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Syntheon, LLC v. Covidien AG

United States District Court, D. Massachusetts

September 22, 2017

SYNTHEON, LLC, Plaintiff,
v.
COVIDIEN AG, Defendant. Syntheon's Proposed Construction Covidien's Proposed Construction Syntheon's Proposed Construction Covidien's Proposed Construction Syntheon's Proposed Construction Covidien's Proposed Construction Syntheon's Proposed Construction Covidien's Proposed Construction Syntheon's Proposed Construction Covidien's Proposed Construction Disputed Claim Term Court's Adopted Construction

          MEMORANDUM AND ORDER

          ALLISON D. BURROUGHS, U.S. DISTRICT JUDGE.

         This 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].

         Syntheon 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].

         To that 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.

         I. BACKGROUND

         The 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.

         The '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.

         The '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 follows.

         II. APPLICABLE LAW

         Claim 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. 2001).

         The 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)).

         This 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 1317, 1319.

         This 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)[1] (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.").

         The 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.[2] 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).

         III. CLAIM CONSTRUCTION

         The 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:

         "16. A surgical device control assembly, comprising:

a control device operable to carry out at least two operational conditions of the surgical device; and
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 operational condition."

         '269 Patent, Claim 16, 3925-40:2 (emphases added). The remaining term, "switch" appeal's in several dependent claims. For example:

         "11. The device according to claim 1, wherein the button comprises:

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 plunger."

Id., Claim 11, 39:5-10 (emphases added).

         A. "operational conditions"

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.

[ECF No.89-1]

         Syntheon 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.

         Covidien 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 ...


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