United States District Court, S.D. Ohio, Western Division
ORDER ON CLAIM CONSTRUCTION
TIMOTHY S. BLACK UNITED STATES DISTRICT JUDGE
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.
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.
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).
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).
THE PATENTS AT ISSUE
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
THE CLAIMS AT ISSUE
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.”
STANDARD OF REVIEW
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.
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).
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).
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, ...