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Osseo Imaging, LLC v. Planmeca USA, Inc.

United States District Court, D. Delaware

October 30, 2018

PLANMECA USA, INC., Defendant.

          Stephen B. Brauerman and Sara E. Bussiere, BAYARD, P.A., Wilmington, DE Seth H. Ostrow, Jeffrey P. Weingart, and Antonio Papageorgiou, MEISTER SEELIG & FEIN LLP, New York, NY Attorneys for Plaintiffs.

          Jack B. Blumenfeld and Michael J. Flynn, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE Wasif H. Qureshi, Leisa T. Peschel, and David K. Wooten, JACKSON WALKER LLP, Houston, TX Attorneys for Defendants.



         Plaintiff Osseo Imagining, LLC ("Osseo" or "Plaintiff) filed suit against Defendant Planmeca USA, Inc. ("Planmeca" or "Defendant") on October 3, 2017, alleging infringement of U.S. Patent Nos. 6, 381, 301 (the '"301 patent"), 6, 944, 262 (the '"262 patent"), and 8, 498, 374 (the "'374 patent") (collectively, the "patents-in-suit"). (D.I. 1) The patents-in-suit relate to orthopedic imaging systems that use X-ray beam techniques to create tomographic and/or densitometric models of a scanned object.

         Presently before the Court is the issue of claim construction. The parties completed briefing on August 10, 2018. (See D.I. 31, 33, 36, 37) The Court held a claim construction hearing on August 27, 2018. (See D.I. 41) ("Tr.") The parties submitted supplemental briefing on certain issues on September 11 and 18, 2018. (D.I. 42; D.I. 43)



         The 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. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citation and 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." Id.

         "[T]he 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).

         While "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).

         It is 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).

         It is 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) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (alteration in original) (internal quotation marks omitted).

         In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence, '' "consists of the complete record of the proceedings before the [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 inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id.

         "In some cases, . . . the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period." Teva, 135 S.Ct. at 841. "Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be useful to the court," it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).

         Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quoting Mo dine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).


         A patent claim is indefinite if, "viewed in light of the specification and prosecution history, [it fails to] inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, Inc. v. BiosigInstruments, Inc., 134 S.Ct. 2120, 2129 (2014). A claim may be indefinite if the patent does not convey with reasonable certainty how to measure a claimed feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). But "[i]f such an understanding of how to measure the claimed [feature] was within the scope of knowledge possessed by one of ordinary skill in the art, there is no requirement for the specification to identify a particular measurement technique." Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).


         A. "Tomographic model" terms

         1."tomographically modeling/tomographic model(s)/tomographical model(s)"[2]


merging information from a plurality of tomographic scans of an object to produce a multidimensional representation of the subject/the multidimensional representation of the object obtained by merging a plurality of tomographic scans


the process for creating a digital image/a digital image that depicts quantitative differences in BMD of the object scanned and is created by the microprocessor in the controller using densitometry (as defined by Defendant) from at least one focal plane


merging information from multiple tomographic scans of an object to produce a representation of the subject/said representation depicting quantitative density differences of the object scanned, which is created by the microprocessor in the controller using densitometry from at least one focal plane

         The Court must first address whether the tomographic scans are measured from "at least one focal plane." Defendant answers in the affirmative, citing as support a description of focal plane in the Webber reference (U.S. Patent No. 5, 214, 686, '"686 patent"). (See D.I. 31 at 6-7) (citing the '686 patent at 1:11 -24) Plaintiff responds that Webber describes alternative perspectives for tomographic modeling, not all of which meet Defendant's proposed focal plane limitation. (D.I. 36 at 5-6) During oral argument, Defendant acknowledged that "at least one focal plane" does allow for circular scans. (See Tr. at 36) As the parties are now effectively in agreement, the Court will include "at least one focal plane" in its construction, as the phrase adds precision without modifying claim scope.

         The next question is whether the tomographic model terms are based only on measurements using densitometric analyses, or whether other measurement methods may be used. Plaintiff points to the varied claim language - referencing tomographical model and tomographical densitometry model - as its chief evidence for the terms having different meanings. (See D.I. 33 at 7-9; Tr. at 57-58) Defendant rebuts this by arguing that the specification teaches a person of skill in the art ("POSA") that the present invention is directed solely toward densitometric analyses. To Defendant, the doctrine of claim differentiation has less weight here because the terms span across claims in different patents, while the '374 patent is internally consistent. (Compare '374 patent at claim 1, with '301 patent at claim 1; see also D.I. 31 at 8 (citing '374 patent at 1:25-27, 2:31-32, 2:51-53, 3:9-16, 3:42-47, 3:66-4:1); Tr. at 40) The Court agrees with Defendant: tomographical modeling is limited to densitometry. The specification unambiguously and repeatedly describes how "[t]he principle objects of the present invention include: providing a dental and orthopedic diagnostic application for densitometry" and "providing such an application which includes ...

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