United States District Court, D. Delaware
REPORT AND RECOMMENDATION
R. FALLON, UNITED STATES MAGISTRATE JUDGE.
patent infringement action filed by plaintiff Minerva
Surgical, Inc. ("Minerva") against defendants
Hologic, Inc. and Cytyc Surgical Products, LLC (together,
"Hologic"), Minerva alleges infringement of United
States Patent No. 9, 186, 208 ("the '208
patent"). (D.I. 1) Presently before the court is the
matter of claim construction. This decision sets forth the
court's recommendations of constructions for the disputed
claim terms discussed in the briefing and at the
Marhnan hearing held on January 23, 2019.
'208 patent is directed to a method and system for
performing endometrial ablation to treat uterine diseases.
('208 patent, col. 2:6-8) The claimed endometrial
ablation device comprises a shaft with an expandable and
contractible frame consisting of inner and outer frame
elements which expand upon insertion to bring an energy
delivery surface into contact with the uterine cavity.
(Id., col. 2:8-17) The expanded energy delivery
surface then applies energy to the endometrial lining of the
uterus. (Id., col. 2:17-19) Following treatment, the
physician deflates the expandable balloon member and
collapses the frame to retract the device from the uterine
cavity. (Id., col. 11:60-12:2; Fig. 8D)
April 11, 2017, Minerva filed suit against Hologic in the
Northern District of California, alleging that Hologic's
NovaSure ADVANCED product infringes Minerva's '208
patent. (D.I. 1, Ex. A) Minerva filed a motion for a
preliminary injunction on August 2, 2017. (D.I. 35) The court
denied Minerva's motion for a preliminary injunction in
an order entered on January 5, 2018. (D.I. 80) In its order,
the court discussed the parties' agreed-upon construction
for the term "substantially dissimilar material
properties" ("SDMP") for purposes of the
preliminary injunction motion, and Minerva's subsequent
departure from the agreed-upon construction in its reply
brief. (Id. at 3-4) On January 31, 2018, the parties
stipulated to transfer the case to the District of Delaware.
III. LEGAL STANDARD
the claims of a patent presents a question of law, although
subsidiary fact finding is sometimes necessary. Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837-38
(2015) (citing Markman v. Westview Instruments,
Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995),
aff'd, 517 U.S. 370, 388-90 (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) (internal quotation marks
omitted). "[T]here is no magic formula or catechism for
conducting claim construction." Id. at 1324.
Instead, the court may attach the appropriate weight to
appropriate sources "in light of the statutes and
policies that inform patent law." Id.
words of the claims "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."
Phillips, 415 F.3d 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); see also Eon Corp. IP
Holdings v. Silver Spring Networks, Inc., 815 F.3d 1314,
1320 (Fed. Cir. 2016). Claim terms are typically used
consistently throughout the patent, and "usage of a term
in one claim can often illuminate the meaning of the same
term in other claims." Phillips, 415 F.3d at
1314 (observing that "[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...").
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) (citing
Ecolablnc. v. Paraclipse, Inc., 285 F.3d 1362, 1375
(Fed. Cir. 2002).
intrinsic evidence, including 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). "[T]he 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 (citing CCS Fitness,
Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002)). 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." Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal
quotation marks omitted), aff'd, 481 F.3d 1371
(Fed. Cir. 2007). The specification "is not a substitute
for, nor can it be used to rewrite, the chosen claim
language." SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
addition to the specification, a court "should also
consider the patent's prosecution history, if it is in
evidence." Markman, 52 F.3d at 980. The
prosecution history, which is also "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 inventor limited the
invention in the course of prosecution, making the claim
scope narrower than it would otherwise be." Id.
also may rely on "extrinsic evidence," which
"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. ("[C]onclusory, unsupported
assertions by experts as to the definition of a claim term
are not useful to a court."). 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.
"[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." Renishow PLC v. Marposs
Societa'Per AzionU 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).