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Ethicon LLC v. Intuitive Surgical, Inc.

United States District Court, D. Delaware

December 28, 2018


          Jack 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

          John 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 Defendants



         Plaintiffs 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 at 1)

         Presently 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).[1]



         The 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.

         "[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) (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), 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." 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).

         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) (internal quotation marks omitted).


         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. 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).


         A. '969 Patent terms

         1. "tool mounting portion operably coupled to a distal end of said proximal spine portion" ('969 claim 24)


tool mounting portion operably coupled to a. proximal end of said proximal spine portion


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

         Ethicon 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)[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)

         Intuitive 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), [3] and 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)

         Generally - 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 law.

         Ethicon 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.

         2. "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

         The 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.

         Defendants 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, ...

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