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Boston Scientific Corp. v. Cook Group Inc.

United States District Court, D. Delaware

April 12, 2017

BOSTON SCIENTIFIC CORPORATION and BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs/Counterclaim Defendants,
v.
COOK GROUP INCORPORATED and COOK MEDICAL LLC, Defendants/Counterclaimants.

          REPORT AND RECOMMENDATION

          CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE.

         In this action filed by Plaintiffs/Counterclaim Defendants Boston Scientific Corporation ("BSC") and Boston Scientific SciMed, Inc. ("BSSI") (collectively, "Plaintiffs" or "Boston Scientific") against Defendants/Counterclaimants Cook Group Incorporated and Cook Medical LLC (collectively, "Defendants" or "Cook"), Plaintiffs allege infringement of United States Patent Nos. 8, 685, 048 (the "'048 patent"), 8, 709, 027 (the "'027 patent"), 8, 974, 371 (the "'371 patent"), and 9, 271, 731 (the "731 patent") (collectively, the "asserted patents" or the "patents-in-suit"). Presently before the Court is the matter of claim construction. The Court recommends that the District Court adopt the constructions set forth below for the three terms discussed in this Report and Recommendation.[1]

         I. BACKGROUND AND LEGAL STANDARDS

         This Report and Recommendation incorporates by reference the content of Sections I and II of the Court's December 22, 2016 Report and Recommendation, which included background on the parties, the asserted patents and the case's procedural posture, as well as a summary of the general principles of claim construction. (D.I. 80 at 2-6)

         The claim construction disputes set out in this Report and Recommendation relate to Cook's assertion that certain claims are indefinite under Section 112, and so some discussion of the legal standards for definiteness is now also in order. Section 112 requires that a patent claim "particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2 ("Section 112, paragraph 2").[2] If it does not, the claim is indefinite and therefore invalid. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2125 (2014) ("Nautilus"). In Nautilus, the Supreme Court of the United States set out the test to be applied in the indefiniteness inquiry: "a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Id. at 2124. Definiteness is to be evaluated from the perspective of someone skilled in the relevant art at the time the patent was filed. Id. at 2128.

         The primary purpose of the definiteness requirement is to ensure that patent claims are written in such a way that they give notice to the public of what is claimed, thus enabling interested members of the public (e.g., competitors of the patent owner) to determine whether they infringe. All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002). Put another way, "[a] patent holder should know what he owns, and the public should know what he does not." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 731 (2002).

         Like claim construction, definiteness is a question of law for the court. H-WTech, L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1332 (Fed. Cir. 2014); Pi-NetInt'l Inc. v. JPMorgan Chase & Co., 42 F.Supp.3d 579, 586 (D. Del. 2014). The United States Court of Appeals for the Federal Circuit has stated that "[a]ny fact critical to a holding on indefiniteness . . . must be proven by the challenger by clear and convincing evidence." Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008).

         II. DISCUSSION

         Below, the Court addresses the three remaining terms at issue-"tension member, " "a linkage" and "opening element"-in the order in which they were to be presented at the Markman hearing.

         A. "tension member"

         The term "tension member" appears in dependent claims 10 and 17 of the '371 patent. Plaintiffs assert that the term should be afforded its plain and ordinary meaning. (D.I. 56 at 29-30) Defendants argue that "tension member" is a means-plus-function limitation under Section 112, paragraph 6. (Id.) They state that the term connotes only the function '"to bias the first and second arms to the expanded configuration[, ]"' with a corresponding structure of "tension member 206, clip arms 208, and yoke 204 with yoke overhangs 254, with the proximal ends 252 of clip arms 208 under yoke overhangs 254, so that the clip arms 208 are allowed to pivot over tension member 206[.]" (Id.)

         1. 35U.S.C. §112, ¶6

         35 U.S.C. § 112, ¶ 6 ("Section 112, paragraph 6") provided as follows:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

         The "means-plus-function" technique of claim drafting is a "convenience" that allows a patentee to express a claim limitation in functional terms "without requiring the patentee to recite in the claims all possible structures" that could perform that function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 3AA F.3d 1205, 1211 (Fed. Cir. 2003) (internal quotation marks and citation omitted). In exchange for getting the benefit of this drafting convenience, however, patentees must disclose, in the written description of the patent, a corresponding structure for performing the claimed function. Noah Sys, Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012); see also Elekta, 3AA F.3d at 1210 ('"[T]he price that must be paid for use of that convenience is limitation of the claim to the means specified in the written description and equivalents thereof.'"). A patentee satisfies this requirement "only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (emphasis added) (quoting Elekta, 344 F.3d at 1210); see also Elekta, 3AA F.3d at 1220 ("The public should not be required to guess as to the structure for which the patentee enjoys the right to exclude. The public instead is entitled to know precisely what kind of structure the patentee has selected for the claimed functions, when claims are written according to section 112, paragraph 6.")- "If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have failed to particularly point out and distinctly claim the invention as required by . . . section 112, [paragraph 2] which renders the claim invalid for indefiniteness." Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks and citation omitted).

         Before determining whether a claim term satisfies the requirements of Section 112, paragraph 6, a court must assess whether Section 112, paragraph 6 even applies to the term in the first place. In making that determination, the Federal Circuit has long recognized the importance of whether or not the claim element utilizes the term "means." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). If it does, then this creates a rebuttable presumption that Section 112, paragraph 6 is applicable; if it does not, then there is a rebuttable presumption that Section 112, paragraph 6 does not apply. Id.[3]The party challenging that presumption bears the burden of overcoming it "by a preponderance of the evidence." Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014), overruled on other grounds by Williamson, 792 F.3d 1339. If, for example, a claim term does not use the word "means, " then a challenger may overcome the presumption that Section 112, paragraph 6 does not apply by showing that "the claim term fails to 'recite[] sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function.'" Williamson, 792 F.3d at 1348 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)); see also M2MSols. LLC v. Sierra Wireless Am., Inc., Civil Action No. 12-30-RGA, 2015 WL 5826816, at *1 (D. Del. Oct. 2, 2015). The standard is "whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson, 792 F.3d at 1348; see also M2M, 2015 WL 5826816, at *1. "[I]t is proper to consult the intrinsic record, including the written description, when determining if a challenger has rebutted the presumption that a claim lacking the term 'means' recites sufficiently definite structure." Inventio AG v. Thyssen Krupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011), overruled on other grounds by Williamson, 792 F.3d 1339; see also Apple, 757 F.3d at 1298.

         If a claim term turns out to be subject to the application of Section 112, paragraph 6, then a court must assess whether the specification discloses sufficient structure to correspond to the claimed function. Williamson, 792 F.3d at 1351. This process of construing a means-plus-function limitation proceeds in two steps. The first step is determining the claimed function of the limitation. Id.; Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The second step is identifying the corresponding structure disclosed in the specification and equivalents thereof. Williamson, 792 F.3d at 1351; Medtronic, Inc., 248 F.3d at 1311.

         Turning now back to the claim term "tension member, " the Court first notes that the relevant claims of the '371 patent do not use the words "means" in discussing what a "tension member" is or how it functions. And so there is a presumption that Section 112, paragraph 6 does not apply. Defendants nonetheless contend that this presumption has been overcome here. (D.I. 56 at 29-30; D.I. 61 at 19-20) The Court will therefore "construe the claim limitation to decide if it connotes 'sufficiently definite structure' to a person of ordinary skill in the art[.]" Apple, 757 F.3d at 1296.

         According to Plaintiffs, the claims provide "a structural description of the 'tension member'" through their description of how the "tension member" "connects to and interacts with other components of the invention." (D.I. 57 at 25) (citing Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 WL 7770208, at *11 (N.D. Cal. Dec. 3, 2015)) And indeed, the claims state that the "tension member" is "slidably received in the capsule and configured to bias the first and second arms to the expanded configuration." ('371 patent, cols. 17:34-36, 18:33-35) This description, in addition to articulating the "tension member'" s function (it biases the clip arms), also provides insight into the required physical structure of the "tension member." That is, as Plaintiffs note, it requires that the "tension member" is of a size and shape such that: (1) it "fits inside the capsule"; (2) it can be "positioned between the clip arms"; and (3) it is able to exert a force on both the clip arms to "engage[] the clip arms [and] urge them radially outward." (D.I. 57 at 26; Plaintiffs' Claim Construction Hearing Slides at 50) Courts have found that claim elements described in similar ways have not been subject to Section 112, paragraph 6. See, e.g., Telebrands Corp. v. GMC Ware, Inc., CASE NO.: CV 15-03121 SJO (JCx), 2016 WL 6237917, at *8 (CD. Cal. Aug. 17, 2016) (concluding that the term "driving element" was "outside the ambit of [Section 112, paragraph 6, ]" in part because the claim language imposed limitations on the shape, location, and size of the disputed component, and also described how the element "operate[d] against the 'threaded sleeve' of the actuating element"); Finjan, 2015 WL 7770208, at *11 (finding that claim's description of how a "content processor" interacted with the invention's other components "inform[ed] the term's structural character"); cf. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1023-24 (Fed. Cir. 2006) (concluding, pre-Williamson, that the term "compression member" was not a means-plus-function limitation because the "claim language demonstrates that the compression member must fit inside the cylindrical opening and be of sufficient size to exert a force on the screw head, which implies structure" and "[t]he specification likewise makes clear that the term . .. refers to a particular cylindrical insert and is not simply a general reference to any structure that will perform a particular function").

         The specification supports this conclusion. For example, it again explains that the tension member must be structured and positioned such that it "allow[s] [the clip arms] to pivot over the tension member [], which in turn biases the distal ends" of the clip arms, so long as the proximal ends of the clip arms are under the yoke overhang. ('371 patent, col. 10:44-48) This is depicted in several of the illustrative figures. (Id., FIGS. 9, 10, 12) Similarly, the Summary of the Invention section further describes the tension member as "connected to the clip arms and biasing the clip arms toward an open, tissue receiving configuration[.]" (Id., col. 1:53-55) Thus, the claims, specification, and figures not only articulate where the "tension member" is located and how it interacts with other parts of the apparatus, but they do so in a way that provides insight into how the "tension member" itself must be structured.

         In support of their contrary contention, Defendants rely on four cases. First, they cite to this Court's decision in Life Port Sciences LLC v. Cook Inc., Civil Action No. 13-362-GMS, 2015 WL 11237044 (D. Del. Aug. 20, 2015), for the proposition that "[t]he word 'member' is a generic nonce word that connotes no definite structure." (D.I. 56 at 30) But Life Port Sciences does not hold that "member" is a generic nonce word. In the opinion cited, the Life Port Sciences Court reconsidered its earlier finding that "displacement member" should not be construed as a means-plus-function term. 2015 WL 11237044, at *1 & n.1 (internal quotation marks omitted). The Life Port Sciences Court came to this conclusion for two reasons, neither of which had to do with categorizing "member" as a nonce word: (1) the Court's earlier decision had been premised on a mistaken argument that the patentee itself had never made; and (2) the Court had improperly failed to credit a strong argument made by the defendants: that the plaintiff had agreed that a term that "employed identical language to the displacement member term . . . failed to recite adequate structure [, ]" and so the "displacement member" term should be viewed the same way. Id. at * 1. The instant case is readily distinguishable, as there is no other claim term employing identical language to the term at issue, and Plaintiffs have here offered persuasive intrinsic evidence as to the "tension member'"s structure.

         Next, Defendants cite two cases for the proposition that if a patentee merely adds a prefix to a generic nonce word, and the prefix simply describes the function of the nonce word, then this cannot save a term from being found indefinite under Section 112. (D.I. 56 at 30 (citing Williamson, 792 F.3d at 1351; Mass. Inst, of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) ("MIT')) The Court does not quarrel with this general proposition. It simply finds the proposition not to be relevant here, as no case law indicates that "member" is in fact a nonce word.[4]

         Finally, Defendants rely on the Federal Circuit's decision in Media Rights Technologies, Inc. v. Capital One Financial Corp., 800 F.3d 1366 (Fed. Cir. 2015), cert, denied, 136 S.Ct. 1173 (2016), in arguing that the "descriptions in the claims of how the tension member 'connects to and interacts with other components'" does not provide "the requisite structural description." (D.I. 61 at 19 (quoting D.I. 57 at 25-26)) While this is Defendants' strongest case in support of their argument, the Court finds that it does not carry the day here.

         The Media Rights Court found that the term "compliance mechanism" did not connote a definite structure because "the claims simply state[d] that the 'compliance mechanism' can perform various functions." Media Rights, 800 F.3d at 1372. The written description did "depict[] and describe[] how what [was] referred to as the 'copyright compliance mechanism' [was] connected to various parts of the system, how the 'copyright compliance mechanism' function[ed], and the potential-though not mandatory-functional components of the 'copyright compliance mechanism.'" Id. But none of the passages describing the "compliance mechanism" defined the term "in specific structural terms." Id. at 1372-73.

         Here, the circumstances surrounding the Section 112, paragraph 6 analysis are different than they were in Media Rights. For one thing, as Plaintiffs' counsel noted, Media Rights involved the "context of software and hardware" and "computer systems[, ]" which is a "much more open-ended[, ] convoluted[, ] complex art" than that at issue here (involving clips). (D.I. 67 (Transcript of October 12, 2016 Claim Construction Hearing (hereinafter, "Tr.")) at 155) Moreover, as was detailed above, the '371 patent's claims not only provide a description of how the "tension member" is connected to other components of the clip at issue and how it functions, but they require that a "tension member" have a certain physical structure in order to perform its work. That is, they require that the "tension member" must be of a certain size and shape (such that it fits inside the capsule), and that it be structured such that it can be positioned between the clip arms and have a physical relationship with both of the clip arms (one where it is "configured to bias the first and second arms [of the clip] to the expanded configuration"). Moreover, there ...


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