SARAH EVANS BARKER, District Judge.
This matter comes before the Court for construction of certain patent terms relevant to the underlying infringement action. Plaintiffs Bonutti Research, Inc. and Joint Active Systems, Inc. (collectively, "Plaintiffs") and Lantz Medical, Inc. ("Defendant"), each present their respective proposed constructions for eighteen disputed terms found in five of Plaintiffs' patents relating to orthoses for increasing the range of motion of various joints in the human body. We conducted a Markman hearing on July 8, 2015, at which the parties presented oral arguments as to the disputed terms. Having considered those presentations as well as the parties' briefings, we now enter the following factual and legal findings relating to the construction of the disputed patent terms.
This patent infringement suit concerns the following five patents, all issued between 1998 and 2014 and all generally directed to orthoses for increasing the range of motion of joints in the human body: United States Patent No. 5,848, 979 ("the `979 patent"), issued by the United States Patent and Trademark Office ("PTO") on December 15, 1998; United States Patent No. 7,955,286 ("the `286 patent"), issued by the PTO on June 7, 2011; United States Patent No. 7,404,804 ("the `804 patent"), issued by the PTO on July 29, 2008; United States Patent No. 7,112,179 ("the `179 patent"), issued on September 26, 2006; and United States Patent No. 8,784,343 ("the `343 patent"), issued on July 22, 2014.
Connective tissues surrounding a joint, such as joint capsules, tendons, ligaments, skin, and adhesions, can shorten in response to trauma, including surgery, disease, and prolonged immobilization, which typically results in a decreased range of motion of the affected joint. The orthoses referenced in the patents at issue in this litigation stretch and lengthen these shortened tissues in order to increase the range of motion of various joints, including, inter alia, in the elbow, wrist, and fingers.
The `979 patent covers apparatuses for use in effecting relative movement between the bones in the arm of a patient. An orthosis constructed in accordance with the `979 patent is illustrated below:
The `286 and the `179 patents generally cover apparatuses for stretching tissue around a joint of a patient between the first and second relatively pivotable body portions. Embodiments of the `286 patent and the `179 patent are illustrated below:
The `804 patent generally covers apparatuses for positioning a joint in a finger on the hand of a patient. An illustration of an orthosis constructed in accordance with the `804 patent is pictured below:
The `343 patent generally covers apparatuses for increasing the range of motion of a tissue in the body of a patient. One embodiment of the invention is illustrated below:
Plaintiff Bonutti is the owner by assignment of all five patents at issue in this litigation, and Plaintiff JAS is the exclusive licensee of the patents-in-suit. Among the products that JAS has developed and markets are the following products covered by the patents-in-suit, including the JAS Pro/Sup, JAS EZ Pro/Sup, JAS EZ Elbow, JAS EZ Wrist, JAS EZ Knee-Ext, JAS EZ Knee-Flex, and JAS EZ Finger products.
Defendant Lantz manufactures and sells, among other products, the Stat-A-Dyne® ESP, Stat-A-Dyne® Pro/Sup, Stat-A-Dyne® Elbow, Stat-A-Dyne® Knee, and Stat-A-Dyne® WHFO products, all of which are described as tissue elongation devices. Plaintiffs have brought this action against Lantz alleging that Lantz's State-A-Dyne® line of products infringes upon the five named patents. The specific claims asserted in this litigation and the corresponding accused products from the Stat-A-Dyne® line are as follows:
Plaintiffs filed this action against Defendant on April 18, 2014. As noted above, the Court held a Markman hearing on July 8, 2015, at which the parties presented oral argument as to the disputed terms at issue in this litigation.
The parties dispute the meaning of various claims within the five patents. The relevant claims are excerpted below, with the disputed terms highlighted.
Before addressing the merits of a patent infringement suit, the district court is required to decide any outstanding issues of claim construction as a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384-386 (1996); Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). As the scope of a claim "is necessarily determined by the language of the claim, claim construction analysis must begin with these words." Dow Agrosciences LLC v. Crompton Corp., 381 F.Supp.2d 826, 831 (S.D. Ind. 2005). Absent an express intent otherwise, a claim term is to be given "the ordinary and customary 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 filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
The most important tools at the court's disposal in determining the ordinary and customary meaning of disputed terms constitute the intrinsic evidence—the claims themselves, the specification, and the prosecution history. Dow Agrosciences, 381 F. Supp. 2d at 831. Extrinsic evidence, such as dictionaries and treatises, may also be used to construe the claim's meaning, but such evidence is afforded less legal significance than that from intrinsic sources. See C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004). In short, as the Federal Circuit emphasized in Phillips:
415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
In some cases, 35 U.S.C. § 112, ¶ 6, authorizes patentees to draft claim terms "as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." 35 U.S.C. § 112, ¶ 6. Such terms are called "means-plus-function" terms and are "construed to cover only `the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.'" Media Rights Techs., Inc. v. Capital One Fin. Group, 800 F.3d 1366, 1371 (Fed. Cir. 2015) (quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347-48 (Fed. Cir. 2015)). "Means-plus-function claiming is permitted because it is often much easier and more straightforward to claim a means for doing something rather than listing all the possible ways of accomplishing the task." MyMedicalRecords, Inc. v. Walgreen Co., Nos. 2:13-cv-00631-ODW(SHx), 2:13-cv-07285-ODW(SHx), 2:13-cv-02538-ODW(SHx), 2:13-cv-03560-ODW(SHx), 2014 WL 4367949, at *4 (C.D. Cal. Sept. 3, 2014). However, while means-plus-function claiming "makes it easier to satisfy the statutory requirement of `particularly pointing out and distinctly claiming the subject matter' of the claims, 35 U.S.C. § 112, ¶ 2, it increases the vulnerability of the claims to possible invalidity on other grounds." In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 n.11 (Fed. Cir. 2011). For example, if a court determines that § 112, ¶ 6 applies and is "unable to identify any `corresponding structure, material, or acts described in the specification,' the claim is indefinite." Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014) (quoting Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012)).
Here, the parties dispute whether a number of the terms at issue are means-plusfunction terms. "It is well-settled that a claim limitation that actually uses the word `means' invokes a rebuttable presumption that § 112, ¶ 6 applies." Appex v. Raritan Computer, Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003) (quotation omitted). Claim terms that do not use the word "means" on the other hand "will trigger the rebuttable presumption that § 112, ¶ 6 does not apply." Id. at 1371 (quotation omitted). But the Federal Circuit recently directed that in determining whether a particular term is a meansplus-function term subject to § 112, ¶ 6, "the essential inquiry is not merely the presence or absence of the word `means' but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson, 792 F.3d at 1348. "When a claim term lacks the word `means,' the presumption can be overcome and § 112, ¶ 6 will apply if the challenger demonstrates 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 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). In the case of claims that use the word "means," courts "have been consistent in looking to the meaning of the language of the limitation in assessing whether the presumption is overcome." 792 F.3d at 1348.
Construction of a means-plus-function element requires a two-step analysis. First, the court must identify the claimed function, and second, the court must "determine what structure, if any, disclosed in the specification corresponds to the claimed function." Cardiac Pacemakers, Inc. v. St. Judge Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). "Structure disclosed in the specification qualifies as `corresponding structure' if the intrinsic evidence clearly links or associates that structure to the function recited in the claim." Williamson, 792 F.3d at 1352 (citations omitted). If the claim language identifies multiple functions, "the patentee must disclose adequate corresponding structure to perform all of the claimed functions." Id. at 1351-52.
As noted above, the `979 patent generally covers apparatuses for use in effecting relative movement between the bones in the arm of a patient. The parties dispute the meaning of the following five claim terms within the `979 patent: (1) base; (2) drive means; (3) gear means; (4) a main gear which is connected with said first cuff means and is rotatable with said first cuff means relative to said base; and (5) second gear is at least partially disposed in a recess in said base. We address each of these claim terms below.
The term "base" appears in the following asserted claims: 28, 34, 37, 44, 45, 48, 56, 57, 63, 97, 98, 102, 125, and 126. Plaintiffs argue that the term "base" does not require construction, but if the Court determines otherwise, the term should be given its plain and ordinary meaning, to wit, "a bottom support; that on which a thing stands or rests; the point of attachment." Dkt. 77 at 25. Defendant argues "base" should be construed as "a unique, discrete member from which other parts extend" because "the remaining elements of the claims require a physical structure from which other elements of the device are dependent for the device as a whole to function." Dkt. 78 at 5. Defendant contends that the words "unique and discreet" are necessary because "[i]f one cannot identify the base, because the base is not unique and discrete, you cannot identify anything else in the claim." Id.
Our review of the claim language persuades us that the `979 patent uses the term "base" according to its plain lay meaning. The claim language itself adequately describes the base such that it is readily identifiable without additional construction. Moreover, the patent specification includes a discussion of the base and nowhere does it provide a special definition for the term or include the limitation that it be a "unique, discrete member." It is well-established that "[i]t is improper to add extraneous limitations to a claim, that is, limitations added wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim." Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948 (Fed. Cir. 1993) (internal quotation marks and citation omitted). Because the meaning of the term "base" is made sufficiently clear in the claim language itself, we find that the term needs no further construction.
The term "drive means" appears in claims 28, 34, 44, 45, 48, 52, 53, 57, 63, 97,
98, 102, 106, 125, and 126 of the `979 patent. We address first whether "drive means" is a means-plus-function limitation; Defendant posits that it is and Plaintiffs contend it is not. As discussed above, use of the word "means" in the claim language creates a presumption that § 112, ¶ 6 applies. Appex, 325 F.3d at 1371. However, "[i]f, in addition to the word `means' and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption of § 112, ¶ 6 is overcome — the limitation is not a means-plus-function limitation." TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citations omitted). "Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure." Id. at 1259-60 (citations omitted).
Here, there are two different "drive means" identified in the claims at issue. The function of the first drive means is to rotate the first cuff relative to the base. E.g., `979 Patent, col. 18, ll. 12-15. The function of the second drive means is "to effect pivotal movement of the lower and upper cuff arms relative to each other about the pivot axis which extends transverse to the axis which extends along the arm of the patient" (i.e., to effect bending of the arm at the elbow). `979 Patent, col. 34, ll. 15-19. Thus, we next address the first and second drive means.
The asserted claims recite varying levels of structure for the first drive means, with certain claims (claims 44, 57, 63, 97, and 125) reciting only that the first "drive means" is connected with the base and first cuff means, which is clearly insufficient function to perform the recited function. The claims that provide the most detailed recitation of structure (claims 28, 34, 37, 48, 52, 53, 97, and 106) disclose that the first "drive means" includes two gears: "a main gear" that is connected with the first cuff means and "a second gear" or "a worm" which "is disposed in meshing engagement with said main gear." E.g., `979 Patent, col. 18, ll.15-20; col. 20, ll. 41-43. It is undisputed that these are structural limitations. Accordingly, to determine whether the presumption that the first "drive means" is a means-plus-function limitation is rebutted here (at least as to the more detailed claims), we must decide whether that structure is sufficient to perform the recited function of the first drive means, to wit, rotate the first cuff means.
Plaintiff's expert, Dr. Marta Villarraga, testified by deposition that because the second gear, or worm, is in meshed engagement with the main gear, when the second gear or worm is turned, it will turn the main gear, which, in turn, rotates the first cuff. However, Dr. Villarraga further testified that the structure of the drive means which "will initiate the movement" of the gears is not described in the claim language. Without some structure to start the movement of the second gear or worm gear, neither gear will turn on its own, meaning that the two gears alone are insufficient structure to rotate the first cuff.
Because the claim language fails to provide sufficient structure to perform the function of the first drive means in its entirety, Plaintiffs have failed to rebut the presumption that "drive means" is a means-plus-function limitation. Therefore, we turn to the specification to determine the corresponding structure for the first drive means, which is found in the embodiment depicted in Figure 9. In accordance with Figure 9 of the `979 Patent, the first "drive means" is construed to include: a main gear
With regard to the second drive means, the claim language recites no structure at all to perform the recited function, to wit, bending the arm at the elbow. Accordingly, the presumption that the second drive means is a means-plus-function limitation is not overcome, and we therefore turn to the specification to identify the corresponding structure to perform the function. "When multiple embodiments in the specification correspond to the claimed function, proper application of §112, ¶ 6 generally reads the claim element to embrace each of those embodiments." Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258-59 (Fed. Cir. 1999). Here, the specification discloses alternative embodiments of the invention with different types of second drive means. Therefore, the second drive means is construed to include the corresponding structure in both embodiments. First, in accordance with Figure 11 of the `979 Patent, the second drive means is construed to include: a main drive gear
Alternatively, the second drive means is construed in accordance with Figure 12 of the `979 Patent to include: an externally threaded member or screw
The disputed term "gear means" appears in independent claim 56 and dependent claim 63 of the `979 patent. The parties disagree regarding whether "gear means' is a means-plus-function limitation. Because the term contains the word "means," there is a rebuttable presumption that § 112, ¶ 6 applies. We find that the presumption is overcome here because the claim language itself defines the term and recites sufficient structure to perform the recited function, to wit, rotating the first cuff, therefore removing the term from the ambit of § 112, ¶ 6.
First, we note that, as the court recognized in Williamson, "the presence of modifiers" in the claim language can impart "structural significance." 792 F.3d at 1351. Here, the prefix "gear" itself connotes structure. See MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 519 (11th ed. 2003) (defining gear in part as "a toothed wheel"). The claim language further defines gear means with structural terms, providing: "said gear means includes a worm which is rotatably mounted on said base for rotation about an axis which extends transverse to the axis which extends through the first portion of the patient's body, and a main gear disposed in meshing engagement with said worm and connected with said first cuff, said worm is rotatable relative to said base to rotate said main gear and said first cuff relative to said base about the axis which extends through the first portion of the patient[`]s body ...." `979 Patent, col. 21, ll. 50-58.
Plaintiff's expert, Dr. Villarraga, testified that because the two gears are enmeshed, when the worm gear is rotated, it will rotate the main gear, which will rotate the first cuff. Dr. Villarraga further testified that one of ordinary skill in the art would understand a worm gear to have a longitudinal shaft that is turned to initiate the movement. Accordingly, we find that the claim language recites sufficient structure to perform the function of rotating the first cuff. The detailed recitation of structure in the claim language, which includes both its location and operation for performing the recited function, removes this limitation from the purview of § 112, ¶ 6.
This term appears in claim 28 of the `979 patent. Defendant argues that Plaintiffs' definition attempts to reclaim subject matter explicitly disclaimed by the patentee during the patent prosecution process. Specifically, Defendant argues that during prosecution of the `979 patent, "patentee limited the `main gear' to an `open gear' in order to achieve patentability and now wants to ignore its disclaimer of subject matter." Dkt. 91 at 9. Without further explanation, Defendant asserts that the term must therefore be construed to require the first cuff means to "extend through" the main gear. Even assuming that the patentee did in fact limit the "main gear" to an "open gear," as Defendant contends, Defendant has failed to articulate a reason explaining why that limitation in turn requires that the first cuff means must extend through the main gear.
The claim language itself makes no reference to whether the first cuff means must "extend through" the main gear. Moreover, Defendant's proposed instruction contradicts the written description of the `979 patent, which states only that "[t]he lower cuff may extend through an opening in the main gear." `979 patent, col. 14, lines 17-20. The written description further explains that while "[i]n the illustrated embodiment of the invention, the lower cuff extends through a central opening in the main gear ..., if desired, the main gear could be connected with one end portion of the lower cuff so that the lower cuff does not extend through the main gear." `979 patent, col. 3, lines 21-25 (emphasis added).
Defendant's argument is premised on a statement made during prosecution regarding then-pending claim 86, which issued as claim 1 of the `979 patent, providing: "the gear has an opening which extends through a peripheral portion of the gear...." Dkt. 78-5 at 142. However, as Plaintiff argues, claim 1 is not asserted in this litigation and similar claim language does not appear in the claims that are asserted here. Under the doctrine of claim differentiation, it is presumed "that each claim in a patent has a different scope." AllVoice Computing PLC v. Nuance Commc'n, Inc., 504 F.3d 1236, 1248 (Fed. Cir. 2007). For these reasons, we adopt Plaintiff's proposed construction of the term.
This claim language appears in claim 28 of the `979 patent. It is not clear to us what the relevant distinction is between Plaintiffs' and Defendant's proposed constructions. The parties do not dispute that the term "second gear is at least partially disposed in a recess in said base" requires that the second gear be at least partly contained or housed in a recess and that that recess be located in the base of the device. Because the claim language itself is clear as to these two requirements, the term requires no additional construction.
The `179 patent generally covers apparatuses for stretching tissue around a joint of a patient between first and second relatively pivotable body portions. The parties dispute the meaning of the following five claim terms within the `179 patent: (1) first extension member; (2) second extension member having an arcuate shape extending therefrom; (3) arcuate shape; (4) arcuate path; and (5) travels along an arcuate path through the first extension member. All of the disputed claim terms appear in claim 26 of the `179 patent.
Plaintiffs contend that the term "first extension member" should be given its plain and ordinary meaning, to wit, "a part that extends, or extends from, the first arm member." Defendant argues that Plaintiffs' proposed definition improperly "ignores the special definition given to the term in the specification." Dkt. 91 at 10. Specifically, Defendant argues that the specification distinguishes between an extension member with a flat angle and an extension member with a non-flat angle, "stat[ing] specifically that the first extension member must extend at a non-flat angle." Id. (citing the `179 Patent, col. 3, ll. 11-23).
We have carefully reviewed the specification and nowhere does it "state specifically" that the first extension member cannot extend at a 180-degree angle. It is true that the specification provides that the first extension member "extends at angle 03b1 from the first arm member." `179 Patent, col. 3, ll. 11-13. However, the specification does not require that the angle be something "other than 180 degrees" as Defendant proposes. Nor has Defendant adduced any evidence to establish that the term "angle 03b1" necessarily excludes a 180-degree angle or that the device would not function in the intended manner if the first extension member extended at a flat angle.
Defendant contends that the first arm member and the first extension member would be indistinguishable if the first extension member extended at a 180-degree angle from the first arm member. We agree that if the specification required that the first extension member and the first arm member be connected as one molded piece, it could be difficult to distinguish between the two parts when connected at a flat angle. However, as shown in Figures 4 and 5, the `179 patent specification discloses embodiments of the invention that include "a pivotal connection
As these diagrams depict, were the first extension member
For these reasons, we see no justification for limiting the definition of "first extension member" as Defendant proposes. Because Plaintiffs' proposed construction is supported by the intrinsic evidence, we adopt their construction and define "first extension member" as "a part that extends or extends from the first arm member."
The primary disagreement between the parties as to the meaning of this term is with regard to the proper definition of "arcuate shape." Plaintiffs argue that if any definition is required, it should be given its plain and ordinary meaning, to wit, "a part that extends, or extends from, the second arm member, at least a portion of which is curved like a bow or circle." (emphasis added). Defendant, however, argues that Plaintiff's definition contradicts the specification, which Defendant represents "specifically states that the second extension member must be `non-circular.'" Dkt. 91 at 11. Accordingly, Defendant argues that the term should be construed as "a non-circular, non-linear structure that extends outwardly from an arm member." (emphasis added).
The specification does discuss an embodiment of the invention that includes a "non-circular arcuate shaped second extension member," (`179 Patent, col. 9, ll. 56-57), illustrated below:
However, the specification does not, as Defendant asserts, specifically require that the second extension member be "non-circular." Rather, the specification discloses multiple embodiments, including one described as having a second extension member with a "substantially circular arcuate shape." `179 Patent, col. 9, ll. 51-52. Defendant has failed to establish that the specification disavows the "substantially circular embodiment" or otherwise limits the scope of the claim to a "non-circular" embodiment. We agree with Defendant, however, that Plaintiffs' proposed construction does not completely align with the specification either as it describes an arcuate shape as "curved like a bow or circle," and, as noted above, the specification includes an embodiment of a "noncircular" arcuate-shaped second extension member. For these reasons, we are not persuaded that either side's proposed construction appropriately defines the term.
It is well-established that courts should look first to the intrinsic evidence of the record when construing disputed claim terms. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). However, where, as here, there is no indication that the patentee intended the term to be defined in a manner distinguishable from its plain and ordinary meaning, the Federal Circuit has recognized that dictionaries can be "valuable resources to assist in determining the ordinary meaning of claim language." Intex Recreation Corp. v. Metalast, S.A. Sociedad Unipersonal, 245 F.Supp.2d 65, 69 (Fed. Cir. 2003). Accordingly, in construing the term "arcuate shape" as it is used in the `179 patent, we rely on the following two dictionary definitions of the word "arcuate": (1) "arched or curved; bow-shaped," MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 133 (6th Ed. 2003); and (2) "curved like a bow," RANDOM HOUSE WEBSTER'S COLLEGE DICTIONARY 72 (1995).
Upon review of both the intrinsic and extrinsic evidence in the record, we therefore hold that the construction for the term "second extension member having an arcuate shape extending therefrom" that best aligns with the evidence before us is: "a part that extends from the second arm member, at least a portion of which is shaped or curved like an arc or bow."
Because there is no indication that the patentee intended "arcuate shape" to have different meanings throughout the patent, we construe the term in the same manner as above, to wit: "shaped or curved like an arc or bow."
Based on the parties' respective proposed constructions of the term "arcuate path," it is clear that they intend for "arcuate" to be defined consistently throughout the patent.
Accordingly, we construe "arcuate path" to mean "a path shaped or curved like an arc or bow."
The parties' definitions of the term "travels along an arcuate path through the first extension member" differ with regard to the proper construction of "arcuate path" as well as the meaning of "through the first extension member." For the reasons detailed above, we construe the first part of the term, to wit, "travels along an arcuate path" to mean "travels along a path shaped or curved like an arc or bow."
Defendant argues that a person of ordinary skill in the art would construe the second part of the term — "through the first extension member" — to mean that "the first extension member travels into one side of the second extension member into an opening or channel and out the other side" as shown in Figure 9 of the `179 Patent. Plaintiffs maintain that "through" is not a technical term and does not require construction. According to Defendant, Plaintiffs "ignore[] the meaning of the word `through' by not defining it at all" and "ignore the importance of [through] to the claimed invention, which is to hold the device together and to achieve the desired translational motion." Dkt. 78 at 19.
We disagree with Defendant. Defendant's only support for its contention is the conclusory opinion of its expert, Renee Rogge, Ph.D., which is not tied in any way to the intrinsic record. See SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013) (giving no weight to expert opinion that is "conclusory and incomplete" and lacking "any substantive explanation tied to the intrinsic record"). Nothing in the specification or intrinsic evidence supports limiting the definition of "through" to the specific embodiment shown in Figure 9 of the `179 Patent nor is there any indication that the word is a technical term having a special meaning in the art of orthoses that requires construction beyond its readily understood plain and ordinary meaning.
For these reasons, the term "travels along an arcuate path through the first extension member" is construed to mean: "travels along a path shaped or curved like an arc or bow and passes through the first extension member."
The `804 patent generally covers apparatuses for positioning a joint in a finger on the hand of a patient. The parties dispute the meaning of two claim terms within the `804 patent: (1) bending mechanism; and (2) removably attachable to the finger. Both of these disputed claim terms appear in claim 1 of the `804 patent.
The term "bending mechanism" is used in claim 1 of the `804 patent, which provides in relevant part as follows: "a bending mechanism removably attachable to the finger and selectively attachable to the hand cuff, and including first and second bending portions and a force transmitting mechanism connected to and interposed between the first and second bending portions." `804 Patent, col. 9, ll. 5-9. Initially, we note that there is no function explicitly recited in claim 1. Rather, claim 1 merely recites where the bending mechanism is to be attached and its structural components, namely, first and second bending portions and a force transmitting mechanism. Despite the fact that claim 1 is not written in the classic § 112, ¶ 6 format, Defendant contends that "bending mechanism" is nonetheless a means-plus-function limitation that falls within the purview of § 112, ¶ 6 because the name itself discloses a function, to wit, "bending," and yet claim 1 fails to reference "any structure whatsoever." Dkt. 91 at 14. We disagree.
We recognize that the Federal Circuit recently observed in Williamson that a patentee's use of certain nonce words, including, "mechanism," is often tantamount to using the word "means," and therefore may invoke § 112, ¶ 6. 792 F.3d at 1350. However, we find that the term "bending mechanism" nonetheless does not fall within the purview of § 112, ¶ 6 here because no function is identified in the claim and to the extent we conclude the function is "bending," the claim language recites sufficiently definite structure to render § 112, ¶ 6 inapplicable, as claim 1 of the `804 patent describes both the structural components of the bending mechanism as well as the manner in which the parts are connected. Specifically, claim 1 provides that the bending mechanism includes: "first and second bending portions" and "a force transmitting mechanism" that is "connected to and interposed between the first and second bending portions."
The claim term "removably attachable to the finger" appears in claim 1 of the `804 patent, which provides in relevant part: "a bending mechanism removably attachable to the finger and selectively attachable to the hand cuff...." `804 Patent, col. 9, ll. 5-6. Plaintiffs contend that the term should be construed to mean "capable of being attached to the finger in a way that it can be removed." Dkt. 77 at 22. Defendant concedes that a person of ordinary skill in the art would construe the term as Plaintiff has proposed and also agrees that this construction is supported by the specification, but argues that the prosecution history of the `804 Patent requires that the words "directly and exclusively" be included in the definition. Dkt. 91 at 15-16. Defendant asserts that the patentees added "removably attachable to the finger" during prosecution in order to overcome the examiner's rejection of the claim and "specifically disclaim[ed] devices that are not directly or exclusively attached to the finger." Dkt. 78 at 24, 26.
We do not accept Defendant's characterization of the prosecution history. During the `804 patent prosecution process, the patentee distinguished claim 1 of the `804 patent from the cited art as follows:
Dkt. 78-12 at 37-38. Accordingly, the patentee distinguished claim 1 of the `804 patent because the prior art was directed to a wrist orthosis whereas the `804 patent disclosed a finger orthosis for positioning a joint in a finger. As Plaintiffs argue, there was no clear and unambiguous disclaimer of devices with a "bending mechanism" that was not "directly or exclusively" attachable to a finger. In fact, the plain language of the claim also requires that the "bending mechanism" be "selectively attachable" to the hand cuff. Thus, a construction of "removably attachable to the finger" that required the device to be "exclusively" attached to the finger would contradict the plain claim language, which is a point that Defendant's counsel essentially conceded at oral argument. Nor is there any support in either the plain claim language or the patent prosecution history for construing "removably attachable to the finger" to require that the device be "directly" attached to the finger.
For these reasons, we adopt Plaintiff's proposed construction of the term, to wit, "capable of being attached to the finger in a way that it can be removed." We note that this construction not only aligns best with the claim language and intrinsic evidence but is also the definition proposed by Defendant's own expert, Dr. Rogge. Exh. 12 ¶ 47 ("a person of ordinary skill in the art would construe this phrase [`removably attachable to the finger'] to mean `capable of being attached to the finger in a way that it can be removed.'").
The `286 patent generally covers apparatuses for stretching tissue around a joint of a patient between first and second relatively pivotable body portions. The parties dispute the meaning of the following five claim terms within the `286 patent: (1) curved path; (2) a first arm member for coupling to the first body portion and defining a curved path; (3) movable along the curved path; (4) operatively coupled; and (5) drive assembly.
The term "curved path" appears in the following three limitations that Defendant has identified for construction: (1) "curved path" (claims 26, 27, and 28); (2) "a first arm member for coupling to the first body portion and defining a curved path" (claim 26); and (3) "movable along the curved path" (claims 26 and 28). Defendant argues that in each limitation, "curved path" should be defined as "a nonlinear, noncircular physical structure bounded by two distinct end points along which another element may translate or rotate." Dkt. 91 at 18. Plaintiffs contend that the term does not need construction, but if the Court believes construction is necessary, they propose the plain and ordinary meaning of the term, to wit, "curved line of travel."
Defendant argues that its construction is "required" by the `286 Patent based solely on the description of Figure 9 (pictured below), which provides that the embodiment "shows a non-circular arcuate shaped second extension member" that is attached to the second arm member and further provides that, as the second arm member moves, "the second body portion will exhibit both a rotational motion, about the joint axis, and a translational motion, distracting or compressing the joint." `286 Patent, col. 7, ll. 62-67; col. 8, ll. 1-4. However, the claim language itself does not include the limitations proposed by Defendant and interpreting claims "in light of the specification does not mean that everything expressed in the specification must be read into all the claims." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002). Moreover, the specification also discloses an embodiment with a "substantially circular" shaped second extension member (
For these reasons, we find no basis in the intrinsic record to read Defendant's limitations into the claim language and Defendant has failed to point to sufficient evidence to establish that the patentee acted as its own lexicographer in this case. Accordingly, we hold that the plain and ordinary meaning of "curved path" is the appropriate construction here, and we therefore adopt Plaintiffs' proposed construction, to wit, "curved line of travel."
The term "operatively coupled" is used in independent claim 26 and dependent claim 30 of the `286 Patent. Claim 26 provides in relevant part: "a second arm member for coupling to the second body portion and operatively coupled to the first arm member, the second arm member movable along the curved path, to rotate the second body portion about an axis of rotation around the joint." `286 Patent, col. 16, ll. 53-57. Claim 30 provides: "[a]n orthosis in accordance with claim
Without either convincing support or elaboration Defendant argues simply that "[a] person having ordinary skill in the art at the time of the invention would have understood this term to mean that the motion of the second arm member would be dependent upon the motion of the first arm member." Dkt. 78 at 31. The only support for this construction cited by Defendant is the opinion of its expert, Dr. Rogge, that "`operatively coupled' is an important distinction of the device and should be construed to mean that `as the action of one element imparts translational and rotational motion of another element.' In other words[,] ... the motion of the second arm member would be dependent upon the motion of the first arm member." Def.'s Exh. C, ¶ 59. But, as Plaintiffs argue, Defendant's definition is not supported by the actual claim language, which does not even require movement of the first arm member, but instead requires only that the second arm member be movable along the curved path. `286 Patent, col. 16, ll 53-57. In her report, Dr. Rogge failed to connect her conclusion to any specific piece of intrinsic evidence, instead stating in a wholly conclusory fashion that her opinion is based only on her review of "the `286 Patent, including the claim language as a whole, the specification, and its prosecution history ...." Id. Absent a specific citation or more fully developed analysis to support her opinion, we do not find her testimony particularly helpful or persuasive.
In Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004), the Federal Circuit construed a nearly identical term, holding that "operatively connected" is "a general descriptive term frequently used in patent drafting to reflect a functional relationship between claimed components." Id. at 1118. The court went on to hold that "[g]enerally speaking, ... [operatively connected] means the claimed components must be connected in a way to perform a designated function." Id. The court then looked to the claim language and the specification to determine the particular "designated function" at issue in that case. Id.
Similarly here, there is no evidence in the case at bar that the term "operatively coupled" is a term with a special meaning in the art of orthoses or that the patentee acted as its own lexicographer when it included the term in the `286 patent. Accordingly, we find that the plain and ordinary meaning of the term as explicated in Innova is the proper construction here, to wit, that the term "operatively coupled" requires that the named parts be connected in a manner so as to perform their designated function(s).
In order to determine what the named parts are "operatively coupled" to do, we turn first to the claim language. Claim 26 provides that the second arm member and first arm member are "operatively coupled" such that the second arm member is "movable along the curved path, to rotate the second body portion about an axis of rotation of the joint." Claim 30 is dependent on claim 26 and recites an orthosis as described in claim 26 comprising a "drive assembly operatively coupled to the second arm member." Although the claim language itself does not describe the function of the drive assembly being connected to the second arm member, the specification provides that drive assembly is used "to move the second extension member through the first extension member." `286 Patent, col. 8, ll. 54-55. Accordingly we construe the term "operatively coupled" as used in claim 26 as follows: "connected in a manner to enable the second arm member to be moveable along the curved path." The term is construed in claim 30 to mean: "connected in a manner to enable the drive assembly to move the second extension member though the first extension member."
The term "drive assembly" appears in claims 30 and 31 of the `286 Patent. Claim 30 recites: "An orthosis in accordance with claim
Claims 30 and 31 are not written in traditional "means for" format. In order to overcome the presumption that § 112, ¶ 6 does not apply in this instance, Defendant must establish that the claim term fails to `recite sufficiently definite structure' or else recites `function without reciting sufficient structure for performing that function.'" Williamson, 792 F.3d at 1349 (quoting Watts, 232 F.3d at 880). Here, there is no function recited in the claim language. Nor has Defendant shown that the claims fail to recite sufficiently definite structure. In her report, Plaintiff's expert opined that one of ordinary skill in the art at the time of the invention would understand "drive assembly" to be a structural limitation. This conclusion is buttressed by the manner in which the term is discussed in the specification, which provides that while the drive assembly described in the embodiment utilizes a "gear system," it is contemplated that "other known drive systems" such as "a friction type drive system" could be used. `286 Patent, col. 8, ll. 52-56. Accordingly, we hold that, when read in light of the specification, the term "drive assembly" connotes sufficiently definite structure to one of skill in the art to preclude the application of § 112, ¶ 6. We therefore adopt Plaintiffs' proposed construction of "an assembly designed or constructed to transfer power from one part to another."
The `343 patent generally covers apparatuses for increasing the range of motion of a tissue in a body of a patient. The only claim term in dispute is "lockout element," which appears in claim 1 of the `343 patent.
The claim term "lockout element" is found in independent claim 1 of the `343 patent, which provides in relevant part: "a lockout element having a locking position and configured to selectively inhibit the spring from urging movement of the second arm member relative to the first arm member when in the locking position." `343 patent, col. 23, ll. 9-12. Although it does not use the word "means," Defendant argues that the rebuttable presumption that it is not a means-plus-function limitation is overcome because it recites the function of "locking" without reciting sufficient definite structure to perform the function. Plaintiffs rejoin that the term "lockout element" is not a meansplus-function limitation because one of ordinary skill in the art at the time of the invention would have understood the term as a name for structure and that if the term requires construction, it should be defined as "an element that is designed or constructed to inhibit the relative movement of another element or part."
We do not believe the Defendant has overcome the rebuttable presumption that § 112, ¶ 6 does not apply here. The Federal Circuit has recognized that "the fact that a particular mechanism ... is defined in functional terms is not sufficient to convert a claim element containing that term into a `means for performing a specified function' within the meaning of section 112(6)." Greenburg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). In Greenburg, the court cited a number of devices that take their names from the functions they perform, including "`filter,' `brake,' `clamp,' `screwdriver,' or `lock.'" Id.
While the term "lockout element" may not "call to mind a single well-defined structure," the Federal Circuit has observed that "the same could be said of other commonplace structural terms such as `clamp' or `container.' What is important is not simply that the [term being construed] is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art." Id. We do not view the term "lockout element" as being significantly different from the term "lock" and find that one of ordinary skill in the art at the time of the invention would have understood the former, like the latter, to be a name for a class of structures. See Villarraga Dep. at 139-40. Accordingly, we hold that "lockout element" is not a meansplus-function limitation.
Defendant asserts that even if the court determines that § 112, ¶ 6 does not apply, "lockout element" should still be construed to be "limited to a hook and latch mechanism" because any broader definition was disavowed during the patent prosecution process when the patentee "specifically stated that the `lockout element' is shown in `paragraph [0071]; Fig. 2A.'" Dkt. 78 at 33. This argument by Defendant takes the patentee's statement out of context, however. During the patent prosecution process, the `343 Patent was amended to add what is now claim 1. As is common when an applicant amends claims during the prosecution process, the patentee stated that no new matter was added and pointed to the place in the specification that provided support for the amended claim. In so doing, the patentee stated: "Adequate support for new claim 58 [now claim 1] can be found, for example, as follows: ... iv) lockout element: paragraph [0071]; FIG. 2A; and possible other locations in the application as filed; ...." Dkt. 78-21 at 2010. This reference is simply insufficient to establish that the patentee made a "clear and unmistakable disavowal of scope during prosecution." Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006). Accordingly, we adopt Plaintiffs' proposed construction of the term and "lockout element" is therefore defined as "an element that is designed or constructed to inhibit the relative movement of another element or part."
The disputed terms are construed by the Court as follows:
IT IS SO ORDERED.
