LOURIE, Circuit Judge.
Hologic, Inc., Cytyc Corp., and Hologic L.P. (collectively "Hologic") appeal from the decision of the United States District Court for the Northern District of California granting summary judgment of invalidity of claim 1 of U.S. Patent 6,482,142 (the "'142 patent"), Hologic, Inc. v. SenoRx, Inc., 08-CV-0133 (N.D.Cal. Oct. 30, 2009) ("Summary Judgment Op."), and from the judgment following a jury verdict of invalidity of claim 8 of the '142 patent that was based on the court's ruling regarding claim 1, Hologic, Inc. v. SenoRx, Inc., 08-CV-0133 (N.D.Cal. Feb. 24, 2010). Because the district court's invalidity finding was based on an erroneous claim construction, we reverse and remand.
The relevant technology relates to balloon brachytherapy, a type of radiation therapy in which a balloon is inserted into the body at or near a tumor or other proliferative tissue disease site. Leading up to the balloon and running through it is a lumen, through which a radiation source may be placed in the balloon. Early uses of balloon brachytherapy included treatment of bladder cancer. In such applications, the devices were placed within existing body cavities. Balloon brachytherapy may also be used after the removal of a tumor by inserting the device into the cavity that remains from tumor removal to target any remaining cancerous tissue while minimizing damage to healthy tissue. This usage is contemplated by the '142 patent and its parent patents, and is used in the accused device, as discussed further below.
The '142 patent is a continuation-in-part of U.S. Patent 6,413,204 (the "'204 patent"), which is in turn a continuation-in-part of U.S. Patent 5,913,813 (the "'813 patent").
This appeal involves claims 1 and 8 of the '142 patent. Independent claim 1 reads as follows:
Id. col.8 l.61—col.9 l.6 (emphases added). Claim 6, which the district court found relevant to its claim construction, reads:
Id. col.9 l.45—col.10 l.9 (emphasis added). Claim 8, which depends from claim 1, reads:
Id. col.10 ll.13-17 (emphasis added).
Prior art in the field is also relevant to the appeal. A 1990 article described the
The prior art also includes a European patent application, WO 98/15315 ("Williams"), drawn to devices for treatment of proliferative disorders by using a small balloon of a liquid radiation source within a larger balloon. The application focuses on providing the radiation material to the inner balloon and the shape of the balloon. Figure 3 of that reference is reproduced below:
Hologic brought suit against SenoRx, Inc. ("SenoRx") in January 2008, alleging that SenoRx's balloon brachytherapy device, the Contura Multi-Lumen Balloon ("Contura") infringes its patents. SenoRx conceded infringement of claims 1 and 8 of the '142 patent, see Summary Judgment Op. at 28, but argued that the asserted claims were invalid. The court held a hearing and issued its claim construction order in February 2009. Hologic, Inc. v. SenoRx, Inc., 2009 WL 416571 (N.D.Cal. 2009) ("Markman Op."). The court construed the language in claim 1, "the radiation source further being asymmetrically located and arranged within the expandable surface to provide predetermined asymmetric isodose curves with respect to the apparatus volume," to require that the radiation source be "located and arranged inside the expandable surface so as not to be concentric with the expandable outer surface," and did not limit the claimed
The district court denied a motion for summary judgment of invalidity of claim 1 of the '142 patent based on inoperability. Hologic, Inc. v. SenoRx, Inc., 2009 WL 416596 (N.D.Cal.2009). The court found that the language of claim 1 requiring a radiation source disposed completely within the expandable outer surface but also spaced apart from the apparatus volume did not render the claim inoperable and not enabled, although its initial reaction was "that the inventors made an obvious mistake in the drafting of Claim 1." Id. at *2. The court noted that the apparent, intended meaning of the claim was that the source was located within the balloon but spaced apart from its surface. The court further noted that in correspondence with the PTO during prosecution history, the applicants stated:
Id. at *3. Thus, the language used to describe the invention in correspondence with the examiner was identical to the later used claim language, and clearly envisioned a source located within the balloon but spaced apart from its surface. The court concluded that although "apparatus volume" was "an odd choice of language to describe what the inventor intended to describe, its use was consistent in the claim, in accordance with use in the prosecution history, and it results in coverage of the embodiments disclosed." Id. at *4.
Based on its constructions, the district court then granted summary judgment of invalidity of claim 1 of the '142 patent, as anticipated by the prior art Ashpole article. Summary Judgment Op. In so doing, the court found that Ashpole disclosed predetermined, asymmetric isodose curves like those in claim 1 of the '142 patent. Id. at 13-14. However, the court found that Ashpole did not clearly and convincingly disclose claim 8's requirement that the expandable outer surface be sufficiently rigid to deform the target tissue into the shape of the expandable outer surface, and therefore denied summary judgment as to anticipation of that claim. Id. at 14. At trial, Hologic asserted dependent claim 8 of the '142 patent. The court instructed the jury that the "asymmetrically located and arranged" limitation and the "predetermined asymmetric isodose curve" limitation
Hologic appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
We review a district court's decision on summary judgment de novo, reapplying the same standard applied by the district court. Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed.Cir. 2009). Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). Claim construction is an issue of law, which we review de novo. See, e.g., Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc). A patent is presumed valid, 35 U.S.C. § 282, and this presumption can be overcome only by clear and convincing evidence to the contrary. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed.Cir.2001).
Hologic argues that the district court erred by failing to limit claim 1 to situations in which asymmetry is achieved by displacing the radiation source from the longitudinal axis. According to Hologic, because the claim language does not resolve the nature of the asymmetry, the court must look to the '142 patent's specification, which shows that radiation is always asymmetrically located with respect to the longitudinal axis. Hologic then argues that requiring the isodose curves to be nonconcentric with respect to the balloon would read out the preferred embodiment and many other embodiments from the specification. The specification, argues Hologic, consistently characterizes asymmetry relative only to the longitudinal axis. Hologic also points to statements made during prosecution history as helpful in construction. In overcoming an obviousness rejection in view of U.S. Patent 6,036,631 ("McGrath"), Hologic explained that what issued as claim 1 could be distinguished from McGrath in part because "McGrath provides an x-ray tube [] that slides within a catheter . . . `essentially forming a linear source,'" J.A. 10185, rather than providing an asymmetric dose.
Hologic also challenged the district court's construction for differentiating between independent claim 1 and independent claim 6, which claims a lumen "shaped to provide asymmetric placement of a radiation source with respect to a longitudinal axis through the apparatus volume." '142 patent col.10 ll.6-9. Hologic argues that claim differentiation is only proper between an independent claim and those claims that depend from it. Hologic explains that, in contrast to claim 6, claim 1 was not specifically drawn to the embodiments with multiple radiation sources, thus obviating the need to explain that at least one of the lumens was shaped so as to be asymmetric with the longitudinal axis. Hologic responds to SenoRx's suggestion that Hologic's construction was inconsistent with the embodiments shown in figures 3 and 3A by arguing that those figures are also drawn to an embodiment with multiple radiation sources, and thus are not implicated by claim 1. Hologic further argues that the isodose curves produced by those configurations are asymmetric about the longitudinal axis.
SenoRx argues that the claim language is clear that the contemplated asymmetry is with respect to the balloon's volume and
SenoRx also argues that even under Hologic's proposed claim construction, claim 1 is invalid as anticipated in light of Williams, which includes a figure that SenoRx contends is asymmetric with respect to the longitudinal axis of the outer balloon. In addition, SenoRx revives its argument that claim 1 is invalid as inoperable and not enabled. Specifically, SenoRx argues that the requirement of "a radiation source disposed completely within the expandable outer surface and located so as to be spaced apart from the apparatus volume" is impossible because the radiation source cannot be inside the volume and spaced apart from it.
We agree with Hologic that the phrase "asymmetrically located and arranged within the expandable surface" means "located and arranged so as not to be on the longitudinal axis of the expandable surface." Although the claim concludes with the phrase "with respect to the apparatus volume," '142 patent col.9 l.6, that language explains the asymmetry of the predetermined isodose curves, as discussed further, below. The asymmetry of the location of the radiation sources is not explicitly stated in claim 1. However, asymmetry is a relative concept that can only exist in relation to some reference. Although "the claims of a patent define the invention to which the patentee is entitled the right to exclude," we must read the claims "in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303, 1312-14 (Fed.Cir. 2005) (en banc) (quotations omitted); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996) ("[I]n interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history."). Here, claim 1 does not specify a reference for the asymmetry of the radiation source's placement within the expandable surface; however, the specification makes clear what the inventors contemplated as their invention. All the descriptions of the invention contemplating the placement of a radiation source describe displacement from the longitudinal axis of the balloon. For example, the summary of the invention describes the configurations contemplated by the inventors:
'142 patent col.2 l.65-col.3 l.6 (emphases added).
This description explains how the radiation source may be asymmetrically placed in relation to the longitudinal axis of the device, and how such placement will create isodose curves that are also asymmetric with respect to the longitudinal axis. One particular sentence was relied upon by the district court because it does not specify asymmetry about the longitudinal axis—in fact, it does not specify any reference in describing its asymmetry. Id. col.3 ll.7-10 ("In another example, the radiation source comprises a plurality of spaced apart solid radioactive particles disposed within the apparatus volume and arranged to provide a predetermined asymmetric isodose curve within the target tissue."). However, the sentence is followed directly and in the same paragraph by two "particular examples," both of which specifically dictate asymmetry of the location of radiation about the longitudinal axis:
Id. col.3 ll.11-19 (emphases added).
It thus appears that the first sentence of the paragraph is not a deviation from the rest of the specification, which contemplates different ways of arranging radiation sources asymmetrically about the longitudinal axis and of achieving isodose curves that are asymmetric about the longitudinal axis or with respect to the volume of the apparatus. Rather, the relied-upon sentence is a prelude to two descriptions of asymmetry about the longitudinal axis. The rest of the specification is consistent with this reading. Id. col.5 ll.11-14 ("Radiation source 24 has an asymmetric configuration with respect to a longitudinal axis 38 of the instrument 10. That is, radiation source 24 is shaped so as to result in an isodose profile 40 that varies radially about the longitudinal axis 38."); id. col.6 ll.25-29 ("[T]his device specifically alters the isodose profile for applications where particularly sensitive tissue or other concerns result in a desire to limit the dosage on one or more sides of the device"); id. col.7 ll.5-7 ("The inner surface 106 is asymmetrically shaped or located with respect to the longitudinal axis 110 of the device 100").
The district court also looked to other claims to determine the meaning of the disputed terms. Markman Op., 2009 WL 416571, at *11. We have explained that other claims "can also be valuable sources of enlightenment as to the meaning of a claim term." Phillips, 415 F.3d at 1314 (citing Vitronics, 90 F.3d at 1582). Hologic wrongly asserts that looking to other terms is only appropriate when the comparison is between an independent claim and the claims that depend from it. Although that may be an instance where examination of other claims is worthwhile, Phillips, 415 F.3d at 1314-15, it is not the only one.
Here, claim 6 specifically refers to a "plurality of radiation sources being provided on at least two elongate members extending into the apparatus volume, at least one of the elongate members being shaped to provide asymmetric placement
Moreover, no other claim, independent or dependent, contains a specific limitation that the radiation source is symmetric with respect to the longitudinal axis. If, as SenoRx maintains, the specification supports that interpretation, its argument is not backed up by any claim that recites the only other alternative to an asymmetric source, viz., a radiation source that is symmetric with respect to the longitudinal axis.
SenoRx's argument that figures 3 and 3A show asymmetry with respect to the apparatus volume but not with respect to the longitudinal axis is also not convincing. Those figures show a central lumen with a plurality of radiation sources (52), some of which are located along the longitudinal axis; there are also two lumens bent away from the axis that bear radiation sources (52) at their ends. Figure 3 shows a side view, with the longitudinal axis proceeding left to right, while figure 3A shows a view along the longitudinal axis:
As explained by the district court, however, the resulting isodose curve (64) is not symmetric about the longitudinal axis as posited by SenoRx. (Nor, for that matter, are the radiation sources (52); rather, they are symmetric about a plane defined by the longitudinal axis and an axis along the dotted line (62) in figure 3A). Markman Op., 2009 WL 416571 at *11. Because the specification, including the figures, consistently and exclusively shows radiation sources located asymmetrically about the longitudinal axis, and because that is clearly what the inventors of the '142 patent conceived of, claim 1 is properly construed as referencing radiation sources that are located and arranged so as not to be on the longitudinal axis of the expandable surface.
Although as properly construed, claim 1 is drawn to a radiation source that is asymmetric with respect to the longitudinal axis of the expandable surface, the limitation does not necessarily apply to the predetermined isodose curves, which are specifically dictated by the claim language to be asymmetric "with respect to the apparatus volume." That construction was not specifically appealed to us and we take no view upon it here. We do note that the practical implications of the distinction may be minimal, as the longitudinal asymmetry of the radiation source may, by necessity, result in asymmetry of the isodose curves with respect to the longitudinal axis.
We are also not persuaded by SenoRx's argument in the alternative that even under Hologic's proposed claim construction, the '412 patent would be invalid as anticipated by Williams. Williams does not disclose asymmetry about a longitudinal axis
We agree with the district court's refusal of summary judgment that claim 1 is invalid as inoperable and not enabled. We find the district court's reasoning in its denial of summary judgment persuasive. See Hologic, 2009 WL 416596. The court correctly noted that "although 'apparatus volume' was an odd choice of language to describe what the inventor intended to describe, its use was consistent in the claim, in accordance with use in the prosecution history, and it results in coverage of the embodiments disclosed." Id. at *4.
Because the jury's finding of invalidity of claim 8 was predicated on the erroneous claim construction of claim 1, that judgment also cannot stand.
For the foregoing reasons, we reverse the district court's grant of summary judgment of invalidity of claim 1 of the '142 patent, and the district court's judgment of invalidity of claim 8 of the '142 patent and remand for further proceedings consistent with this judgment.
Costs to Hologic.
FRIEDMAN, Circuit Judge, dubitante:
There is no suggestion, or even hint, in the technical language of claim 1 of the '142 patent that its phrase "asymmetrically located and arranged within the expandable surface" means, as the court holds, "located and arranged so as not to be on the longitudinal axis of the expandable surface." The court accomplished this construction of the patent language primarily by incorporating into that language the "longitudinal axis" limitation that is stated several times in the specification.
If that were all this case involved, I probably would join the opinion.
But there is much more here that sheds light on the meaning of this language in claim 1. Two of the other independent claims—claims 2 and 6—explicitly refer to "solid radiation sources," or "a radiation source," followed in each case by the words "with respect to a longitudinal axis through the apparatus volume." The use of the term "a longitudinal axis" in these two claims shows that when the patentee wanted the claim to include that limitation, he knew how to do so, i.e., by explicitly including those words. To me, these facts indicate that, had he intended claim 1 also to include that limitation, he would have explicitly included that language in that claim, as he did in claim 2 and 6, but not in claim 1 or the other two independent claims.
In short, it seems to me that the district court correctly construed claim 1 as not including the "longitudinal axis" limitation.
