Karl Storz Endoscopy-America Inc v. Integrated Medical Systems International Inc

Filing 111

MEMORANDUM OPINION. Signed by Judge Karon O Bowdre on 3/12/2020. (JLC)

FILED
2020 Mar-12 AM 10:09
U.S. DISTRICT COURT
N.D. OF ALABAMA

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
SOUTHERN DIVISION
____________________________________
KARL STORZ ENDOSCOPY)
AMERICA INC.,
)
)
Plaintiff,
)
) Civil Action No. 2:12-cv-02716-KOB
v.
)
)
INTEGRATED MEDICAL SYSTEMS
)
INTERNATIONAL, INC.,
)
)
Defendant.
)
)

MEMORANDUM OPINION
This matter comes before the court on the parties’ proposed claim
constructions regarding disputed terms in two United States patents. In its third
amended complaint, Plaintiff Karl Storz Endoscopy-America Inc. (“KSEA”)
alleges that Defendant Integrated Medical Systems International, Inc. (“IMS”) has
infringed on U.S. Patent No. 7,530,945 (the ‘945 patent) and U.S. Reissued Patent
No. RE47,044 (the ‘044 patent). (Doc. 93 at 8, 10). Defendant IMS not only
denies wrongdoing, but also has filed a counterclaim alleging noninfringement and
invalidity of the same two patents. (Doc. 94). The parties now ask the court to
construe disputed claim terms in patents ‘945 and ‘044.

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The court conducted a Markman 1 hearing on February 10, 2020 regarding
patent claims in the two patents at issue. After consideration of the parties’ written
and oral arguments regarding the disputed claims, the court has construed the term
“transparent” and claims 15 and 23 of the ‘044 patent; however, the court finds
construction of the other contested claims unnecessary.
I.

Factual Background

The two patents at issue in this case concern endoscopes. The parties have
agreed that an endoscope is “an instrument that can be at least partially inserted
into a cavity to visually examine that cavity.” (Doc. 104 at 2). As described in the
patents at issue here, endoscopes have a tubular shaft containing “a succession of
different optical components”—including, for instance, lenses and spacers—that
make up an optical system that allows the person operating the endoscope to obtain
a visual image of the cavity into which the endoscope is inserted. (Doc. 93-1 at 7,
93-2 at 7).
To obtain good image quality, the interior components of the endoscope
must be precisely aligned and fixed into position. For example, there must not be
any gaps between the lenses and the spacers. Assuring correct alignment and
image quality requires testing the position of the component parts and the overall
performance of the optical system. In many endoscopes, like the prior art

1

Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).
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endoscopes distinguished by the patents in this case, this quality check cannot be
made until after the complete assembly of the endoscope. When a quality check
cannot be performed until after the endoscope is assembled, correction of any
errors often becomes expensive because it requires the dismantling of the
endoscope.
In the ‘945 patent (a method patent covering the assembly of endoscopes)
and the ‘044 patent (a machine patent covering the endoscopes themselves), which
are part of the same patent family and are substantially similar, Plaintiff KSEA
lays claim to the process of creating an endoscope with an interior tube of
transparent shrinkable material that encloses and fixes the optical components of
the endoscope and also allows a visual check of the alignment of the interior
components before assembly of the entire endoscope. Thus, the alignment of the
optical components can be tested and corrected without disassembly of a
completed endoscope.
II.

Principles of Law

Claim construction is the process by which courts determine the scope and
meaning of a patent’s claims. Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). “It is a bedrock
principle of patent law that the claims of a patent define the invention to which the

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patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc).
Proper claim construction requires a court to review the patent's intrinsic
evidence and, when appropriate, extrinsic evidence. See Id. at 1317. Courts
typically give the words of a claim their “ordinary and customary meaning” as
understood by “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.” Id. at 1312–
13. In construing a term, courts consider the context of what was actually invented
and what the inventor intended the patent claims to cover. Renishaw PLC v.
Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Patent claims
carry a presumption of validity. 35 U.S.C. § 282. So, courts must construe claims
to preserve their validity, absent clear and convincing evidence of invalidity. Id.;
Dana Corp. v. Am. Axle & Mfg., Inc., 279 F.3d 1372, 1376 (Fed. Cir. 2002).
“Claim construction begins with the language of the claims.” Kaneka Corp.
v. Xiamen Kingdomway Group Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015) (citing
Phillips, 415 F.3d at 1312–14). Thus, claim construction begins, and sometimes
ends, with the consideration of intrinsic evidence—which consists of the patent
claims themselves, the specification, and the patent’s prosecution history. Phillips,
415 F.3d at 1314–17. Claim terms must be reviewed in light of the intrinsic
evidence because a “person of ordinary skill in the art is deemed to read the claim
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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. Overall, the focus of claim construction “must begin and remain centered on
the language of the claims themselves” because that is the language that the
patentee chose to specifically lay claim to the invention. Interactive Gift Exp., Inc.
v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).
Patent specifications, which are governed by 35 U.S.C § 112, contain “a
written description of the invention, and of the manner and process of making and
using it.” 35 U.S.C. § 112. The written description “must be clear and complete
enough to enable those of ordinary skill in the art to make and use it.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Section 112
requires that a patent “conclude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the inventor or a joint inventor
regards as the invention.” 35 U.S.C. § 112. The Supreme Court has interpreted
this provision to require that “a patent’s claims, viewed in light of the specification
and prosecution history, inform those skilled in the art about the scope of the
invention with reasonable certainty.” Sonix Tech. Co. v. Publications Int'l, Ltd.,
844 F.3d 1370, 1377 (Fed. Cir. 2017).
The specification is “the single best guide to the meaning of a disputed
term.” Id. For example, “the specification may reveal a special definition given to
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a claim term by the patentee that differs from the meaning it would otherwise
possess,” in which case “the inventor’s lexicography governs.” Phillips, 415 F.3d
at 1316. Or, “the specification may reveal an intentional disclaimer, or disavowal,
of claim scope by the inventor,” in which case “the inventor has dictated the
correct claim scope, and the inventor’s intention, as expressed in the specification,
is regarded as dispositive.” Id.
In addition to the specification, the court “should also consider the patent’s
prosecution history, if it is in evidence,” when construing a patent claim. Id. at
1317 (quotation marks omitted). The prosecution history “consists of the complete
record of the proceedings before the [Patent and Trademark Office] and includes
the prior art cited during the examination of the patent.” Id. However, the Federal
Circuit has cautioned that “because the prosecution history represents an ongoing
negotiation between the PTO and the applicant, rather than the final product of that
negotiation, it often lacks the clarity of the specification and thus is less useful for
claim construction purposes.” Id.
Although it carries less weight than intrinsic evidence, the court also may
rely on extrinsic evidence, which consists of “expert and inventor testimony,
dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317 (quotation marks
omitted). When “considered in the context of the intrinsic evidence,” extrinsic
evidence “can help the court determine what a person of ordinary skill in the art
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would understand claim terms to mean.” Id. at 1319. However, extrinsic evidence
cannot be used where it contradicts the claim meaning as shown by the intrinsic
evidence. Id. at 1324.
To the extent that a party argues that a claim is indefinite, that party must
prove indefiniteness by clear and convincing evidence. Sonix Tech. Co., 844 F.3d
at 1377. While a patent claim must give “clear notice of what is claimed,” “the
Supreme Court has recognized that ‘absolute precision is unattainable.’” Id.
(quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014)). The
law requires only reasonable certainty in patents, according to their subject matter.
Id.
Further, because of the limitations of language and the fact that no patent
can attain absolute precision, the Federal Circuit has rejected the proposition that
“claims involving terms of degree are inherently indefinite”; definiteness does not
require “mathematical precision”—it merely requires the provision of sufficient
certainty to a person of ordinary skill in the art when the claim is read in the
context of the invention. Id. (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 424
F.3d 1374, 1384 (Fed. Cir. 2005)).
III.

Discussion

With these basic legal principles of claim construction in mind, the court
turns to the intrinsic evidence to determine first whether construction of the
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challenged claim terms is required, and, if so, the proper interpretation of the
claim. In making these decisions, the court remembers that the purpose of claim
construction is to help the jury understand the claims of the patents at issue. Much
of the language in the patents at issue falls far short of plain English, with all of its
“saids” and awkwardly constructed lengthy sentences. Nevertheless, the court
does not view the role of the court in claim construction to be rewriting the patent
language, but ensuring that a jury can understand the essence of the patents’
claims.
A. Construction of “Transparent”
The parties spent most of their briefs and their presentations at the Markman
hearing arguing over the meaning of “transparent” and related phrases concerning
the “visual check” of the optical components after the transparent material has
been shrunk around the components but before the transparent material containing
the optical components has been inserted into the outer tube of the endoscope. So,
the court begins the process of construction with the term “transparent.”
1. Is “Transparent” Indefinite?
IMS argues that “transparent” is indefinite and that the intrinsic evidence
provides no method to determine whether the shrinkable material covered by the
patent is “transparent,” as the term is used in the patents. (Doc. 96). More
specifically, IMS argues that the term “transparent” is indefinite because it cannot
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be distinguished from translucent, which the patents do not cover, and because it is
an impermissible term of degree with no means for objective measurement. The
court disagrees on both counts. While the term “transparent” does require
construction in this case, its construction can be established from the evidence
presented—specifically, from the language of the patents themselves.
a. Claim Language
Reading the two patents together in their entirety reveals the inescapable and
undebatable purpose of the method patent (‘945) and the machine patent (‘044): to
allow a visual check of the alignment of optical components before placement in
the outer tube of the endoscope by using a shrinkable material that is transparent.
The language of the claims themselves establishes that the word transparent is
contextually and definitionally tied to its purpose of allowing a visual check
through the sunken material. That relationship as established by the intrinsic
evidence allows a person of ordinary skill in the art to understand the meaning of
“transparent” within the context of the patents and, especially because of the
operative presumption of validity, to avoid a finding of indefiniteness at this stage
of the proceedings. See 35 U.S.C. § 28.
Claim construction begins with the claims, which define the scope of the
patented invention. Kaneka Corp., 790 F.3d at 1304; Phillips, 415 F.3d at 1312.
The claim language of the ‘945 patent uses the term “transparent” and places it in a
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context that establishes its meaning as it relates to the patent as a whole. The
relevant claims of patent ‘945 set forth:
What is claimed is:
1. A method for assembling an endoscope having a tubular shaft, an
optical system having several components, said components of said
optical system are at least partially surrounded by a tube made of
both a transparent and a shrunk material, said method comprising
the following steps
(a) introducing said components into a tube of transparent and
shrinkable material to form a unit,
(b) shrinking said shrinkable material of said tube for fixing the
position of said components contained within said tube relative
to one another,
(c) checking a position of said components relative to one another
through said transparent shrunk material, of said shrunk tube
and
(d) introducing said unit composed of said shrunk tube and said
components therein into said tubular shaft.
2. The method of claim 1, wherein said unit composed of said
components with said transparent shrinkable tube is, prior to
shrinkage, introduced into a retaining device, said unit lying in an
oriented position within said retaining device.
(Doc. 96-1 at 9, column 6, lines 20–42 (Patent ‘945)) (emphasis added). The
claims continue, but the cited claims establish the meaning of transparent within
the context of the patent.
The description in the claim of the specific steps of the patented method,
which includes the use of shrunken transparent material and the performance of a
visual check through the transparent material, creates the necessary inference that
the transparent material allows visualization of the component parts for the
described visual check. The entirety of claim one of the ‘945 patent shows that a
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key element of the invention is being able to check the position of the optical
components through the transparent shrunk material prior to insertion into the
tubular shaft; thus, “transparent” must be read as allowing such a visual check.
The claims of patent ‘044 only reinforce this idea. Much of the language of
the ‘044 patent is substantially similar, if not identical, to the language of the ‘945
patent, but it does contain a few extra provisions. Because the ‘044 patent is a
machine patent, it contains additional claims describing the constructed
endoscopes. Thus, patent ‘044 claims, for example:
1. An endoscope, comprising:
a tubular shaft, having an inside face,
an optical system having several components, said components of
said optical system are contained in an interior of said tubular
shaft,
said components comprising at least two of the following:
a lens, a spacer, a diaphragm, a prism and a filter, said
components directly surrounded by a support piece made of
shrunk material, wherein
said shrunk material is a transparent material,
said support piece made of said transparent material has the shape
of a tube, and
said tube containing said components of said optical system has
been shrunk prior to inserting said tube into said interior of said
tubular shaft, for allowing a visual check of a position of said
components relative to one another, and
a gap located between an outside surface of said tube of shrunk
material and said inside face of said tubular shaft.
2. The endoscope of Claim 1, wherein said components are surrounded
by a single tube made of said transparent material.
(Doc. 96-2 at 9, column 6, lines 28–50 (Patent ‘044)) (emphasis added).

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The language of the ‘044 patent’s first and second claim emphasizes both
the importance of transparence to the invention and the fact that the transparent
shrunk material allows for a visual check of the position of the optical components
of the endoscopes. The language of the claims specifically states that the tube of
transparent material has been shrunk “for allowing a visual check” of the relative
position of the optical components. Further, the language regarding “transparent”
and “visual check” tracks the language of the ‘945 patent and again creates a
necessary implication that someone assembling the endoscope must be able to see
through the shrunken material well enough to allow a visual analysis of the
alignment of the optical components.
b. Specification
The rest of the language of the patents supports the definition of
“transparent” provided by the claims. The abstracts for both the ‘945 patent and
the ‘044 patent illustrate the integral nature of “transparent” in achieving the
invention that KSEA sought to patent. The abstracts state that, for the proposed
invention, the optical components will be “surrounded by a transparent and tubesleeve-shaped shrunk material which has been shrunk before the components are
introduced into the tubular shaft.” (Doc. 96-1 at 2 (Patent ‘945); doc. 96-2 at 2
(Patent ‘044)). This inclusion of the term transparent in the abstracts suggests its

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relative importance to the patents at issue and to the innovation that the patents
seek to protect.
The specification of the ‘945 patent further demonstrates that transparency is
essential to achieving the purpose of the invention. In the ‘945 patent, the
specification states that the “object in respect of an endoscope is achieved by the
fact that the components are surrounded by a transparent and tube-shaped shrunk
material which has been shrunk before the components are introduced into the
tubular shaft.” (Doc. 96-1 at 7, column 1, lines 61–65 (Patent ‘945)). Like the
statement in the abstract, this statement in the specification announces that the fact
that the material of the shrinkable tube is transparent provides the key to achieving
the object of the invention.
The specification also lists discrete steps for achieving the invention:
“introducing the components into a transparent and tube-shaped shrinkable
material to form a unit, shrinking the material to fix the position of the components
relative to one another, checking the position of the components relative to one
another through the transparent shrunk material,” and introducing the tube of
shrunk material containing the components into the tubular shaft. (Id., column 1,
line 67; column 2, lines 1–7 (Patent ‘945)). Thus, the specification, like the claims,
indicates that the ability to see through the tube, as allowed by the use of
transparent material, is integral to the invention because it allows for someone
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assembling the endoscope to visually look at the position of the optical
components in relation to each other to ensure their proper alignment.
The specification of the ‘945 patent further emphasizes that the transparency
of the tube, and the resulting ability to check the alignment of the optical
components, constitutes a large portion of the innovation that forms the basis of the
patent. The specification states that “[w]ith the present invention, it is now
possible to produce a unit composed of the optical components and the tube
outside the endoscope and to check this unit visually. For this purpose, a
transparent shrinkable material is used which in many respects affords advantage
over the opaque materials known from prior art” because “the position of the
components relative to one another can be visually checked at the time the
individual components are introduced into the material before it has been shrunk.”
(Id., column 2, lines 26–34 (Patent ‘945) (emphasis added)). The specification
goes on to say that, after the unit containing the optical components has been
shrunk, “a check can once again be made, namely as to whether the shrinkage has
caused any relative changes to take place.” (Id., lines 42–45).
This part of the specification renders explicit the implications of the claims
themselves. It clearly states that transparent shrinkable material is used for the
explicitly stated purpose of allowing someone to visually check the alignment of
the components before complete assembly of the endoscope. The specification
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language indicates that “transparent” is defined largely by its relationship to the
objective of the invention: the ability to perform a visual alignment check.
Distinguishing the opaque materials in prior art also highlights the fact that the
ability to see through the material and perform the visual check is essential to the
patented invention.
The specification of the ‘945 patent goes even further in emphasizing the
purpose of both the invention and the transparent tube; it states that “[b]y provision
of the transparent material, it is now possible for the first time to perform a visual
check even after the shrinking process [… and] Thus, such a preliminary check can
be made even before the optical system is fitted in the shaft.” (Id., lines 46–51).
The specification reiterates this point in a section entitled “Detailed Description of
Preferred Embodiment,” stating that “[b]y virtue of the transparency of the
material it is possible to check the desired correct fit of these components relative
to one another from the outside, for example to check whether the opposing end
faces of the two rod lenses bear exactly on the spacer.” (Id. at 8, column 4, lines
45–49 (emphasis added) (references to illustration omitted)).
The specification continues to accentuate this point, explaining that “[b]y
virtue of the transparency of the material which is still present even after the
shrinkage, it is possible once again to check, from the outside, the correct fit of the
individual components relative to one another.” (Id. at 9, column 5, lines 16–19
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(Patent ‘945)). Throughout the specification, the term transparent is tied to its
purpose of allowing a visual check, which in turn allows assessment of the
component parts before the assembly of the entire endoscope. Thus, the purpose of
the invention can only be achieved and the patent can only be consistent if the
shrinkable transparent material allows for a visual check of the component parts
and their positions.
The language of the ‘044 patent’s specification is largely identical to that of
the ‘945 patent and contains much of the same relevant language regarding
transparency. (See generally doc. 96-2). However, the ‘044 patent does contain a
few extra provisions. In the specification, the ‘044 patent explicitly states that “[i]t
is an object of the present invention is [sic] to further optimize an endoscope and a
method for assembling components in such a way that, by using shrinkable
materials, it is possible to fix the optical components relative to one another in a
way which can also be checked.” (Doc. 96-2 at 7, column 2, lines 3–7 (Patent
‘044)). As with the rest of the language of the patents, this clear statement of
purpose indicates that one of the primary goals of the patented endoscope is to
allow a visual check of the position of the optical components of an endoscope
through the tube of shrinkable material prior to complete assembly.

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c. Prosecution History
The final piece of intrinsic evidence in this case, the prosecution history,
also provides some information to help understand the meaning of “transparent” to
a person of ordinary skill in the art. As part of an inter partes reexamination of the
patent that is now the ‘044 patent, the PTO found that KSEA could patent an
endoscope using transparent shrunken material that allowed for a visual check, but
that the patent did not extend to an endoscope using “translucent” shrunken
material. (Doc. 96-7 at 5). During the appeals process of the inter partes
reexamination, the PTO Appeal Board addressed the issue of the non-inclusion of
“translucent” in the context of what is now the ‘044 patent. Specifically, the
Appeal Board considered whether proposed patent claims that included
“translucent” could receive the benefit of earlier filings, including the ‘945 patent,
that only mentioned “transparent.” (Doc. 96-8 at 6).
The Appeal Board determined that the ‘945 patent did not contain a written
description of translucent material, so the proposed claims involving translucence
could not receive the benefit of the filing date of the ‘945 patent. (Id. at 11). In
reaching that decision, the Appeal Board noted the contrasting plain meanings of
“transparent” and “translucent.” Specifically, the Appeal Board stated that the
plain meaning of “transparent” was “having the property of transmitting light
without appreciable scattering so that bodies lying beyond are seen clearly,” while
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the plain meaning of “translucent” was “permitting the passage of light; especially:
transmitting and diffusing light so that objects beyond cannot be seen clearly.”
(Id. at 8–9, emphasis in original). Accordingly, the Appeal Board determined that
translucent was not the same as transparent within the context of the patents and
that a person of ordinary skill in the art would not read the ’945 patent to cover
translucent materials. The Appeal Board’s reliance on the understood difference
between transparent and translucent—namely, the clarity of the image on the other
side of the material—reinforces the patent language’s implication that a transparent
material is one that allows a clear enough visualization of component parts to allow
a visual check of their position.
d. Analysis
IMS argues that this court should find that transparent is indefinite because
translucent materials, which the patents do not cover, would also allow a visual
check. (Doc. 96). Even considering the fact that the patents do not include
“translucent,” the court finds that “transparent” is not indefinite.
IMS’s argument regarding translucence simply cannot overcome the
intrinsic evidence in this case. The prosecution history—the least significant piece
of the intrinsic evidence puzzle—is the only part of the intrinsic evidence that
addresses the issue of “translucent” as compared to “transparent.” While the
prosecution history does show that the PTO found that the patents do not
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encompass “translucent” materials, it is equally evident that the PTO viewed
transparent and translucent as distinct and distinguishable concepts. In fact, the
PTO focused on the fact that translucent material diffuses light so that it prevents a
clear visual of the objects on the other side of the material. Under that definition,
translucence has no relevance to the patents at issue because a translucent material
would not allow a clear enough view for a visual check of the component parts.
The PTO’s definition notwithstanding, “translucent” does not create the same
unequivocal implication of visibility that “transparent” does. Therefore, the simple
fact that the patents do not cover “translucent” material does not detract from the
fact that the patents effectively define “transparent” as allowing for the visual
check contemplated by the patented innovation.
IMS also argues that “transparent” is indefinite because it is an
impermissible term of degree, as it contains no objective, quantifiable
measurement for visibility. The Federal Circuit has held that terms of degree are
not inherently indefinite and that nothing requires absolute mathematical precision
in patent language; rather, a patent term is definite if it provides sufficient certainty
to a person of ordinary skill in the art. Sonix Tech. Co., 844 F.3d at 1377. Terms
that fail to provide guidance as to the scope of the claims are indefinite, for
instance, purely subjective terms like “aesthetically pleasing” that depend on

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subjective opinion. Id. By contrast, “transparent” as used in the ‘945 and ‘044
patents is not purely subjective.
The Federal Circuit has stated that whether something “involves what can
be seen by the normal human eye” can provide an objective baseline for claim
interpretation that removes the claim from the realm of pure subjectivity. Id. at
1378; see also Liqwd, Inc. v. L'Oreal USA, Inc., 720 F. App'x 623, 631 (Fed. Cir.
2018) (holding that patent claims requiring “visible inspection” with the human
eye of the effect of hair dye on hair were not indefinite because “persons of
ordinary skill in the art of hair-care products know how to use visual inspection to
determine with reasonable certainty whether a certain ingredient in a product
would actually alter the color of hair”). In this case, “transparent” is more akin to
“visually negligible,” a concept that the Sonix court found not to be indefinite, than
to something purely subjective like “aesthetically pleasing.” See Sonix Tech. Co.,
844 F.3d at 1378.
Transparent within the context of the patents in this case requires the ability
to visually check the alignment of the component parts through the shrinkable
material. The issue in determining transparence, therefore, is almost the same as
the issue in determining “visually negligible” in Sonix: can the human eye see the
component parts clearly enough through the transparent material to check their
alignment. Although this test is performed by the human eye, the necessity of
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being able to check the alignment of the parts provides an “objective baseline” for
the human eye’s determination of what constitutes transparent; the issue of the
transparency of the shrunk material in the patents depends on human perception,
but it does not depend on the “vagaries of any one person’s opinion.” Id. at 1377
(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir.
2005), abrogated by Nautilus, Inc., 572 U.S. 898). Accordingly, the court finds
that the term “transparent” is not an indefinite term of degree.
In summation, the intrinsic evidence shows that “transparent” is not
indefinite at all. The court finds that the intrinsic evidence overwhelmingly
demonstrates that the purpose of the patents is to protect the innovation allowing
for an endoscope assembler to check the alignment of optical components in a tube
before the endoscope is fully assembled. That innovation is achieved by using
transparent material that allows for the visual check of the component parts. The
importance of the transparence of the material to the achievement of the invention
is characterized not only by its continued use in conjunction with the visual check
language, but also by the sheer frequency of the use of the term. Reading the
patents as a whole in light of their purpose, a person of ordinary skill in the art
would understand that the term “transparent” is used so frequently because
transparency is essential to allowing the innovative visual check of the component
parts, and such a person would be able to understand that “transparent” means the
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ability to perform the visual check. Therefore, IMS’s indefiniteness argument
fails.
2. Definition of Transparent
The parties each propose different constructions for “transparent.” IMS
argues that “transparent” should be defined as “not visible.” (Doc. 104 at 2).
KSEA argues that “transparent” should mean “having the property of transmitting
an amount of light that is more than sufficient to permit a visual check
therethrough.” (Id.).
While the court finds that the intrinsic evidence provides a thorough
understanding of the definition of transparent and its definite nature, expert
testimony from Albert Juergens at the Markman hearing provided helpful scientific
background for the court to consider when choosing a correct construction of the
term “transparent.” See Markman, 517 U.S. at 388. Discussing the way that light
travels through materials, Mr. Juergens clarified that no material, including socalled “clear glass,” is completely invisible to the eye or allows for complete light
transmission. Mr. Juergens also testified regarding how a person of ordinary skill
in the art would perform a “visual check” of the component parts in this case by
placing the tube containing the optical components in front of a light source. The
person performing the visual check would then assess the alignment of the

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component parts by looking for bright spots that would indicate improper
alignment of the parts.
Relying on the intrinsic evidence and in part on the expert testimony of Mr.
Juergens, the court finds IMS’s construction of “transparent” overly narrow and
inaccurate. A material need not be invisible or imperceptible to the human eye to
be transparent, especially because perfect transmission of light is impossible.
However, the court also is not convinced of the accuracy or clarity of
KSEA’s proposed construction: “having the property of transmitting an amount of
light that is more than sufficient to permit a visual check therethrough.” (Doc. 104
at 2). The court finds the use of “more sufficient” in KSEA’s proposed
construction confusing and lacking in clarity. Thus, instead of adopting either of
the proposed definitions, the court puts forth its own.
Based on the intrinsic evidence and especially on the language of the patent
claims themselves, the court construes “transparent” to mean “allowing the
transmission of light such that the assembler of an endoscope can visually check
the alignment of the component parts of the endoscope.”
B. Construction of Claims 15 and 23 of Patent ‘044
In addition to arguing that “transparent” is indefinite, IMS also argues that
claims 15 and 23 of the ‘044 patent are indefinite. Claim 15 states “material of the
tube permits a visual check of a position of said components relative to one another
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through the material of the tube;” and Claim 23 states “shrunk material permits
visual inspection of said plurality of components relative to each other through the
shrunk material prior to insertion into said interior of said tubular shaft.” (Doc. 104
at 3).
To support its argument, IMS asserts that the claims do not show “what
constitutes a ‘visual check’ of the components,” describe what level of detail must
be visible, or state how the check must be performed. (Doc. 96 at 24). IMS further
argues that, if the court finds that the claims are not indefinite, the claims should be
construed as meaning “material of the tube is transparent,” and “shrunk material is
transparent,” respectively. KSEA, on the other hand, argues that the claims should
be construed to mean that the material allows a “sufficient amount” of light to pass
through it to perform a visual inspection, a definition that it argues is broader than
“transparent,” as required by the doctrine of claim differentiation. (Doc. 97 at 17–
18).
1. Are the Claims Indefinite?
The court finds that the claims are not indefinite because, like transparent,
the terms “visual check” and “visual inspection” take their meaning from the
context of the patent and a person of ordinary skill in the art would understand the
functional parameters of the requirement. Mr. Juergens’ testimony shows that a
person in the field would understand the necessity of having a light source to look
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through the material to assess the alignment of the component parts. The other
aspects of a visual check or inspection are intuitive based on the claims—an
endoscope assembler must be able to look through the material and perform an
assessment of the alignment of the component parts. Accordingly, the terms visual
check and visual inspection, which appear to form the foundation of IMS’s
indefiniteness argument, provide sufficient certainty regarding the scope of the
claims to allow a person of ordinary skill in the art to understand what was being
patented. See Sonix Tech. Co., 844 F.3d at 1377. Thus, the court finds that the
claims are not indefinite.
2. Definitions of the Claims
The court is not convinced by either of the parties’ proposed constructions of
claims 15 and 23. The court finds that IMS’s proposed construction conflates
different claims by seeking to relocate the term “transparent” into a claim that does
not use that term, in contravention of the principle of claim differentiation. The
doctrine of claim differentiation creates a presumption “that different words used
in different claims result in a difference in meaning and scope for each of the
claims.” Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc., 206 F.3d 1440,
1446 (Fed. Cir. 2000). So, the claims the parties seek to construe, while
inextricably related to “transparent,” should not carry the exact same meaning
when located in a different claim.
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However, the court also finds KSEA’s proposed definition problematic. The
doctrine of claim differentiation cannot be used to broaden a claim beyond what is
indicated in the patent, but “prevents the narrowing of broad claims by reading into
them the limitations of narrower claims.” Id. KSEA’s proposed construction, with
its description of “sufficient” light, not only has the potential to create confusion, it
also has the potential to broaden the claim beyond what is intended by the patent.
Based on the intrinsic language of the patents and keeping the doctrine of
claim differentiation in mind, the court instead construes claim 15 of patent ‘044 to
mean “the material of the tube allows the transmission of light such that the
assembler of an endoscope can observe the position of relevant component optical
parts within the tube;” and claim 23 of the ‘044 patent to mean “the shrunk
material of the tube allows the transmission of light such that the assembler of an
endoscope can observe the position of relevant component optical parts within the
tube prior to insertion into the tubular shaft.”
C. Claims Not Requiring Construction
The parties also seek construction of the term “gap” as it is used in multiple
claims. (Doc. 104 at 4). In context, the term gap refers to a space between the
outside face of the transparent shrunken tube and the inside face of the tubular
shaft. The court finds that the term “gap” needs no construction in this case
because the ordinary meaning of the term is readily apparent even to a lay person.
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See Phillips, 415 F.3d at 1314. The claims, and the use of the term gap, simply
reflect that the shrunken tube must be small enough to be inserted into the tubular
shaft, which necessarily results in some amount of space between the inner and
outer tubes. Accordingly, the term “gap” and the claims using the term “gap” need
no construction by the court.
Finally, IMS seeks construction of various claims describing the particular
series of steps in the endoscope manufacturing process, arguing that the claims
should be reworded for clarity’s sake to make it easier for the jury to understand
the order in which the steps of the process occur. (Doc. 96 at 28–30). KSEA
asserts that no construction is necessary, as IMS merely shuffles the claims around
and adds new words. (Doc. 97 at 28). The court is inclined to agree with KSEA.
The court finds that the “ordinary and customary meaning” of the claims is plain
from their face. See Phillips, 415 F.3d at 1312. Therefore, as stated on the record
during the Markman hearing, the court declines to construe these claims.
IV. CONCLUSION
The court orders that the disputed claims discussed above be construed as set
forth in this Memorandum Opinion. The court will issue a separate Order
consistent with this Opinion.

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DONE and ORDERED this 12th day of March, 2020.

_________________________________
HON. KARON O. BOWDRE
UNITED STATES DISTRICT JUDGE

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