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Ethicon Endo-Surgery, Inc. v. Covidien, Inc.

United States District Court, S.D. Ohio, Western Division

April 10, 2017

COVIDIEN, INC., Defendant.



         The parties submitted briefs in support of their proposed claim constructions. (Docs. 166, 168, 169, 170). Additionally, the Court held a Markman hearing on March 14, 2017.


         Plaintiff Ethicon Endo-Surgery Inc. (“Ethicon”) manufactures a line of ultrasonic surgical devices under the “Harmonic” brand. These products are widely used and relied upon by healthcare professionals. Ethicon's products use blades oscillating at extremely high speeds to make surgical procedures easier and safer, reducing damage to surrounding tissue, causing less bleeding, and generally allowing for better surgical outcomes than other methods of incision. Ethicon holds a portfolio of patents covering its Harmonic line. Defendant Covidien, Inc. (“Covidien”) manufactures a laproscopic, ultrasonic dissection device sold under the name “Sonicision.” Ethicon alleges that this device infringes on one of its patents.

         This case has a long prosecution history before this Court. Ethicon initially filed suit against Covidien in 2011 alleging violation of several patents. Following discovery, the Court granted summary judgment in favor of Covidien on the issues of both noninfringement of all patents at issue and invalidity of certain patents. (See Docs. 130, 131, 132, 133, 134). On appeal, the Federal Circuit Court of Appeals reversed this Court's rulings in part, holding that none of the patents at issue were invalid, but upholding the Court's findings of noninfringement as to some of the patents. Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015).

         Following the Federal Circuit's ruling, Covidien filed a separate suit seeking a declaratory judgment of noninfringement of six of Ethicon's patents. Ethicon filed a counterclaim alleging infringement of seven of its patents. That action was consolidated with the current action. Prior to the claim construction hearing regarding the claims to be construed in the present Order, the parties, to their great credit, resolved and mutually agreed to dismiss all claims from each party relating to all patents, except for U.S. Patent No. 9, 168, 055. (Doc. 20).


         There is only one patent at issue with regards to this claim construction: U.S. Patent No. 9, 168, 055 (“the ‘055 patent”). The ‘055 patent was filed in 2013, following the Federal Circuit's previous ruling in this case.


         The parties dispute the construction of two terms or phrases in the patents-in-suit: (1) “spring”; and (2) “predetermined average coaptation pressure/predetermined clamping force.”


         Claim construction is a matter of law to be decided exclusively by the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370. “[T]he claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). Claim terms are “generally given their ordinary and customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “The ordinary and customary meaning of a claim term 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 date of the patent application.” Id. at 1313. Absent an express intent to the contrary, a patentee is presumed to have intended the ordinary meaning of a claim term. York Prods. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996). The Court must also consider the specification “to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning.” Id. Finally, the Court may consider “the prosecution history of the patent, if in evidence.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). If these documents unambiguously define the scope of the patented invention, there is no need for the Court to consider any extrinsic evidence. Id. at 1583.

         In construing claims, the Court determines whether or not a term requires construction. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). The Court is not required to accept a construction of a term, even if the parties have stipulated to it, but instead may arrive at its own construction of claim terms, which may differ from the constructions proposed by the parties. Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364, 1376 (Fed. Cir. 2005). “The appropriate starting point [...] is always with the language of the asserted claim itself.” Comark Commc'ns, Inv. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). “When the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term.” Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998).

         The general rule is that terms in the claim are to be given their ordinary and accustomed meaning. Reinshaw v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). General descriptive terms will ordinarily be given their full meaning; modifiers will not be added to broad terms standing alone. See, e.g., Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 865-66 (Fed. Cir. 1997). A court must presume that the terms in the claim mean what they say and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning to skilled artisans of claim terms. See, e.g., Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994).

         In order to overcome this heavy presumption in favor of the ordinary meaning of claim language, it is clear that “a party wishing to use statements in the written description to confine or otherwise affect a patent's scope must, at the very least, point to a term or terms in the claim with which to draw in those statements.” Renishaw, 158 F.3d at 1248. That is, claim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Valley R.R., 160 U.S. 110, ...

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