United States District Court, D. Massachusetts
ETHICON ENDO-SURGERY, INC., et al., Plaintiffs and Counterclaim-Defendants,
COVIDIEN LP, et al., Defendants and Counterclaim-Plaintiffs.
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
Sorokin United States District Judge
intellectual property dispute, Ethicon Endo-Surgery, Inc. and
Ethicon Endo-Surgery, LLC (collectively,
“Ethicon”), seek a declaratory judgment that one
of their products does not infringe patents held by Covidien
LP, Covidien Sales LLC, and Covidien AG (collectively,
“Covidien”). Covidien has counter-sued, alleging
infringement of a total of four of its patents: United States
Patent Numbers 6, 585, 735 (“the '735
patent”), 8, 241, 284 (“the '284
patent”), 8, 323, 310 (“the '310
patent”), and 9, 241, 759 (“the '759
patent”). In response, Ethicon has asserted
invalidity and non-infringement as to each patent. This Court
denied Covidien's request for a preliminary injunction.
Pending now are the parties' briefs on claim
construction. The Court has reviewed all relevant submissions
and held a hearing on May 31, 2018, pursuant to Markman
v. Westview Instruments, Inc., 517 U.S. 370 (1996), at
which it heard oral argument and technology tutorials.
parties dispute the proper construction of ten terms
appearing in claims disclosed in three of the patents in
suit. Each patent generally relates to features
of advanced bipolar surgical instruments used to seal and cut
tissue or blood vessels. Both Ethicon and Covidien produce
and sell such instruments. The devices permit surgeons to
grasp a vessel or tissue between two jaws at one end of the
instrument, apply energy to the vessel or tissue to form a
seal and stop the blood flow through it, then cut the sealed
tissue using a knife that moves along the length of the jaws.
'284 patent, entitled “Vessel Sealer and Divider
with Non-Conductive Stop Members, ” Doc. No. 121-2,
focuses on features of advanced bipolar surgical instruments
which Covidien says are aimed at “providing more
consistent sealing of blood vessels” by controlling
“the gap distance” between the opposing jaws.
Doc. No. 118 at 7. Claim 1 of the '284 patent discloses,
in relevant part:
An endoscopic bipolar forceps, comprising: an elongated shaft
having opposing jaw members at a distal end thereof, . . .
each including respective flat seal surfaces extending along
a respective length thereof . . .; a plurality of
non-conductive stop members disposed along the length of
at least one of the seal surfaces of at least one of the
jaw members such that the plurality of non-conductive stop
members are disposed along the same plane on the seal
surface with respect to one another, the non-conductive
stop members configured to maintain a uniform distance
between the jaw members along the length thereof; and a
knife . . . .
Doc. No. 121-2 at 23 (emphasis added).
figure below depicts the “distal end” of the
device, where the jaws (labeled 20 and 22) are located, and
includes “a series of stop members [labeled 50a and
50g] disposed along an inner facing surface of a jaw
member.” Id. at 13, 19. There are six disputed
terms from the '284 patent, each of which relates in some
way to the stop members or the jaws.
'310 patent, entitled “Vessel Sealing Jaw with
Offset Sealing Surface, ” Doc. No. 121-3, focuses on
what Covidien describes as “the other critical
mechanical parameter that affects proper vessel
sealing—the pressure applied to the tissue, ”
Doc. No. 118 at 21. The parties dispute the construction of
only one term from this patent, and, for reasons explained
below, no further description of its claims or language is
necessary at this time.
'759 patent, entitled “Vessel Sealer and Divider
for Use with Small Trocars and Cannulas, ” Doc. No.
121-5, focuses on what Covidien calls the “mechanical
systems used . . . to actuate the jaw members and facilitate
grasping and manipulating tissue and vessels, ” Doc.
No. 118 at 30. Claim 1 of the '759 patent discloses, in
An endoscopic bipolar forceps, comprising: a housing; a shaft
. . .; a drive sleeve . . . operably coupled to the movable
jaw member . . .; a movable handle of unitary
construction having a finger loop positioned
towards a first end thereof, a drive flange
positioned towards a second end thereof, and a locking flange
disposed between the finger loop and the drive
flange, the drive flange operably coupled to the
drive sleeve towards the proximal end of the drive
sleeve such that movement of the movable handle from an open
position to a closed position moves the movable jaw member
relative to the fixed jaw member from the first position to
the second position; a selectively advanceable knife . . .;
and a selectively actuatable finger actuator . . . .
Doc. No. 121-5 at 39 (emphasis added).
figure below depicts the movable handle (labeled 40), among
other parts contained in a device's housing,
“separated” or in an “exploded view.”
Id. at 12, 30, 36. The major components of the
movable handle are the finger loop (labeled 41), the drive
flange (labeled 47a and 47b), and the locking flange (labeled
44). Id. at 12, 31, 34. There are three disputed
terms from the '759 patent, each of which relates in some
way to the components of the movable handle.
“construction of a patent, including terms of art
within its claim, is exclusively within the province of the
court.” Markman, 517 U.S. at 372. “It is
a bedrock principle of patent law that the claims of a patent
define the invention to which the patentee is entitled the
right to exclude.” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (quotation marks omitted).
The claim itself is “of primary importance, in the
effort to ascertain precisely what it is that is
patented.” Merrill v. Yeomans, 94 U.S. 568,
570 (1876); accord Aro Mfg. Co. v. Convertible Top
Replacement Co., 365 U.S. 336, 339 (1961);
Phillips, 415 F.3d at 1312.
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.”
Phillips, 415 F.3d at 1312-13 (quotation marks
omitted). Sometimes “the ordinary meaning of claim
language as understood by a person of skill in the art may be
readily apparent even to lay judges, and claim construction .
. . involves little more than the application of the widely
accepted meaning of commonly understood words.”
Id. at 1314. Other times, though, when “the
meaning of a claim term as understood by persons of skill in
the art is . . . not immediately apparent, ” or when
“patentees . . . use terms idiosyncratically, ” a
court must consider “those sources available to the
public” which shed light on how “a person of
skill in the art would have understood [the] disputed claim
language.” Id. (quotation marks omitted).
“person of ordinary skill in the art is deemed to read
the claim term not only in the context of the particular
claim in which the disputed term appears, but in the context
of the entire patent, including the specification.”
Id. at 1313. Indeed, intrinsic evidence—the
language appearing in the claims and elsewhere in the patent
itself, as well as any available prosecution history of the
patent—is the most reliable and useful evidence in
determining the meaning of a patent's claims.
Id. at 1317-19.
evidence, including expert and inventor testimony,
dictionaries, and treatises, may aid in understanding the
underlying technology, how the invention works, and whether
“a particular term . . . has a particular meaning in
the pertinent field.” Id.; accord Markman
v. Westview Instruments, Inc., 52 F.2d 967, 980 (Fed.
Cir. 1995). Although a court may consider extrinsic evidence
to the extent it is useful, it may not rely on such evidence
to “change the meaning of claims in derogation of
the” intrinsic evidence of record. Phillips,
415 F.3d at 1319.
patent is invalid for indefiniteness if its claims, read in
light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the
invention.” Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S.Ct. 2120, 2124 (2014). The burden is on the
party challenging a patent to demonstrate indefiniteness by
clear and convincing evidence. See Microsoft Corp. v. i4i
Ltd. P'ship, 564 U.S. 91, 95 (2011).
“Indefiniteness . . . is a question of law”; it
“is a matter of claim construction, and the same
principles that generally govern claim construction are
applicable to determining whether allegedly indefinite claim
language is subject to construction.” Praxair, Inc.
v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). In
some circumstances, courts decline to resolve questions of
indefiniteness at the claim construction stage of litigation,
deferring them until summary judgment when a fuller record is
available. E.g., Indus. Tech. Research Inst. v.
LG Elecs. Inc., No. 13-2016, 2014 WL 6907449, at *3
(S.D. Cal. Dec. 8, 2014); Int'l Dev. LLC v.
Richmond, No. 09-2495, 2010 WL 4703779, at *6-7 (D.N.J.
Nov. 12, 2010).
by these principles—and having carefully reviewed the
language of each relevant patent in its entirety, any cited
prosecution history, and all other extrinsic evidence
proffered by both parties—the Court will address each
of the ten disputed terms in turn.
“Stop member(s)” ('284 patent, claims 1,