Free Order - District Court of Delaware - Delaware

Case 1 :04-cv-01505-GIVIS Document 77 Filed O3/O9/2006 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
THERMO FINNIGAN LLC, )
Plaintiff, g
v. l C.A. N0. 04-1505 (GMS)
APPLERA CORP., l
Defendant. ;
ORDER
1. A Mczrkman hearing for the purpose of constming the disputed tenns of
U.S. Patent No. 5,385,654 (filed July 7, 1993) ("the ‘654 Patent") is scheduled for Thursday,
March 16, 2006. In the interest of efficiency, the court will direct the parties to allocate a
sufficient portion of their respective presentation times to address the following queries.
2. Regarding the term "capillary electrophoresis," the court queries why neither party’s
proposed construction mirrors the definition set forth in the specification, Le., a "method to
separate small analytes [eg., anions] at very low concentration levels by exploiting the
different mobilities of sample components in an electric field." ‘654 Patent col.1 11.19-22.
Is there a difference between capillary zone electrophoresis and capillary electrophoresis?
If the court were to adopt this constmction, would it be inconsistent for the court to
simultaneously reject the defendant’s proposed construction of "anions"? In other words,
is it possible for an anion to be "smal1" without also being "1ow molecular weight" and
"monomeric"‘?
3. Regarding the term "can‘ier electro1yte," how does the defendant respond to the plaintiff` s
argument that "any electrically conductive fluid medium" fails to account for the qualifier

Case 1:04-cv—O1505-G|\/IS Document 77 Filed O3/O9/2006 Page 2 of 3
"for the sample" used in the patent? Conversely, how does the plaintiff respond to the
defendant’s argument that the "‘654 patent claims a method of detecting and separating
anions, not all ions"? (D.I. 75 at ll (emphasis in original).)
4. Regarding the phrase "maintaining the termperature ..., " is there any intrinsic or extrinsic
evidence that the thermal—control system disclosed in U.S. Patent No. 5,066,382 (filed Jan.
25, 1990) ("the ‘382 Patent") would work for a system that uses "liquid circulating around
the capillary" or "metal radiator plates" to maintain the temperature? In other words, does
the thermal-control system claimed by the ‘382 Patent only work in a system that uses
circulating air?
5. Would it be accurate to construe the term "electoosmotic flow" as “the bulk flow ofliquid
due to the effect of an electric field on positively charged ions (cations) adjacent to the
negatively—charged capillary wall"? Is the plaintiff correct that such a definition would lead
to one-directional flow? Is the court incorrect in understanding that flow reversal is actually
the result ofthe addition ofan electroosmotic flow modifier that adds cationic molecules to
the capillary wall, such that the wall essentially assumes a positive charge?
6. Regarding the term "electroosmotic flow modifier," the court queries why neither party’s
proposed construction mirrors the definition set forth in the specification, L. e., a substance
that "controls the speed and/ or direction ofthe electroosmotic flow ofthe carrier electrolyte."
‘654 Patent col.2 ll.65—67. Is the court incorrect in understanding that the electroosmotic
flow can be enhanced (Le., sped up in the direction of the cathode) through the use of an
electroosmotic flow modifier that adds anionic molecules to the capillary wall? In other
words, why does the defendant’s proposed construction limit electroosmotic flow modifiers
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Case 1:04-cv—O1505-G|\/IS Document 77 Filed O3/O9/2006 Page 3 of 3
to those that only add cationic molecules to the capillary wall?
IT IS HEREBY ORDERED THAT:
The parties allocate a sufficient portion of their respective presentation times at the March 16
.Mm·/mmn hearing to address the above queries,
Dated; March EI , 2006 ¤
ST TES DISTRIC JUD
F I L E D
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