United States District Court, D. Delaware
ETHICON LLC, ETHICON ENDO-SURGERY, INC., and ETHICON U.S. LLC, Plaintiffs,
INTUITIVE SURGICAL, INC., INTUITIVE SURGICAL OPERATIONS, INC. and INTUITIVE SURGICAL HOLDINGS, LLC, Defendants.
B. Blumenfeld and Brian P. Egan, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, DE Elizabeth S. Weiswasser and Anish
R. Desai WEIL, GOTSHAL & MANGES LLP, New York, NY Diane
P. Sullivan WEIL, GOTSHAL & MANGES LLP, Princeton, N.J.
Christopher T. Marando, Christopher M. Pepe, and Matthew D.
Sieger, WEIL, GOTSHAL & MANGES LLP, Washington, D.C.
Attorneys for Plaintiffs
W. Shaw, Karen E. Keller, and David M. Fry, SHAW KELLER LLP,
Wilmington, DE Robert A. Van Nest, Brian Ferrall, R. Adam
Lauridsen, William S. Hicks, and Eduardo E. Santacana, KEKER
VAN NEST & PETERS LLP Houston, TX Attorneys for
U.S. DISTRICT JUDGE
Ethicon LLC, Ethicon Endo-Surgery, and Ethicon U.S. LLC
("Ethicon" or "Plaintiffs") filed suit
against Defendants Intuitive Surgical, Inc., Intuitive
Surgical Operations, Inc., and Intuitive Surgical Holdings,
LLC (''Intuitive" or "Defendants") on
May 30, 2017, alleging infringement of United States Patent
Nos. 9, 585, 658 ("the '658 patent"), 8, 479,
969 ("the '969 patent"), 9, 113, 874 ("the
'874 patent"), 8, 998, 058 ("the '058
patent"), 8, 991, 677 ("the '677 patent"),
9, 084, 601 ("the '601 patent"), and 8, 616,
431 ("the '431 patent") (collectively,
"the Asserted Patents"). (D.I. 135 at ¶ 1) The
Asserted Patents "relate to various aspects of
laparoscopic surgical stapling technology." (D.I. 119
before the Court is the issue of claim construction. The
parties completed briefing on September 24, 2018. (D.I. 116,
119, 127, 130, 152) The Court held a claim construction
hearing on October 1, 2018 (D.I. 175) ("Tr.") and
received supplemental briefing on October 16 and 26, 2018
(D.I. 180; D.I. 191).
ultimate question of the proper construction of a patent
presents an issue of law. See TevaPharm. 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.
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) (internal quotation marks omitted).
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), ajfd,
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."
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).
"[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)
(internal quotation marks omitted).
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. Biosig
Instruments, 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).
CONSTRUCTION OF DISPUTED TERMS
'969 Patent terms
"tool mounting portion operably coupled to a distal end
of said proximal spine portion" ('969 claim
tool mounting portion operably coupled to a.
proximal end of said proximal
tool mounting portion operably coupled to a
distal end of said
proximal spine portion
tool mounting portion operably coupled to a
distal end of said proximal spine portion
argues that the Court should correct what Ethicon asserts is
a typographical error in the term, namely replacing
"distal end" with "proximal end," in line
with a U.S. Patent and Trademark Office ("PTO")
January 2018 Certificate of Correction. (D.I. 119 at 24; D.I.
116 at 2) Ethicon insists that "the error is
evident on the face of the patent, such that the correction
is not subject to reasonable debate based on the claim
language and the specification, and that there is nothing in
the prosecution history that would suggest a different
construction to be appropriate." (Tr. at 9) Ethicon asks
that even if the Court disagrees on the merits of the
correction, that it retrain from invalidating the Certificate
until summary judgment or trial to allow for the presentation
of further evidence. (Id. at 13)
argues that the "Certificate [of Correction] is invalid
... because '(1) the corrected claim [is] broader than
the original claim; and (2) the presence of the clerical or
typographical error, or how to correct that error, is not
clearly evident to one of skill in the art.'" (D.I.
116 at 2 (quoting Central Admixture Pharm. Svcs., Inc. v.
Adv. Cardiac Solutions, P.C, 482 F.3d 1347, 1353-54
(Fed. Cir. 2007)); Tr. at 20-22) Intuitive points out that
proximal and distal are opposites, that a plausible and
working device exists under the claim term as originally
written (i.e., before the Certificate of Correction),
that the original claim mirrors another claim in the patent
that was not corrected. (See Tr. at 22-23) Intuitive
also notes that Ethicon has not rebutted Intuitive's
expert on this issue. (Id. at 28)
- and here - a district court may only correct an
"obvious minor typographical [or] clerical" error
in a patent if (1) "the correction is not subject to
reasonable debate based on consideration of the claim
language and the specification" and (2) "the
prosecution history does not suggest a different
interpretation of the claims." Novo Indus., L.P. v.
Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003);
see also Superior Fireplace Co. v. Majestic Prods.
Co., 270 F.3d 1358, 1370 (Fed. Cir. 2001). Here, the
presence of an error is subject to reasonable debate, and
what the proper correction would be is also subject to
reasonable debate. (See D.I. 116 at 3 (noting
consistency between original claim and other claims in patent
and citing D.I. 117 ("Knodel Decl") ¶¶
15, 18-19); '969 patent at claim 12, 26; D.I. 127 at 2-3
(noting multiple means of changing term)) Ethicon's
request to "correct" the error and change the scope
of the patent as issued is not supported by the record or the
has had a fair opportunity to present evidence related to the
parties' disputes. It is highly doubtful that Ethicon
will ever be able to adduce evidence sufficient to persuade
the Court that no reasonable debate surrounds whether the
original patent contains an error and, if so, that no
reasonable debate also exists with respect to the appropriate
correction of such error. Whether these findings should cause
the Court to invalidate the Certificate of Correction, or
take some other action (now, or at a later stage of this
litigation), is a matter on which the parties will have to
present their positions to the Court.
"proximal/distal spine portion" (Claim 24)
structural member within [proximal/distall portion
of elongated shaft assembly
discrete [proximal/distal] interior supporting
member within the elongated shaft assembly
[proximal/distal] member within the elongated shaft
assembly, which supports but is separate from an
exterior member of the elongated shaft assembly
structural member within [proximal/distal] portion
of elongated shaft assembly
parties agree that the spine is located within the elongated
shaft assembly. (See D.I. 119 at 13-14; D.I. 116 at
5) The disputes are whether the spine must
"support" another structure and whether the spine
must be "separate" from an exterior member of the
elongated shaft assembly. (See Tr. at 38, 40) The
Court agrees with Plaintiffs that neither of these
restrictions on claim scope that are proposed by Defendants
is actually required by the claims.
argue that "the specification repeatedly and
consistently confirms that each of the proximal and distal
spine portions is physically distinct from each other and
from the exterior structures which they support." (D.I.
127 at 5) (citing '969 patent at Figs. 4-5, 134, 13:5-25,
77:53-78:1, 78:35-45) According to Defendants, "this is
true in every disclosed embodiment." (Id.)
Defendants contend that the patent teaches a spine that
supports "the exterior portion
of the shaft assembly" and may also
support "interior components,
such as articulation bars." (D.I. 116 at 5 (citing
'969 patent at 27:28-32, 29:45-47, 30:31-34; D.I. 118-1);
see also Tr. at 41-42) While previous versions of
Defendants' proposed construction were unclear as to what
needs to be supported by the spine, ...