Karl Storz Endoscopy-America, Inc. v. Stryker, Inc. et al

Filing 290

TENTATIVE CLAIM-CONSTRUCTION ORDER AND REQUEST FOR CRITIQUE. Signed by Judge Alsup on May 3, 2011. (whalc1, COURT STAFF) (Filed on 5/3/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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No. C 09-00355 WHA

KARL STORZ ENDOSCOPY-AMERICA, INC.,
Plaintiff,

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For the Northern District of California

United States District Court

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TENTATIVE CLAIMCONSTRUCTION ORDER AND
REQUEST FOR CRITIQUE

v.
STRYKER CORPORATION and STRYKER
COMMUNICATIONS, INC.,

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Defendants.
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AND RELATED COUNTERCLAIMS
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INTRODUCTION

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In this patent infringement action involving surgical equipment management, the parties

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seek construction of six phrases found in the two asserted patents. Those phrases are construed

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below. The parties have until NOON ON MAY 10, 2011, to submit a five-page critique (double-

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spaced, no footnotes, and no attachments) limited to points of critical concern. This is an

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opportunity for the parties to focus solely on their most cogent critique, not to rehash every point

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made in the briefs and at the hearing.

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STATEMENT
The traditional approach to surgery required large incisions. A surgeon would cut an

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opening in the patient’s body large enough to access the site of the procedure. The surgeon then

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performed the operation and viewed the operation site directly through the opening.

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Less invasive surgical techniques developed as alternatives to traditional “open” surgery.

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In particular, advances in endoscopy made “minimally invasive” surgery possible. An endoscope

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was (and remains) a small instrument with a camera and a light source that could be inserted into

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the body through a small incision or hole, enabling surgeons to view the inside of a patient’s body

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without opening the body in the traditional manner. Minimally invasive surgery became

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common, and many surgical instruments were developed for use along with an endoscope in such

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operations. The technology at issue in this action relates to coordinating the use and control of

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such instruments.

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Three patents were asserted in the operative complaint, but the parties recently stipulated
to dismiss one of them (Dkt. Nos. 105, 257). Twenty claims from United States patent

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For the Northern District of California

United States District Court

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No. 5,788,688 and twenty-seven claims from United States patent No. 6,397,286 remain at issue.

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The parties seek construction of six phrases appearing in these patents. Overviews of the patents,

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the disputed phrases, and the associated claims are covered in detail in the analysis below.

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ANALYSIS
Courts must determine the meaning of disputed claim terms from the perspective of one of

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ordinary skill in the pertinent art at the time the patent was filed. Chamberlain Group, Inc. v.

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Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). While claim terms “are generally given their

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ordinary and customary meaning,” the “claims themselves provide substantial guidance as to the

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meaning of particular claim terms.” As such, other claims of the patent can be “valuable sources

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of enlightenment as to the meaning of a claim term.” Critically, a patent’s specification “is

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always highly relevant to the claim construction analysis” as well. Phillips v. AWH Corp.,

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415 F.3d 1303, 1312–15 (Fed. Cir. 2005) (en banc) (internal quotations omitted). Indeed, claims

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“must be read in view of the specification, of which they are a part.” Markman v. Westview

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Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).

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Finally, courts also should consider the patent’s prosecution history, which “can often inform the

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meaning of the claim language by demonstrating how the inventor understood the invention and

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whether the inventor limited the invention in the course of prosecution, making the claim scope

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narrower than it would otherwise be.” These components of the intrinsic record are the primary
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resources in properly construing claim terms. Although courts have discretion to consider

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extrinsic evidence, including dictionaries, scientific treatises, and testimony from experts and

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inventors, such evidence is “less significant than the intrinsic record in determining the legally

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operative meaning of claim language.” Phillips, 415 F.3d at 1317–18 (internal

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quotations omitted).

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Karl Storz Endoscopy-America, Inc. has asserted the same patents that are at issue in this

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action against a different defendant in the Western District of Tennessee. Five of the six phrases

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construed by this order were construed recently in the Tennessee action as well (Dkt. No. 222-1).

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Stryker Corp. and Stryker Communications, Inc. find the Tennessee court’s constructions to be
favorable and lean heavily upon them as “confirm[ing] the correctness of Stryker’s constructions”

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For the Northern District of California

United States District Court

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(Stryker Br. 1). While the reasoning of the Tennessee court may be instructive, it is not binding

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in this action. This order is required to — and does — undertake a full, independent analysis of

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each disputed phrase. See Aircraft Technical Publishers v. Avantext, Inc., No. C 07-4154 (SBA),

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2009 WL 3817944, at *3 (N.D. Cal. Nov. 10, 2009) (Armstrong, J.) (explaining that each district

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court “has an independent obligation to construe the claims in dispute, and to render its own

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independent claim construction”). Moreover, the parties reported at the April 27 hearing that the

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claim construction rulings from the Tennessee court are only tentative, and that because the

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Tennessee action is stayed it is unknown when that court will finalize its constructions.

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While this order acknowledges that the parties have a right to the construction of all

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disputed claim terms by the time the jury instructions are settled, the Court will reserve the

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authority, on its own motion, to modify the constructions in this order if further evidence —

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intrinsic or extrinsic — warrants such a modification. Given that claim construction is not a

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purely legal matter, but is (as the Supreme Court describes it) a “mongrel practice” with

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“evidentiary underpinnings,” it is entirely appropriate for the Court to adjust its construction of

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claims prior to trial if the evidence compels an alternative construction. Markman, 517 U.S.

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at 378, 390. The parties should be aware, however, that they are not invited to ask for

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reconsideration of the constructions herein. Motions for reconsideration may be made only in

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strict accordance with the rules of procedure, if at all.
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THE ’688 PATENT

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The ’688 patent, entitled “Surgeon’s Command and Control,” was issued on

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August 4, 1998. Bauer Laboratories, Inc. was the assignee of the ’688 patent at the time of issue.

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KSEA claims to now own the entire right, title, and interest in this patent (Sec. Amd.

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Compl. ¶ 13). Twenty claims from the ’688 patent are asserted in this litigation: independent

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claims 1 and 10, and dependent claims 2–9 and 11–20. Four of the phrases construed by this

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order are found in the ’688 patent. They are italicized in the claims below.

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Claim 1 covers the following apparatus (cols. 19:39–20:10):

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For the Northern District of California

United States District Court

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In an endoscopic operating environment defining a
surgeon’s operating station at which a surgical procedure is
performed with a plurality of self-contained independently and
simultaneously operable pieces of surgical equipment, each
including a surgical control head located at a non-sterile area
remote from the surgeon’s operating station and associated devices
developing an output in response to commands manually entered
directly at the surgical control head for driving an associated
surgical instrument located at the surgeons [sic] operating station,
a surgeon’s command and control system comprising:

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a surgeon’s control panel operatively positioned at the
surgeon’s operating station, the surgeon’s control panel
including display means for displaying data relating to
status of each of the plurality of self-contained pieces of
surgical equipment and input means for receiving
commands entered manually;
a plurality of communication interface circuits, one for
each of said plurality of self-contained pieces of surgical
equipment, each for transmitting data representing status of
the associated surgical control head and for receiving
remote commands for driving the associated self-contained
surgical instrument; and

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a central controller operatively connected to each said
communication interface circuit and said surgeon’s control
panel, said central controller transmitting to said plurality
of self-contained pieces of surgical equipment commands
entered manually on the surgeon’s control panel and
transmitting to said surgeon’s control panel status of the
surgical control heads for display on said display means to
provide a surgeon direct command and control of the
plurality of self-contained pieces of surgical equipment
located in the non-sterile area remote from the surgeon’s
operating station,

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whereby each of the plurality of self-contained pieces of
surgical equipment can be simultaneously operated with
the operation thereof controlled and monitored from the
surgeon’s operating station.

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Claims 10 covers a similar apparatus (cols. 20:47–21:19):
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A surgical control system, comprising:

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For the Northern District of California

United States District Court

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a surgeon’s operating station at which a surgical
procedure is performed;
first and second self-contained and simultaneously operable
pieces of surgical equipment each for performing a surgical
procedure and including a surgical control head located at
an area remote from the surgeon’s operating station and
associated devices developing a variable output for driving
an associated surgical instrument located at the surgeons
[sic] operating station, each self-contained piece of surgical
equipment including means for producing a signal
indicative of the output to each surgical instrument and
means for receiving a variable control signal, the output
varying in response to variations of the control signal;
first and second communication interface circuits for
transmitting data representing status of the surgical control
heads and for receiving remote commands for driving each
of the self-contained surgical instruments;

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a surgeon’s control panel operatively positioned at the
surgeon’s operating station, the control panel including a
display means for displaying data relating to the output to
each of the surgical instruments and input means for
receiving commands entered manually;

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a central controller operatively connected to said
communication interface circuits and said surgeon’s control
panel, said central controller developing and transmitting to
each said self-contained piece of surgical equipment the
variable control signal from commands entered manually
on the surgeon’s control panel and transmitting to said
surgeon’s control panel data relating to the output of each
of the surgical instruments for display on said display
means to provide a surgeon direct command and control of
the self-contained pieces of surgical equipment located in
the non-sterile area remote from the surgeon’s operating
station,
whereby each of the plurality of self-contained pieces of
surgical equipment can be simultaneously operated with
the operation thereof controlled and monitored from the
surgeon’s operating station.

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The growing number of advanced instruments required to perform minimally invasive

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surgery “result[ed] in a tangle of cords and a conglomeration of equipment to be both monitored

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and controlled during the course of an operation.” The patent further explained: “What should be

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a serene environment to promote concentration by the surgeon and the support staff bec[ame] a

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crowded, disorganized theater with a multitude of buzzers, beeps and flashing lights enveloping

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the surgical team and patient.” (col. 2:1–14).

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Each instrument used by the surgeon was connected to a “control head,” which “typically

monitored inputs, and a series of buttons and switches for varying the output which drives the

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surgical instrument” (col. 1:60–64). As more and more instruments were relied on in surgical

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For the Northern District of California

include[d] a visual display panel for displaying output parameters of the equipment as well as

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United States District Court

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procedures, operating rooms became more and more cluttered with equipment, and the control

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heads had to be placed further away from the patient and surgeon (col. 2:1–6). This scattering of

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equipment required division of the surgeon’s attention, and it also limited the surgeon’s control

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over the equipment; verbal instructions were relayed to support staff who managed the control

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heads for the surgical instruments. The surgeon’s inability to directly monitor and control the

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surgical equipment posed safety risks (col. 2:32–47).

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The invention disclosed in the ’688 patent assuaged these safety risks by consolidating the

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functions of the various instruments’ control heads into one device. At the technology tutorial,

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KSEA explained that one of the inventors of the ’688 patent, James Bauer, was both a surgeon

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and a jet pilot. Bauer observed that the cockpit of an airplane displays status information and

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provides input controls relating to many different aviation instruments and plane features at once,

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allowing the pilot to monitor and control many different instruments from the pilot seat. The

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invention of the ’688 patent provided a similar solution for surgeons. Figure 1 from the patent

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depicts a surgeon performing a surgical procedure using a surgical command and control system

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according to the invention (col. 5:47–79):

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Figure 1 from the ’688 Patent:
Use of a Surgical Command and Control System

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For the Northern District of California

United States District Court

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In Figure 1, the surgeon wields several instruments, each of which is connected to a control head.
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All the control heads are connected to a central equipment control unit (66), which in turn is
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connected to a surgeon’s command and control system (40), with a surgeon’s control panel (70)
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located “proximate the surgeon’s operating station” (cols. 6:26–7:37). Figure 4 depicts the
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surgeon’s control panel in greater detail (col. 5:56–57):
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Figure 4 from the ’688 Patent:
A Surgeon’s Control Panel

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For the Northern District of California

United States District Court

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The surgeon’s control panel includes a switch matrix and data display relating to each piece of
surgical equipment connected through the command and control system (col. 8:49–52).
A.

“a surgeon’s operating station at which
a surgical procedure is performed”

The parties dispute the phrase “a surgeon’s operating station at which a surgical procedure

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is performed.” The parties interpret the phrase differently, but only Stryker seeks a construction.

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The parties’ proposed constructions are shown below.

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KSEA’S PROPOSED
CONSTRUCTION

STRYKER’S PROPOSED
CONSTRUCTION

“one or more locations within an
operating environment at which a
member of the surgeon’s team controls
surgical equipment”

“the place within the sterile field of an
operating room where the surgeon and
more than one surgical instrument are
located for conducting a
surgical procedure”

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The construction of this term is relevant to the parties’ infringement arguments. The proposed
constructions are vastly different. The parties disagree on each of the following points:
(1) whether the phrase should be limited to one location as opposed to multiple locations;
(2) whether the location(s) referenced depend on the surgeon only as opposed to the surgical
team; (3) whether the location(s) are within the sterile field; (4) whether the location(s) include

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equipment or instruments; and (5) how many items of equipment or instruments are included.

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The intrinsic evidence answers all of these questions, but the construction of the disputed phrase

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need not do so. The phrase “a surgeon’s operating station at which a surgical procedure is

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performed” is relatively straightforward and could be understood by a juror without much of the

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additional detail the parties propose to add.

location — “a surgeon’s operating station.” The noun “station” is singular, not plural. Thus, “a

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surgeon’s operating station” is a single location. It is the location “at which a surgical procedure

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is performed.” The surrounding claim language confirms this interpretation. Various items are

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described as being “positioned at the surgeon’s operating station,” “located at the surgeons [sic]

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For the Northern District of California

The plain language of the disputed phrase itself indicates that it refers to a single

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United States District Court

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operating station,” or “located at a non-sterile area remote from the surgeon’s operating station”

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in the asserted claims (e.g., col. 19:44–52). These descriptions treat the surgeon’s operating

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station as a single location relative to which other locations may be defined. The specification

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follows suit, for example describing an area “proximate to a surgeon’s operating station” as well

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as using the locational references already quoted from the claims (col. 1:66). The disputed phrase

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refers to a single location.

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KSEA’s argument to the contrary is unpersuasive. KSEA focuses on claim language

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stating that the “surgical procedure” performed at the surgeon’s operating station “is performed

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with a plurality of . . . pieces of surgical equipment” (col. 19:39–42). Because the equipment

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includes control heads and other components scattered about the operating room, KSEA would

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broaden the definition of “a surgeon’s operating station” to include any location at which any

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component of surgical equipment could be controlled (KSEA Br. 5). This argument fails for

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several reasons, two of which deserve mention. First, KSEA admits that each piece of surgical

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equipment includes an instrument to be used in or on the patient (id. 4–5). Because the

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instrument is part of the piece of equipment, a surgeon could use “a plurality of . . . pieces of

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surgical equipment” simply by using a plurality of instruments on the patient — without touching

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any other equipment component located elsewhere. Second, a construction of “surgeon’s

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operating station” that included every location at which a component of surgical equipment is
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located would contradict the claim language. The claim states that the control heads for the

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pieces of surgical equipment are “located at a non-sterile area remote from the surgeon’s

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operating station” (19:44–45) (emphasis added). Thus, at least the control-head portion of the

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equipment is located in an area explicitly defined not to be part of the surgeon’s operating station.

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Having determined that the disputed phrase refers to a single location, this order further

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finds that the location is defined relative to the surgeon. Again, the plain claim language compels

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this conclusion, and the specification provides ample support. The claims specify “a surgeon’s

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operating station” (emphasis added), not “a surgical team’s operating station.” The specification

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explains that the invention “unifies the various pieces of equipment currently found in an
endoscopic surgical suite into a surgeon-centered system (col. 19:32–34) (emphasis added).

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For the Northern District of California

United States District Court

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Indeed, the invention is called “surgeon’s command and control,” and its goal is “provid[ing] a

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surgeon direct command and control of various surgical equipment devices in an operating room,

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offering to the surgeon heightened situational awareness and command of the surgical procedure”

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(col. 2:53–57) (emphasis added). These statements focus on a single surgeon, explaining that the

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invention consolidates equipment control functions to the location of that surgeon. The

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specification contrasts this arrangement with the prior art practice under which “a surgeon cannot

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efficiently monitor the output settings of the various control units” and “when a surgeon deems an

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adjustment of the output settings is required, the instructions must be relayed to support staff

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outside of the sterile field to actually adjust the equipment” (col. 2:32–39). The point of the

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invention is bringing all the equipment input and output interfaces to the surgeon who is

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performing the surgical procedure.

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KSEA argues that the term “surgeon’s operating station” simply reflects that a surgeon “is

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in charge” and “does not mean that only a surgeon works there” (KSEA Br. 5). For example, the

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summary of the invention mentions “allowing the surgeon and assistant to make equipment

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adjustments,” references “[a] team member making device adjustments,” and explains that “[t]he

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surgeon and entire staff is informed of equipment setting changes” (col. 4:42–43, 52, 56–57).

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This order recognizes the possibility that other members of the surgical team periodically may

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perform tasks at the surgeon’s operating station. That observation, however, does not justify a
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finding that the surgeon’s operating station encompasses every location ever occupied by a

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member of the surgeon’s team. On the contrary, the surgeon’s operating station is limited to one

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location, and that location is defined relative to the surgeon. KSEA cites additional references to

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teamwork in the detailed description of the invention. In one possible embodiment, “mounting

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options provide ready access to the surgical team,” and the system generally “provid[es] direct

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command and control of operating procedures by the surgical team” (cols. 7:35–37). This

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language does not address the location of the surgeon’s operating station, and the fact that one

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embodiment may be team-oriented does not limit the scope of the claims.

sterile field, this order declines to read such a requirement into the disputed phrase at this time,

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For the Northern District of California

Turning to the question of whether the surgeon’s operating station is located within the

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United States District Court

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but leaves open the possibility of doing so in the future and the possibility that this will simply be

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a fact issue for the jury. After the intrinsic evidence is supplemented with expert testimony at

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trial, it may become clear that a person of ordinary skill in the art would have understood a

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surgeon’s operating station as something that must be located within a sterile field. On the

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present record, however, the undersigned judge is not yet convinced that the disputed phrase

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should be construed to include a sterility limitation.

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The phrase itself does not contain any words referring to sterility or non-sterility. The

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only information the claims provide about the surgeon’s operating station is that it is the location

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“at which a surgical procedure is performed with a plurality of self-contained independently and

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simultaneously operable pieces of surgical equipment” (col. 19:40–42). The only information the

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claims provide about sterility is that each piece of surgical equipment “includ[es] a surgical

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control head located at a non-sterile area remote from the surgeon’s operating station”

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(col. 19:43–44). Contrary to Stryker’s arguments, the fact that an area remote from the surgeon’s

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operating station is non-sterile does not imply that the surgeon’s operating station is sterile. The

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claim language therefore does not support limiting the surgeon’s operating station to being

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contained within a sterile field.

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The specification also contains no clear indication that the applicants intended to claim
such a limitation. The background section references “the sterile field in which the actual
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surgical procedure is conducted” and states that “[t]he surgical instruments are positioned within

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the sterile field proximate to a surgeon’s operating station from which the procedure is

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performed” (col. 1:41–42, 65–67). The most that can be inferred from these statements is that,

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under the prior art, the instruments were in the sterile field, and the procedure was performed in

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the sterile field. Because the instruments were proximate to the surgeon’s operating station, and

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the procedure was performed from the surgeon’s operating station, the operating station itself was

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not necessarily included in the sterile field. Stated in practical terms, the surgeon may have stood

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in a non-sterile area constituting the surgeon’s operating station but reached into the sterile field

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in order to wield the instruments and perform the procedure. With two exceptions, all of the
specification language Stryker cites follows the language quoted above in that it identifies

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For the Northern District of California

United States District Court

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something other than the surgeon’s operating station, but not the surgeon’s operating station

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itself, as being located inside the sterile field (Stryker Br. 11). Stryker’s resort to the prosecution

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history has the same problem. Stryker cites a request for reconsideration describing the invention

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to include “a sterile control panel located at the surgeon’s operating station” (Bateman Exh. G

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at 1–2) (emphasis added). A green car could be parked at the library. That would not mean that

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the car is in the library nor that the library is green.

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As noted, however, Stryker presents two items of evidence that escape this logical fallacy.

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This evidence deserves pause. It does not compel the conclusion that the claimed “surgeon’s

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operating station” must be sterile, but it nonetheless is instructive. In light of this evidence,

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this order declines to hold at this time that the surgeon’s operating station may include

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non-sterile portions.

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Stryker’s first instructive item of evidence comes from the detailed description of the

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invention. There, the specification explains that Figure 1 depicts an embodiment in which “[t]he

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surgeon’s operating station 32 is located within a sterile field, shown surrounded in dashed line in

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FIG. 1” (col. 6:31–33). This description of a single embodiment, by itself, is not sufficient to

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justify reading a sterility limitation into the claims. Liebel-Flarsheim Co. v. Medrad Inc.,

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358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a single

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embodiment, the claims of the patent will not be read restrictively unless the patentee has
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demonstrated a clear intention to limit the claim scope using words or expressions of manifest

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exclusion or restriction.”). It does, however, make some progress in that direction. That the

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preferred embodiment locates the surgeon’s operating station within the sterile field suggests that

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a person of ordinary skill in the art might recognize the surgeon’s operating station as a smaller

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zone within a larger sterile field.

background section: “The surgical team, including surgeons, assistants and supporting nursing

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staff, must stand within this sterile field and comply with strict ‘sterile procedures’ to insure that

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the patient does not become infected as a result of the surgery” (col. 1:42–46). This statement

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describes the prior art, and there is no clear indication that it was intended to limit the claimed

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For the Northern District of California

The second specification statement that weighs in Stryker’s favor comes from the

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United States District Court

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invention. On the other hand, however, it describes generally the field within which the invention

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was made. A a person of ordinary skill in the art therefore might understand the invention as

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something to be practiced in a context requiring that the surgeon’s operating station be located

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within a sterile field.

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The present record is inconclusive on the question of sterility. This order will not now

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read a sterility limitation into the disputed phrase, but it also will not decree that a surgeon’s

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operating station may include non-sterile areas. For the time being, the question will be left open.

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This aspect of the construction may be revisited before the jury instructions are finalized.

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The parties’ last disagreement regarding this first disputed phrase addresses the number

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and location of surgical instruments or pieces of equipment with respect to the surgeon’s

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operating station. On these points the claim language is relatively straightforward and could be

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understood by a jury without further elaboration. Specifically, the claim language explains that a

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surgical procedure is performed at a surgeon’s operating station, that the procedure is performed

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with pieces of surgical equipment, and that each piece of equipment includes a surgical

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instrument located at the surgeon’s operating station, as well as other components located

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elsewhere (col. 19:39–49). The specification language is consistent with these descriptions and

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further indicates that the instruments are used to deliver physical effects to the patient (e.g.,

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col. 1:37–38). The parties’ attempts to define the location of the surgeon’s operating station
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relative to the surgical equipment or instruments strain beyond the scope of the disputed phrase

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and contradict the claim language. They are accordingly rejected.

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In light of the foregoing, the phrase “a surgeon’s operating station at which a surgical

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procedure is performed” shall be construed to mean “the location a surgeon occupies while using

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surgical instruments to perform a surgical procedure on a patient,” at least for th time being.1

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B.

“a surgeon’s control panel operatively positioned
at the surgeon’s operating station”

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The parties dispute the phrase “a surgeon’s control panel operatively positioned at the
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surgeon’s operating station.” Again, they interpret the phrase differently, but only Stryker seeks a
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construction. The parties’ proposed constructions are shown below.
KSEA’S PROPOSED
CONSTRUCTION

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For the Northern District of California

United States District Court

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STRYKER’S PROPOSED
CONSTRUCTION

“ a control panel operable from the
surgeon’s operating station”

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“a panel for the surgeon that is
positioned within the sterile field such
that the surgeon can directly operate
the panel from the surgeon’s operating
station by manually entering
commands on the panel and by
directly viewing data displays on
the panel”

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The parties’ main dispute regarding this phrase is whether the control panel must be within the

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sterile field, i.e., sterile. They also dispute whether “operatively positioned at the surgeon’s

19

operating station” refers to certain uses by the surgeon. The construction of this phrase is relevant

20

to the parties’ infringement arguments.
This order finds that “a surgeon’s control panel” need not be sterile, sterilized, or within

21
22

the sterile field. The plain language of independent claims 1 and 10 simply does not include any

23

such requirement. Dependent claims 9 and 18, on the other hand, add the limitation “wherein

24

said control panel comprises a control panel that is sterilized to avoid transfer of microorganisms

25
1

26
27
28

The Tennessee court construed “surgeon’s operating station” as the “place within the sterile area of
the operating environment where the surgeon and the surgical instruments are located during a surgical
procedure” (Dkt. No. 222-1 at 11). Unlike the Tennessee construction, this order does not require the surgeon’s
operating station to be located within the sterile field and does not incorporate the presence of surgical
instruments into the construction. Although this order declines to read a sterility limitation into the disputed
phrase at this time, it does not foreclose the possibility of doing so in the future and it does not hold that a
surgeon’s operating station may include non-sterile areas.

14

1

from the control panel to a user” (cols. 20:44–46, 22:10–13). The doctrine of claim

2

differentiation thus requires the inference that the “surgeon’s control panel” disclosed in claims 1

3

and 10 is not sterilized. Phillips, 415 F.3d at 1315 (“[A] dependent claim that adds a particular

4

limitation gives rise to a presumption that the limitation in question is not present in the

5

independent claim.”).

6

Stryker nonetheless attempts to split hairs, arguing that the term “sterilized” in the

7

dependent claims refers only to a particular process for making an object sterile. According to

8

Stryker, the control panel of claim 1 could be “sterile” and “within the sterile field” without

9

having been “sterilized” because “claim 1 allows the panel to be protected in other ways, such as
covering it with a surgical drape” (Stryker Resp. Br. 12). Stryker’s attempt to distinguish

11
For the Northern District of California

United States District Court

10

between “sterile” and “sterilized” runs afoul of the prosecution history. In response to the

12

rejection of claim 9 as indefinite, the applicants stated that claim 9 “depends from claim 1 and . . .

13

further adds the limitation that the panel is a sterile control panel” (Bateman Exh. G at 2)

14

(emphasis added). Thus, the applicants used the terms “sterile” and “sterilized” interchangeably,

15

and characterized the control panel in dependent claim 9 as differing from the control panel in

16

independent claim 1 in that the former must be “sterile.”

17

Accordingly, the “surgeon’s control panel” of the independent claims need not be sterile

18

and need not be within the sterile field as Stryker suggests. The drawings and specification

19

describe a preferred embodiment of the invention in which the control panel is a “sterile control

20

panel” (e.g., col. 8:49–50). The observation that the panel may be sterile, however, does not

21

mean that the panel must be sterile in order to practice the claimed invention. In light of the

22

foregoing discussion of the claims themselves, a sterility limitation will not be read from the

23

specification into the disputed phrase.

24

Turning to the second part of the disputed phrase, the parties disagree whether

25

“operatively positioned at the surgeon’s operating station” requires that the surgeon be able to use

26

the control panel in certain ways. As discussed with respect to the “surgeon’s operating station”

27

phrase construed above, the goal of the invention is to provide a surgeon direct command and

28

control of the surgical equipment from his or her operating station. The claim language itself
15

1

repeats that the purpose of the input and output means on the surgeon’s control panel is “to

2

provide a surgeon direct command and control of the plurality of self-contained pieces of surgical

3

equipment located in the non-sterile area remote from the surgeon’s operating station”

4

(col. 20:3–6) (emphasis added). CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1160

5

(Fed. Cir. 1997) (“In construing claims, the problem the inventor was attempting to solve, as

6

discerned from the specification and the prosecution history, is a relevant consideration.”).

7

The phrase “operatively positioned at the surgeon’s operating station” serves this goal by

8

locating the control panel close enough to the surgeon that the surgeon can use it without leaving

9

his or her operating station. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1306 (Fed. Cir. 2005) (noting that the term “operatively” is used to describe the

11
For the Northern District of California

United States District Court

10

functional relationship between claimed components). KSEA argues that other members of the

12

surgical team besides the surgeon may operate the surgeon’s command and control panel, citing

13

specification language that references a broader goal of “providing direct command and control of

14

operating procedures by the surgical team” (col. 6:43–44). That may be so, but it does not change

15

the foregoing analysis. The crucial requirement is that the surgeon’s control panel must be

16

positioned such that the surgeon can use it directly from his or her operating station. The

17

observation that other members of the surgical team also may use the control panel is irrelevant.

18

The claim language describes the surgeon’s control panel has having two types of

19

functionality: (1) a “display means for displaying data relating to status of each of the plurality of

20

self-contained pieces of surgical equipment,” and (2) an “input means for receiving commands

21

entered manually” (col. 19:51–56). The specification matches this description. Thus, the direct

22

use or operation of the surgeon’s control panel would require (1) viewing the data displayed on

23

the display means, and (2) manually entering commands through the input means. A control

24

panel “operatively positioned at the surgeon’s operating station” such that the surgeon is able to

25

make full use of the control panel would have to be close enough to the surgeon to enable the

26

surgeon to perform both of those functions without leaving his or her operating station.

27

Based on the foregoing considerations, the phrase “a surgeon’s control panel operatively

28

positioned at the surgeon’s operating station.” shall be construed to mean “a panel that a surgeon
16

1

can use directly both to view data and to enter commands manually without leaving the surgeon’s

2

operating station.”2

3
4
5
6
7
8
9

C.

“input means for receiving commands entered manually”

The parties dispute the means-plus-function limitation “input means for receiving
commands entered manually.” The parties’ proposed constructions are shown below.
KSEA’S PROPOSED
CONSTRUCTION

STRYKER’S PROPOSED
CONSTRUCTION

“a switch matrix, and equivalents
thereof, for receiving commands
entered manually”

“a membrane switch with a switch
matrix, the switch matrix being
associated with a number of raised
switches, buttons or keys that can be
depressed by the surgeon”

11
For the Northern District of California

United States District Court

10

The construction of this phrase is relevant to the parties’ infringement arguments; Stryker seeks

12

to lard up the construction with requirements that would exclude its accused products. For

13

example, Stryker’s proposed construction requires “raised switches, buttons or keys that can be

14

depressed,” whereas their accused products employ smooth touch-screen panels without any such

15

raised switches, buttons, or keys. Stryker, however, fails to provide adequate support for reading

16

any of the detailed requirements it proposes into the patent claims.

17

Means-plus-function claim limitations are “construed to cover the corresponding

18

structure, material, or acts described in the specification and equivalents thereof” for performing

19

the recited function. 35 U.S.C. 112 ¶ 6. To construe such a limitation, a court first must identify

20

the claimed function and then must identify the recited structure in the specification that is

21

capable of performing the recited function. A means-plus-function claim limitation does not

22

include elements that are not necessary for performing the recited function. Micro Chem., Inc. v.

23

Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).

24

Here, the parties agree that the claimed function is “receiving commands entered

25

manually.” With respect to identifying the structure that corresponds to this function, however,

26
27
28

2
The Tennessee court construed “operatively positioned at the surgeon’s operating station” as
“positioned at the surgeon’s operating station within reach and view of the surgeon to allow control and
monitoring of the pieces of surgical equipment” (Dkt. No. 222-1 at 14). The construction adopted by this order
is not meaningfully different.

17

1

the parties’ views diverge. KSEA points to “a switch matrix,” whereas Stryker identifies “a

2

membrane switch with a switch matrix” and additionally would require the switch matrix to be

3

“associated with a number of raised switches, buttons or keys that can be depressed by the

4

surgeon.” KSEA has the better arguments.

5

The claims themselves do not specify a structure for “receiving commands entered

6

manually.” The specification must be consulted. The detailed description of the invention

7

describes two features of the surgeon’s control panel: “a switch matrix” and “panel displays”

8

(col. 8:51–52). As explained in construing the “surgeon’s control panel” phrase above, the

9

surgeon’s control panel has two types of functionality. The two panel features map onto the two
panel functions: the switch matrix performs the function of “receiving commands entered

11
For the Northern District of California

United States District Court

10

manually,” and the panel displays perform the function of “displaying data.” No other structure

12

besides the switch matrix is disclosed for performing the function of receiving commands

13

entered manually.

14

Stryker’s attempts to deviate from this analysis are misguided. First, Stryker identifies “a

15

membrane switch with a switch matrix” rather than simply “a switch matrix” as the structure

16

corresponding to the function of receiving commands. The specification describes membrane

17

technology as a way to produce a sealed unit that can undergo sterilization (cols. 8:67–9:3). This

18

function has nothing to do with “receiving commands.” Membrane technology does not belong

19

in the construction of the disputed term. Further, the construction “a switch with a switch matrix”

20

is nonsensical in the context of the ’688 patent. Stryker cites a portion of the specification stating

21

that “[a] membrane switch and display panel 124 includes the switch matrix 112 and

22

displays 114” (col. 8:65–67). Thus, a membrane switch-and-display panel includes both (1) a

23

switch matrix, and (2) displays. It is the panel, not a “membrane switch,” that includes the switch

24

matrix. Stryker’s construction contradicts the grammar of this sentence and describes a switch

25

that itself includes a matrix of other switches — something that the claims and specification of the

26

’688 patent neither disclose nor require.

27
28

Second, Stryker attempts to add the requirement of “a number of raised switches, buttons
or keys that can be depressed by the surgeon.” Stryker emphasizes that the specification only
18

1

discloses embodiments of the invention that use such raised devices to receive manually-entered

2

commands (Stryker Br. 16). There is, however, no indication that such raised devices are the only

3

way a switch matrix could be operated. Indeed, the Federal Circuit has cautioned district courts

4

against inferring unstated claim requirements from the fact that only one type of embodiment is

5

disclosed in the specification. Liebel-Flarsheim, 358 F.3d at 906. The ’688 patent teaches that

6

the only structure needed for receiving commands is “a switch matrix,” which may be embodied

7

with raised buttons. Stryker’s transparent attempt to escape infringement by reading a raised-

8

button requirement into the claims is not supported by the specification.

9

KSEA’s proposed construction will be adopted, because it accurately applies the
governing law to the intrinsic evidence. Accordingly, the phrase “input means for receiving

11
For the Northern District of California

United States District Court

10

commands entered manually” shall be construed to mean “a switch matrix, and equivalents

12

thereof, for receiving commands entered manually.”3

13
14
15

D.

“whereby each of the plurality of self-contained pieces of surgical
equipment can be simultaneously operated with the operation thereof
controlled and monitored from the surgeon’s operating station”

The parties dispute the phrase “whereby each of the plurality of self-contained pieces of

16

surgical equipment can be simultaneously operated with the operation thereof controlled and

17

monitored from the surgeon’s operating station.” The parties interpret the phrase differently, but

18

only Stryker seeks a construction. The parties’ proposed constructions are shown below.

19
20
21
22
23
24

KSEA’S PROPOSED
CONSTRUCTION

STRYKER’S PROPOSED
CONSTRUCTION

“(1) each of the two or more selfcontained pieces of surgical equipment
can be operated at the same time, and
(2) the operation of a self-contained
piece of surgical equipment can be
controlled and monitored from the
surgeon’s operation station”

“each piece of self-contained surgical
equipment can be controlled and
monitored at the same time from the
surgeon’s operating station through
the surgeon’s control panel”

25
26
27
28

3
The Tennessee court construed “input means” as disclosing a “switch matrix associated with a number
of physically manipulable switches, keys or buttons for receiving manually entered commands, which performs
the function of receiving commands entered manually” (Dkt. No. 222-1 at 23). This order agrees that the
relevant function is receiving commands entered manually and that the corresponding structure is a switch
matrix, but the construction adopted here does not require physically manipulable switches, keys, or buttons.

19

1

The construction of this phrase is relevant both to the parties’ infringement arguments and to their

2

invalidity arguments. The parties’ main dispute concerns whether the phrase requires the

3

capacity to control and monitor multiple pieces of equipment at once. The touch-screen panels on

4

Stryker’s accused products display data and controls for only one piece of equipment at a time, so

5

an affirmative answer to this question would help Stryker escape an infringement read

6

(Stryker Br. 10). Additionally, the parties dispute whether the control and monitoring must be

7

done through the surgeon’s control panel.

8

Turning first to the question whether the control and monitoring must be done through the

drafted to disclose “a surgeon’s command and control system comprising: a surgeon’s control

11
For the Northern District of California

surgeon’s control panel, this order declines to add Stryker’s proposed limitation. Claim 1 was

10

United States District Court

9

panel . . . ; a plurality of communication interface circuits . . . ; and a central controller . . . ,

12

whereby each of the plurality of self-contained pieces of surgical equipment can be

13

simultaneously operated with the operation thereof controlled and monitored . . .”

14

(cols. 19:49–20:9). Claim 10 has a similar structure. Thus, the “whereby” clause refers to “a

15

surgeon’s command and control system,” which is made up of a control panel, communication

16

interface circuits, and a central controller. The entire command and control system is what makes

17

the monitoring and control in the “whereby” clause possible. Limiting that monitoring and

18

control to the surgeon’s control panel, which is only one of three components of the command

19

and control system, would be improper.

20

Stryker emphasizes the claim language “controlled and monitored from the surgeon’s

21

operating station” and argues that the “surgeon’s control panel operatively positioned at the

22

surgeon’s operating station” is the only recited element that a surgeon could use to control and

23

monitor the equipment “from the surgeon’s operating station” (Stryker Br. 7). This order partially

24

agrees. The control panel is the only element that the surgeon would use directly, but the surgeon

25

would be relying on the entire command and control system (including the communication

26

interface circuits and central controller as well as the control panel) in order to control and

27

monitor the surgical equipment from the surgeon’s operating station. The fact that the control

28
20

1

panel is the only element the surgeon would use directly is irrelevant to the disputed phrase and

2

would add confusion rather than clarity to its construction.

3

Turning next to the question of simultaneous control and monitoring, Stryker’s position

dispute about this aspect of the phrase. Each of these words merits close attention. First, the

6

word “with” is significant. KSEA reads the disputed phrase to set forth two “independent”

7

requirements. Not so. The word “with” connects the first and section portions of the phrase by

8

grouping them together into a joint requirement rather than two independent ones. This order,

9

however, does not go so far as to agree with Stryker that “with” translates to “at the same time.”

10

Second, the words “the operation” refer to the simultaneous operation described in the first part of

11
For the Northern District of California

fares somewhat better. The words “with the operation thereof” are at the heart of the parties’

5

United States District Court

4

the phrase. The adverb “simultaneously” modifies the verb “operated,” and there is no other

12

antecedent operation. Third, the word “thereof” refers to “each of the plurality of self-contained

13

pieces of surgical equipment.” The simultaneous operation is of “each of the . . . pieces of

14

surgical equipment.” Thus, the disputed phrase refers to the monitoring and control of the

15

simultaneous operation of multiple pieces of surgical equipment.

16

Stryker cites the prosecution history of the ’688 patent to support its argument that the

17

simultaneous control and monitoring of multiple items of equipment (as opposed to the control

18

and monitoring of simultaneous operation of the equipment) is required (Stryker Br. 8–9).

19

Stryker first relies on the applicants’ statement that “a good portion of the application is directed

20

to the ability of a surgeon to simultaneously control and monitor multiple self-contained pieces of

21

surgical equipment from a central location” (Bateman Exh. E at 7). This statement is too general

22

to override the foregoing analysis of the specific claim language. Stryker also notes that the

23

disputed phrase was added by amendment after claim 1 was rejected as anticipated by a prior art

24

reference (see Bateman Exh. C–E; Aldrich Exh. H). Stryker, however, cites no evidence that

25

simultaneous control and monitoring of equipment (as opposed to control and monitoring of

26

simultaneous operation of the equipment) was understood by the examiner or the applicants as a

27

distinguishing feature of the invention. As explained, the language of the disputed phrase itself

28
21

1

does not support such an inference absent an explicit statement to that effect in the prosecution

2

history. No such evidence exists.

3

KSEA explains that “for the embodiments disclosed in the ’688 patent, it is impossible to

4

control the operation of two or more pieces of surgical equipment at the exact same time from the

5

surgeon’s control panel because the control panel can only receive one command at a time, and

6

because the serial communication link between the control panel and the central controller can

7

only transmit one command at a time” (KSEA Br. 16). Stryker does not contest this statement.

8

Instead, Stryker construes its own proposed construction to mean that the data and controls for all

9

of the pieces of surgical equipment are “present and available to the surgeon at the same time on
the surgeon’s control panel” even if they cannot all be operated at exactly the same time

11
For the Northern District of California

United States District Court

10

(Stryker Br. 9). To the extent these arguments apply to the reasoning adopted herein, this order

12

recognizes that the disclosed invention can process only one command at a time.

13

The phrase “whereby each of the plurality of self-contained pieces of surgical equipment

14

can be simultaneously operated with the operation thereof controlled and monitored from the

15

surgeon’s operating station” shall be construed to mean “whereby the simultaneous operation of

16

multiple pieces of surgical equipment can be monitored and controlled from the surgeon’s

17

operating station.”4

18

2.

19

The ’286 patent, entitled “Arrangement for the Central Monitoring and/or Control of At

THE ’286 PATENT

20

Least One Apparatus,” was issued on May 28, 2002. Storz Endoskop GmbH was the assignee of

21

the ’286 patent at the time of issue. KSEA claims to now own the entire right, title, and interest

22

in this patent (Sec. Amd. Compl. ¶ 17). Twenty-seven claims from the ’286 patent are asserted in

23

this litigation: independent claim 1, and dependent claims 3–4, 7–11, 13, 19–20, 22, 24–28,

24

30–33, and 35–40. Two of the terms construed by this order are found in the ’286 patent. They

25

are italicized in the claim below.

26
27
28

4
The Tennessee court construed “can be simultaneously operated” as meaning that “all of the surgical
equipment can be controlled and monitored at the same time from the surgeon’s control panel” (Dkt. No. 222-1
at 18). This order explicitly does not equate operation with control and monitoring, and the construction
adopted here does not incorporate reference to the surgeon’s control panel.

22

1
2

Claim 1 covers (col. 7:8–20):
1.
System for centrally controlling a plurality of instruments
for endoscopy characterized by:

3
a self-configuring bus and a bus master and a plurality of
interfaces interconnecting the instruments to the selfconfiguring bus;

4
5
6

the instruments being operatively connected via interfaces
on the self-configuring bus to said bus master,

7

the bus master monitoring communication on the bus for
correct execution;

8
the bus master configuring the bus automatically whenever
a said instrument is either newly connected or is
disconnected from said bus without interruption of the
operation of the system.

9

11
The ’286 patent provides a computer science solution relevant to implementing a system
For the Northern District of California

United States District Court

10

12
like the one disclosed in the ’688 patent. The invention “is based on the problem of improving a
13
system for centrally monitoring and/or controlling at least one unit for endoscopy, and
14
specifically for minimally invasive surgery” (cols. 1:66–2:2). The invention does so “in such a
15
way that a large number of (different or identical) units can be centrally controlled at a
16
comparatively low expenditure” and “with the replacement of failed units or the connection of
17
new units being possible during the ongoing operation without any problems and particularly
18
without interference with the other units” (col. 2:3–9).
19
A.

“self-configuring bus”

20
The parties dispute the term “self-configuring bus.” The parties’ proposed constructions
21
are shown below.
22
23

KSEA’S PROPOSED
CONSTRUCTION

STRYKER’S PROPOSED
CONSTRUCTION

24

“a communication network in which at
least two connected devices
automatically communicate with each
other”

“a communication medium that can be
shared by more than two devices and
that automatically selects which
device on the bus will serve as the bus
master”

25
26
27

The parties dispute whether a bus is a “communication network” or a “communication medium,”

28

but KSEA abandons this dispute in its responsive brief, conceding that “[t]he term ‘bus’ . . . can
23

1

be understood to mean a medium . . .” (KSEA Resp. Br. 12). The remaining disputes concern

2

how many devices must be connected to the bus and what constitutes self-configuration.

3

Regarding the number of devices, the claim language refers to “a plurality of interfaces

4

interconnecting the instruments to the self-configuring bus” (col. 7:10–12). The instruments, in

5

turn, are “a plurality of instruments for endoscopy” (col. 7:8–9). Thus, the bus claimed by the

6

patent interconnects “a plurality” of devices. That means more than one.

7

Stryker argues that, instead, the bus must be capable of being shared by more than two

8

devices. Stryker’s arguments are unpersuasive. First, Stryker argues that the claim requires a bus

9

master and a plurality of instruments, which would add up to at least three devices
(Stryker Br. 22). This argument fails because the bus master could be one of the plurality of

11
For the Northern District of California

United States District Court

10

instruments. The claim does not enumerate the bus master and the plurality of instruments as

12

separate, mutually-exclusive elements, and the specification explains that any of a variety of

13

devices may serve as bus master in addition to performing its own function (cols. 3:15–32,

14

6:9–22). A dedicated bus master is not required.

15

Second, Stryker cites the specification for support, arguing that “[b]y disparaging systems

16

with a number of point-to-point serial or parallel ‘computer interfaces,’ the ’286 patent

17

distinguishes the claimed ‘bus’ from a collection of one or more point-to-point connections where

18

the various connections are not shared by more than two devices — i.e., where data sent over one

19

point-to-point link is not necessarily sent over any other point-to-point link” (Stryker Br. 21)

20

(citation omitted). This argument is too attenuated to overcome the use of the word “plurality” in

21

the claim itself. The specification language Stryker cites merely states that “[t]he use of serial or

22

parallel interfaces for controlling the devises presents the disadvantage that the number of the

23

total units which can be controlled by the master computer is restricted by the number of

24

computer interfaces” (col. 1:35–38). This observation about the prior art does not indicate that

25

the claims are limited to buses that can connect more than two devices.

26

Third, Stryker cites the prosecution history of the ’286 patent, arguing that in

27

distinguishing prior art, “the Applicant also disclaimed any interpretation of the claims that

28

allows the ‘bus’ to be either: (1) a single, point-to-point connection between two devices; or
24

1

(2) multiple point-to-point connections between various devices where those multiple connections

2

are not shared by all of those devices” (Stryker Br. 21). This, too, is a stretch. The portion of the

3

prosecution history that Stryker cites for support enumerates several respects in which the

4

claimed invention differs from the prior art reference. The number of devices connected by the

5

bus is not one of them (Bateman Exh. L at 8). There was no clear disavowal of claim scope

6

limiting the claimed bus to being capable of connecting more than two devices. See Teleflex, Inc.

7

v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002).

8

Turning to the question of self-configuration, neither the claim language nor the

9

specification provides much elaboration. The most that can be inferred from the phrase “selfconfiguring bus” is that the bus configures itself if some way, such that configuration by an

11
For the Northern District of California

United States District Court

10

external operator that otherwise would be necessary is not required. The ’286 patent uses the

12

term of art “configure” without providing any definition, so further construing that term of the

13

disputed phrase would require a resort to extrinsic evidence.

14

Stryker argues that the claimed self-configuration is the process by which the bus selects

15

which device on the bus will serve as the bus master. Stryker reasons that this process is the only

16

process disclosed in the patent that would constitute self-configuration by the bus

17

(Stryker Br. 24–25). The problem with Stryker’s argument is that claim 1 does not disclose this

18

process as part of the invention. Selection of the bus master is disclosed in dependent claims, but

19

it is not required by the independent claim. The specification further explains that the bus-master

20

selection process becomes relevant only when “more than one unit suitable for use as BUS master

21

is connected to the bus,” and even then it is only “preferable” — not required — that provisions

22

“be made for arbitration or assignment of priorities so as to ensure that only one BUS master

23

assumes the active BUS master function” (col. 3:28–32). This feature may not be read into the

24

independent claim simply because it is included in a preferred embodiment.

25

Because of the dearth of intrinsic evidence as to the meaning of “configure,” the phrase “a

26

self-configuring bus” shall be construed simply to mean “a communication medium for

27

connecting multiple devices that configures itself if some way, such that configuration by an

28
25

1

external operator that otherwise would be necessary is not required.”5 This construction

2

recognizes and allows for the fact that the bus is configured automatically by the bus master

3

whenever an instrument is either newly connected or is disconnected from the bus, as required by

4

the claim language.

5

B.

6
7

“whenever a said instrument is either newly connected or is
disconnected from said bus without interruption of the
operation of the system”

The parties dispute the phrase “whenever a said instrument is either newly connected or is

8

disconnected from said bus without interruption of the operation of the system.” The parties

9

interpret the phrase differently, but only Stryker seeks a construction. The parties’ proposed
constructions are shown below:

11
For the Northern District of California

United States District Court

10

KSEA’S PROPOSED
CONSTRUCTION

12

STRYKER’S PROPOSED
CONSTRUCTION

“whenever an instrument is either newly
connected or is disconnected from the
bus without interruption of the
operation of the system” (no
construction)

13
14
15
16

“whenever an instrument and the
interface that directly links it to the
bus are either newly connected to or
disconnected from the bus without
interruption of the operation of the
system, where the bus is a
communication medium that can be
shared by more than two devices”

17

The construction of this phrase is relevant to the parties’ infringement and invalidity arguments.

18

Stryker’s proposed construction of incorporates its proposed construction of “self-configuring

19

bus.” Because the phrase “self-configuring bus” already was construed, Stryker’s arguments on

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that portion of this phrase need not be addressed again here. Thus, the only dispute to be settled

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is whether an instrument connected to the bus and the interface that directly links it to the bus

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must be unplugged or plugged back in together, as a single unit.

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The claim language describes instruments that are connected to the bus through interfaces.
Thus, the connection of an instrument to the bus could be disrupted by breaking the bus/interface

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The Tennessee court construed “self-configuring bus” as a “shared communication medium
connecting multiple stations (e.g., instruments) that has functionality for (i) automatically, based on arbitration
provisions or assigned priorities, determining which one of the stations will serve as the bus master, and (ii)
automatically detecting the connection or disconnection of stations to or from the bus” (Dkt. No. 222-1 at 31).
This order agrees that a self-configuring bus is a communication medium for connecting multiple devices, but it
does not attribute any such specific functionality to the bus.

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1

joint, or the interface/instrument joint, or both. This observation suggests that the phrase

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“whenever a said instrument is either newly connected or is disconnected from said bus” would

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encompass disconnection and re-connection at either of those joints.

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Stryker construes the phrase to refer only to disconnection and re-connection at the

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interface/bus joint. Stryker’s arguments are not persuasive. First, Stryker notes that “only the

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‘interface’ directly connects to the bus” and infers from that fact that “claim 1 must be referring to

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connecting or disconnecting an instrument’s interface when it refers to the connection or

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disconnection of an ‘instrument’ from the bus” (Stryker Br. 18). The foregoing analysis of the

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claim language refutes this argument.
Second, Stryker argues that the specification supports its construction because “[e]very

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For the Northern District of California

United States District Court

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embodiment shown in the ’286 patent shows the interface of the instrument as being directly

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linked to the bus” and because “the specification disparages point-to-point ‘serial or parallel

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interfaces’ when describing the prior art” (Stryker Br. 20). As explained, the mere presence or

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use of an interface layer is not enough to support Stryker’s construction.

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Third, Stryker also relies on the prosecution history of the ’286 patent, arguing that the

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applicants distinguished prior art on the ground that it allowed adapters (which Stryker analogizes

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to the claimed interfaces) to be connected or disconnected from a bus only when there was no bus

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power. Based on this characterization of the applicants’ revisions and remarks, Stryker concludes

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that the claims of the ’286 patent “only include systems that, in addition to meeting the other

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claim limitations, allow the instrument and the interface that directly links the instrument to the

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bus to be connected to or disconnected from the bus without interrupting operation of the system”

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(Stryker Br. 19–21). Without commenting on the accuracy of Stryker’s interpretation of the

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prosecution history, this order finds Stryker’s conclusion therefrom inadequate to support

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Stryker’s proposed construction. The observation that the claimed invention allows

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disconnection at the interface/bus joint does not imply a requirement that the invention

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accommodates disconnection only at that joint.

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The phrase “whenever a said instrument is either newly connected or is disconnected from
said bus without interruption of the operation of the system” shall be construed to mean
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1

“whenever an instrument-interface unit is newly connected or disconnected from the bus, or an

2

instrument is newly connected or disconnected from an interface connected to the bus, without

3

interruption of the operation of the system.”6

4

CONCLUSION

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The constructions set forth above will apply in this action. The Court reserves the

6

authority, on its own motion, to modify these constructions if further evidence warrants such a

7

modification. Additionally, by NOON ON MAY 10, 2011, each side may file a five-page critique

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(double-spaced, no footnotes, and no attachments) limited to points of critical concern. This is an

9

opportunity for the parties to focus solely on their most cogent critique, not to rehash every point
made in the briefs and at the hearing.

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For the Northern District of California

United States District Court

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IT IS SO ORDERED.

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Dated: May 3, 2011.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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The Tennessee court did not construe any portion of this disputed phrase (Dkt. No. 222-1 at 26–35).

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