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Intuitive Surgical, Inc. v. Auris Health, Inc.

United States District Court, D. Delaware

December 16, 2019

INTUITIVE SURGICAL, INC. and INTUITIVE SURGICAL OPERATIONS, INC., Plaintiffs,
v.
AURIS HEALTH, INC., Defendant.

          MEMORANDUM ORDER

          The Honorable Maryellen Noreika, United States District Judge.

         At Wilmington this 16th day of December 2019:

         IT IS HEREBY ORDERED that the claim terms of U.S. Patents Nos. 6, 491, 701 (“the '701 Patent”), 8, 142, 447 (“the '447 Patent”), and 8, 801, 601 (“the '601 Patent”) with agreed-upon constructions (see D.I. 76 at 5, 8, & 25, are construed as follows:

1. “wherein at least one of said spools spool is engageable with a rotatable actuator body of a robotic surgical system” means “wherein at least one of said spools is engageable with a rotatable actuator body of a robotic surgical system” ('701 Patent, claim 11);
2. “moves the movable port on disposed” means “moves the movable portion disposed” ('447 Patent, claim 3);
3. “coupling an instrument to a drive assembly” means “coupling an instrument to a drive assembly” ('447 Patent, claim 3);
4. “wherein rotating the first plurality of rotatable bodies moves the movable port on disposed at the distal portion” means “wherein rotating the first plurality of rotatable bodies moves the movable portion disposed at the distal portion” ('447 Patent, claim 3);
5. “target location” means “site where a medical procedure is to be performed” ('601 Patent, claim 1).

         Further, as announced at the hearing on November 20, 2019, IT IS HEREBY ORDERED that the disputed claim terms of the '701 Patent, the '447 Patent, the '601 Patent, and U.S. Patents Nos. 8, 620, 473 (“the '473 Patent”), 9, 452, 276 (“the '276 Patent”), 6, 246, 200 (“the '200 Patent”), 6, 800, 056 (“the '056 Patent”), and 6, 522, 906 (“the '906 Patent”) are construed as follows:

1. “[surgical] end effector” means a “device at the end of an instrument used in surgery designed to interact with the environment” ('701 Patent, claims 16 & 25; '447 Patent, claim 2; '200 Patent, claims 14 & 17; '906 Patent, claims 16 & 53);
2. “angularly displaceable about at least two axes” means “rotatable about at least two axes” ('701 Patent, claim 16; '447 Patent, claim 2);
3. “changing the displayed information” means “adding information under operator control relevant to the surgical procedure on or alongside a live image of a surgical site” ('906 Patent, claim 53);
4. “master control” means “input device of a master-slave configuration” ('906 Patent, claims 16 & 26);
5. “master input device” means “input device of a master-slave configuration” ('473 Patent, claims 1, 19, 20, 32, & 34);
6. “movement of the master input device” means “movement of the ‘master input device' as that term has been construed” ('473 Patent, claims 1, 19, 20, 32, & 34);
7. “surgeon console” means “a console used by a surgeon” ('473 Patent, claims 32 & 34);
8. “imaging device” is not a means-plus-function limitation subject to 35 U.S.C. § 112(6) and the term shall be given its plain and ordinary ('276 Patent, claims 1, 4, 10, 12, & 14);
9. “hold or return the distal tip of the catheter to the desired working configuration” shall have its plain and ordinary meaning ('276 Patent, claims 1, 4, 10, 12, & 14);
10. “guidance” shall have its plain and ordinary meaning at this time ('601 Patent, claims 1 & 10);
11. “anatomic landmarks” means “anatomic structures that are or have been registered and recorded” ('601 Patent, claims 1, 2, 3, 10, & 12);
12. “freely slidable along the length of the instrument” / “guide being slidably disposed without constraint within the lumen along the length” require no construction and shall have their plain and ordinary meanings ('056 Patent, claims 1, 3, 14, 17, 22, & 32).

         The parties briefed the issues, (D.I. 113), and submitted a Joint Claim Construction Chart containing intrinsic evidence, (D.I. 123, Attachment 1).[1] Defendant provided a tutorial describing the relevant technology. (See D.I. 111). Both parties submitted expert declarations and other extrinsic evidence. (D.I. 114). The Court carefully reviewed all submissions in connection with the parties' contentions regarding the disputed claim terms, heard oral argument (see D.I. 130) and applied the following legal standards in reaching its decision:

         I. LEGAL STANDARDS

         “[T]he ultimate question of the proper construction of the patent [is] 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). “[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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal citations and quotation marks omitted). Although “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. Id. at 1314. “[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 . . . [as] 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). 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. “Even when the specification describes only a single embodiment, [however, ] 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) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).

         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) (en banc), 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, courts “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. 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.” Phillips, 415 F.3d at 1318. 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, although 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).

         II. THE COURT'S RULING

         The Court's rulings regarding the disputed claim terms of the '701, '447, '473, '276, '200, '056, '601, and '906 Patents were announced from the bench at the conclusion of the hearing as follows:

         . . . [T]hank you for the arguments today. They were helpful. At issue we have eight patents and fifteen terms in dispute. I am prepared to rule on twelve of those disputes today. I will not be issuing a written opinion, but I will issue an order stating my rulings on those twelve terms. I want to emphasize before I announce my decisions that while I am not issuing a written opinion, we have followed a full and thorough process before making the decisions I am about to state. I have reviewed each of the eight patents, the portions of the prosecution history submitted, the joint appendix and the tutorial submitted by Auris. I have also reviewed the declaration of Mark Rentschler submitted by Plaintiffs and ...


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