘impedance detection means’. | BI asserts SCRAM performs the claimed impedance-detection function. | AMS granted summary judgment of non-infringement on the ‘884 patent. |
| Whether the ‘149 and ‘611 terms require construction | AMS argues certain terms are obvious or already defined in the specification. | BI contends several terms require construction, including timing schedules and connectable relationships. | The court provides constructions for ‘611 terms and finds no construction is necessary for several ‘149 terms. |
| Interpretation of ‘149 – predetermined time intervals according to a first schedule | AMS proposes narrowing or clarifying the timing language to ‘selected points in time’. | BI urges a definite range (every 30 minutes to once per day). | Court declines to adopt BI’s range; holds no construction is required beyond the claim language. |
| Interpretation of ‘149 – transmission timing terms (predetermined intervals, second schedule) | AMS argues for permissive language in some data transmissions. | BI argues transmissions follow the same first schedule or occur immediately under certain conditions. | Court rejects both proposed rewrites; leaves claim language as is, finding no additional construction necessary. |
| Interpretation of ‘611 – “connectable to” | AMS contends it can be broad (software/processor relationships allowed). | BI argues “connectable to” requires separation (distinct devices). | Court adopts a middle ground: items work together but need not be separate devices; proscribed narrowly by prosecution history. |
Key Cases Cited
- Ishida Co. v. Taylor, 221 F.3d 1310 (Fed. Cir. 2000) (means-plus-function analysis; identical-function must be performed in substantially same way)
- Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) (substantial difference analysis in means-plus-function context)
- Minks v. Polaris Indus., Inc., 546 F.3d 1364 (Fed. Cir. 2008) (interchangeability; importance of counterpart structure in means-plus-function)
- Gen. Protecht Grp., Inc. v. Int’l Trade Comm’n, 619 F.3d 1303 (Fed. Cir. 2010) (means-plus-function infringement; substantial similarity required)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (intrinsic evidence dominates claim construction; specification and prosecution history guide meaning)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (U.S. 1996) (claims construction as a matter of law)