United States District Court, D. Massachusetts
MEMORANDUM AND ORDER
ALLISON D. BURROUGHS, U.S. DISTRICT JUDGE.
case arises from a contractual dispute between Syntheon, LLC
("Syntheon"), and Covidien AG
("Covidien"). [ECF No. 1]. Syntheon claims it sold
Covidien certain intellectual property relating to surgical
devices, including a patent application that would ripen into
U.S. Patent No. 8, 742, 269 ("the '269
Patent"). [ECF Nos. 78 at 1; 101 at 3]. In exchange,
Covidien agreed to pay Syntheon royalties on sales of those
devices. [ECF Nos. 78 at 2; 101 at 3].
alleges, in part, that the '269 Patent covers a
particular device, the LigaSure™ Small Jaw Open
Instrument ("Small Jaw"), and that Covidien has
failed to pay royalties on sales of this device.
[See ECF No. 78 at 2]. Covidien disputes that the
'269 Patent covers this device. [ECF No. 55 ¶¶
4-5, 22-24]. The parties agree that to determine whether one
or more claims in the '269 Patent cover the Small Jaw
device the court must first determine "the scope and
meaning of the patent claims asserted." Clearstream
Wastewater Sys., Inc. v. Hydro-Action, Inc., 206 F.3d
1440, 1444 (Fed. Cir. 2000). [See ECF No. 58 ¶ 3].
end, the parties filed claim construction briefs [ECF Nos.
78, 79, 82, 83], and on June 7, 2017, the Court conducted a
hearing at which the parties presented a technological
tutorial and their claim construction arguments. [ECF Nos.
96, 126]. For the reasons that follow, the Court adopts the
constructions set forth below.
particular allegations and factual disputes regarding the
contractual relationship between Syntheon and Covidien are
spelled out in greater detail in a prior opinion of the
Court. [ECF No. 101]. The following summary is derived from
the '269 Patent, with additional details reserved for
later discussion as needed.
'269 Patent pertains to ultrasonic surgical devices.
'269 Patent, 2:65-3:2. Such devices use ultrasonic
frequencies to produce high-speed vibrations in the tip of a
blade. Id., 3:4-18. These instruments are very
effective at both cutting organic tissue and simultaneously
coagulating the tissue using the heat energy produced by the
ultrasonic frequencies. Id. In other words, the
devices both cut tissue and stop the related bleeding.
See Id. They are particularly useful in
minimally invasive surgeries, such as endoscopic or
laparoscopic procedures. Id. Optimal performance of
ultrasonic surgical devices depends on several factors,
including the frequency, current, and voltage applied to the
blade. Id., 3:19-29.
'269 Patent, entitled "Two-Stage Switch for Surgical
Device, " discloses a "surgical device control
assembly [that] includes a control device operable to carry
out at least two operational conditions of a surgical device
and a button operatively connected to the control
device." Id., Abstract. When pressed in one
direction from the resting point, the button activates one
"operational condition" of the device and, when
pressed further in that same direction, it activates a second
"operational condition." Id. In effect,
generally speaking, one button is used to cause two different
operations or actions. See Id. Determining
the more precise meaning and scope of these and other related
terms is the primary task of the claim construction that
construction, the first step in a patent infringement
analysis, requires the Court to determine "the scope and
meaning of the patent claims asserted." Clearstream
Wastewater Sys., Inc., 206 F.3d at 1444. Claim
construction is a question of law for the court, Markman
v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996),
to be resolved with an eye toward the fact that the
Court's adopted construction "becomes the basis of
the jury instructions, should the case go to trial" on
the issue of infringement, see AFG Indus., Inc. v.
Cardinal IG Co., 239 F.3d 1239, 1244, 1247 (Fed. Cir.
Federal Circuit has provided a framework governing claim
construction. In general, a court must give claim terms their
"ordinary and customary meaning, " which the
Federal Circuit has deemed to be "the meaning that the
term would have to a person of ordinary skill in the art in
question at the time of the invention." Phillips v.
AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en
banc). To ascertain this meaning, a court should consult
intrinsic evidence-including "the words of the claims
themselves, the remainder of the specification, [and] the
prosecution history" of the patent-and may also look to
"extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of
the art." Id. at 1314 (quoting Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1116 (Fed. Cir. 2004)).
list represents a "hierarchy of sources, "
Skyline Software Sys., Inc. v. Keyhole, Inc., 421
F.Supp.2d 371, 375 (D. Mass. 2006), that places primary
importance on the intrinsic record-in particular, the claim
language and the specification. See Phillips, 415
F.3d at 1313-14, 1317. First, the claim language itself is
where claim construction "must begin and remain
centered" because "the claims of a patent define
the invention to which the patentee is entitled the right to
exclude." Innova/Pure Water, Inc., 381 F.3dat
1115-16. Second, the specification "is always highly
relevant to the claim construction analysis" and
"[u]sually ... is dispositive." Phillips,
415 F.3d at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). In the specification, a patentee may define his own
terms, give a claim term a different meaning than the term
would otherwise possess, or disavow certain meanings.
See Id. at 1316. That being said, the
Federal Circuit has "warned against importing
limitations from the specification into the claims absent a
clear disclaimer of claim scope." Andersen Corp. v.
Fiber Composites, LLC, 474 F.3d 1361, 1373 (Fed. Cir.
2007). Third, the prosecution history, which is also part of
the intrinsic evidence, can provide additional insight into
how the inventor and the Patent and Trademark Office
understood the patent, although such evidence may lack the
clarity of the specification and therefore be less helpful
than other intrinsic evidence. Phillips, 415 F.3d at
1317. Finally, district courts have discretion to rely on
extrinsic evidence, such as inventor testimony, dictionaries,
or learned treatises, but when doing so must "keep in
mind the flaws inherent in each type of [extrinsic] evidence
and assess that evidence accordingly." Id. at
case also implicates a special class of claims-so-called
"means-plus-function" claims-that must be construed
under 35 U.S.C. § 112(f) (formerly 35 U.S.C. § 112,
¶ 6). "Means-plus-function" claims are those
that recite a "means or step for performing a specified
function without the recital of structure, material, or acts
in support thereof." Tele-Publishing, Inc. v
Facebook, Inc., 205 F.Supp.3d 142, 140 (D. Mass. 2016)
(quoting 35 U.S.C. § 112(f)). See Phillips, 415
F.3d at 1311 ("Means-plus-function claiming applies only
to purely functional limitations that do not provide the
structure that performs the recited function.").
starting point for determining whether § 112(f) applies
is the presence or absence of the word "means" in
the disputed claim See Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Use of the
word "means" creates a rebuttable presumption that
§ 112(f) applies. Id. Conversely, a claim that
does not use the word "means" triggers a rebuttable
presumption that § 112(f) does not apply. Id. A
challenger, however, can overcome this presumption by showing
that "the claim term fails to 'recite sufficiently
definite structure' or else recites 'function without
reciting sufficient structure for performing that
function.'" Id. at 1349 (alteration in
original) (citation omitted). When the Court encounters a
"means-plus-function" claim within the scope of
§ 112(f), claim construction is a two-step process.
Id. at 1351. "The court must first identify the
claimed function. Then, the court must determine what
structure, if any, disclosed in the specification corresponds
to the claimed function." H. (citation omitted).
parties present six disputed claim terms for construction:
(1) "operational conditions, " (2) "control
device operable to carry out at least two operational
conditions of a surgical device, " (3) "a single
actuation member, " (4) "effecting a first [or
second] of the at least two operational conditions, "
(5) "switch, " and (6) "button." Five of
the terms are emphasized in the following illustrative claim:
A surgical device control assembly, comprising:
a control device operable to carry out at least two
operational conditions of the surgical device;
a two-actuation-position button operatively
connected to the control device and having a single
actuation member, a first depressed position of the
actuation member effecting a first of the at least two
operational conditions and a second depressed position
of the actuation member in substantially the same direction
effecting a second of the at least two operational
conditions that is different from the first
Patent, Claim 16, 3925-40:2 (emphases added). The remaining
term, "switch" appeal's in several dependent
claims. For example:
The device according to claim 1, wherein the button
a two-position switch and
a plunger coupled to the two-position switch and
operable to change the positions of the two-position
switch when pressure is applied to the
Id., Claim 11, 39:5-10 (emphases added).
Syntheon's Proposed Construction
Covidien's Proposed Construction
Plain and ordinary meaning.
Alternative: states of the surgical device when used
in surgery, such as grasping, clamping, cutting,
cauterizing, or coagulating.
Condition in which an amount of power is delivered to
drive the surgical device.
argues that the term "operational conditions" needs
no construction because its meaning within the '269
Patent would be readily understood by any English speaker.
[ECF No. 78 at 13-14]. Should the term require construction,
Syntheon, in support of its proposed language, offer's
intrinsic evidence from the specification and extrinsic
evidence, such as dictionary definitions and testimony from
one of the inventors on the patent. Id. at 14-15.
argues that this term is facially ambiguous and that, under
Phillips, its proposed construction should prevail
because the specification language only discloses
"operational conditions" that relate to an amount
of power being delivered to drive the surgical device. [ECF
No. 79 at 14-15]. Covidien further asserts that the
patent's prosecution history supports such a
construction. Id. at 17-18. Syntheon does not
dispute that the '269 Patent discloses some
"operational conditions" that result from power
being delivered to the surgical device, but argues that the
patent also ...