United States District Court, D. Delaware
B. Blumenfeld and Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT
& TUNNELL LLP, Wilmington, DE
S. Pak, Brian Mack, and Sam Stake, QUINN EMANUEL URQUHART
& SULLIVAN LLP, San Francisco, CA
Victoria F. Maroulis, Yury Kapgan, and Mark Tung, QUINN
EMANUEL URQUHART & SULLIVAN LLP, Redwood Shores, CA
Michael L. Niu, QUINN EMANUEL URQUHART & SULLIVAN LLP,
New York, NY
A. Greco, BECK, BISMONTE, & FINLEY LLP, San Jose, CA
Attorneys for Plaintiff.
J. Balick, Tiffany Geyer Lydon, and Andrew C. Mayo, ASHBY
& GEDDES, Wilmington, DE
R. Barney, Timothy J. May, and Lauren J. Dreyer, FINNEGAN,
HENDERSON, > FARABOW, GARRETT & DUNNER, LLP,
Washington, DC Attorneys for Defendants.
U.S. District Judge:
Medical Systems, Inc. ("Varian") filed suit against
Defendants Elekta AB, Elekta Holdings U.S., Inc., Elekta
Instrument AB, and Elekta Inc. (collectively,
"Elekta"), alleging that Elekta's Leksell Gamma
Knife Icon product infringes Varian's U.S. Patent No. 6,
888, 919, which generally describes and claims a radiotherapy
machine. (See D.I. 52 at ¶¶ 2-3, 32)
Presently before the Court is the issue of claim
construction. The parties submitted technology tutorials
(see D.I. 69, 70) and briefs (see D.I. 71,
72, 76, 77). Both parties also submitted expert declarations
(see D.I. 73, 76 Ex. C, 78), which the Court has
considered. The Court held a claim construction hearing on
December 19, 2016. (See D.I. 126 ("Tr."))
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). "It is a bedrock principle of patent law that
the claims of a patent define the invention to which the
patentee is entitled the right to exclude." Phillips
v. AWHCorp., 415 F.3d 1303, 1312 (Fed. Or. 2005)
(internal quotation marks omitted). "[T]here is no magic
formula or catechism for conducting claim construction."
Id. at 1324. Instead, the court is free to attach
the appropriate weight to appropriate sources "in light
of the statutes and policies that inform patent law."
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, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13 (internal citations and quotation
marks omitted). "[T]he ordinary meaning of a claim term
is its meaning to the ordinary artisan after reading the
entire patent." Id. at 1321 (internal quotation
marks omitted). The patent specification "is always
highly relevant to the claim construction analysis. Usually,
it is dispositive; it is the single best guide to the meaning
of a disputed term." Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
"the claims themselves provide substantial guidance as
to the meaning of particular claim terms, " the context
of the surrounding words of the claim also must be
considered. ! Phillips, 415 F.3d at 1314.
Furthermore, "[o]ther claims of the patent in question,
both asserted and unasserted, can also be valuable sources of
enlightenment... [b]ecause claim terms are normally used
consistently throughout the patent...." Id.
(internal citation omitted).
likewise true that "[differences among claims can also
be a useful guide .... For example, the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim." Id. at
1314-15 (internal citation omitted). This "presumption
is especially strong when the limitation in dispute is the
only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation
in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
also possible that "the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such
cases, the inventor's lexicography governs."
Phillips, 415 F.3d at 1316. It bears emphasis that
"[e]ven 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." Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367,
1372 (Fed. Cir. 2014) (quotingLiebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004))
(internal quotation marks omitted).
addition to the specification, a court "should also
consider the patent's prosecution history, if it is in
evidence." Marhnan v. Westview Instruments,
Inc.,52 F.3d 967, 980 (Fed. Cir. 1995), affd,517 U.S. 370 (1996). The prosecution history, which is
"intrinsic evidence, " "consists of the
complete record of the proceedings before the PTO [Patent and
Trademark Office] and includes the prior art cited during the
examination of the patent." Phillips, 415 F.3d
at 1317. "[T]he prosecution history can often inform the
meaning of the claim language by demonstrating how the
inventor understood the invention and whether the ...