NuVasive Inc. v. Globus Medical Inc.

Filing 179

MEMORANDUM OPINION regarding claim construction. Signed by Judge Leonard P. Stark on 7/12/2013. (rpg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NUVASIVE, INC.,
Plaintiff,
C.A. No. 10-849-LPS

v.
GLOBUS MEDICAL, INC.,
Defendant.

MEMORANDUM OPINION
Tara D. Elliot, FISH & RICHARDSON, P.C., Wilmington, DE.
Frank E. Scherkenbach, FISH & RICHARDSON, P.C., Boston, MA.
Michael J. Kane, FISH & RICHARDSON, P.C., Minneapolis, MN.
Todd G. Miller and Michael A. Amon, FISH & RICHARDSON, P.C., San Diego, CA.
Counsel for Plaintiff.

Richard L. Horwitz and David E. Moore, POTTER ANDERSON & CORROON, LLP,
Wilmington, DE.
Vivian S. Kuo and Shane A. Nelson, WINSTON & STRAWN LLP, Houston, TX.
Counsel for Defendant.

July 12, 2013
Wilmington, Delaware

(~~~ ~
STARK, U.S. District Judge:
Plaintiff, NuVasive, Inc. ("NuVasive"), filed this patent infringement action against
Defendant, Globus Medical, Inc. ("Globus"), on October 5, 2010, alleging that Globus infringes
fifty-five claims contained in three NuVasive patents. (D.I. 1, 10, 52) On December 12, 2011 ,
the Court conducted a Markman hearing on the disputed terms. See Transcript ("Tr.") (D.I. 102) 1
Below the Court rules on the parties' claim construction disputes.
I.

BACKGROUND
A.

The Patents-In-Suit

There are three patents-in-suit. NuVasive owns U.S. Patent No. 7,691 ,057 ("'057
patent"), issued on April6, 2010; U.S. Patent No. 7,819,801 ("' 801 patent"), issued on October
26, 2010; and U.S. Patent No. 7,905,840 ('" 840 patent"), issued on March 15, 2011. All three
patents-in-suit are entitled, "Surgical Access System and Related Methods." The patents-in-suit
have identical "Background of the Invention" sections, similar Abstracts, and generally similar
specifications.
B.

The Technology

Each ofthe patents-in-suit relates to a surgical access system and methods for performing
surgery- particularly lumbar surgery, commonly referred to as minimally invasive spinal lumbar
surgery. (D.I. 69 at 3) The patents describe the use of surgical tools to access a surgical target
site, especially the lumbar portion of the spine. (' 057 patent, col. 2, lines 60-65 ; ' 801 patent, col.
2, lines 45-54; ' 840 patent, col. 6, lines 25-30) In such a procedure, the patient may be

1

0n November 3, 2011 , the Court ordered NuVasive to reduce the number of asserted
claims from 55 to 15 and further ordered the parties to reduce the number of proposed claim
terms to be construed at this point in the case to no more than 15. (D.I. 88 at 18-19)
1

positioned laterally, allowing the surgical target site to be accessed through an operative corridor
created in the patient's side. (See '840 patent Fig. 23) The operative corridor provides the
surgeon access through nerve-rich tissue. Hence, the systems and methods of the patents-in-suit
allow for the use of neuromonitoring to help the surgeon identify and avoid motor nerves in
tissues such as the psoas muscle. (D.I. 69 at 6) 2

II.

LEGAL STANDARDS
"It is a bedrock principle of patent law that the claims of a patent define the invention to

which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (internal quotation marks omitted). Construing the claims of a patent presents a
question oflaw. See Markman v. Westview Instruments, Inc., 52 F.3d 967,977-78 (Fed. Cir.
1995), aff'd, 517 U.S. 370, 388-90 (1996). "[T]here is no magic formula or catechism for
conducting claim construction." Phillips, 415 F.3d at 1324. Instead, the Court is free to attach
the appropriate weight to appropriate sources "in light of the statutes and policies that inform
patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning ...
[which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."
Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a

claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321

2

In understanding the technology, the Court has been assisted by the parties' submissions
of video tutorials. (D.I. 67, 68) However, the Court agrees with Globus that large portions of
NuVasive's tutorial- such as those portions consisting of patient testimonials, allegations of
copying, and extensive demonstrations ofNuVasive's commercial products- are unhelpful and
improper in a tutorial. (D.I. 82)
2

(internal quotation marks omitted). The patent specification "is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also must be considered.

Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims ofthe patent in question, both asserted
and unasserted, can also be valuable sources of enlightenment ... [b ]ecause claim terms are
normally used consistently throughout the patent .... " !d. (internal citation omitted).
"Differences among claims can also be a useful guide .... For example, the presence of a
dependent claim that adds a particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim." !d. at 1314-15 (internal citation omitted). This
"presumption is especially strong when the limitation in dispute is the only meaningful difference
between an independent and dependent claim, and one party is urging that the limitation in the
dependent claim should be read into the independent claim." SunRace Roots Enter. Co., Ltd. v.

SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim

term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven
when the specification describes only a single embodiment, the claims of the patent will not be
read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
using words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v.

Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481
3

F.3d 1371 (Fed. Cir. 2007).
In addition to the specification, a court "should also consider the patent's prosecution

history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is
"intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent
and Trademark Office] and includes the prior art cited during the examination of the patent."

Phillips, 415 F.3d at 1317. " [T]he prosecution history can often inform the meaning ofthe claim
language by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it would
otherwise be." Id.
A court may also rely on "extrinsic evidence," which "consists of all evidence external to
the patent and prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises." Markman , 52 F.3d at 980. For instance, technical dictionaries can assist the
Court in determining the meaning of a term to those of skill in the relevant art because such
dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science
and technology." Phillips, 415 F.3d at 1318. Overall, while extrinsic evidence "may be useful"
to the Court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to
result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19.
Finally, " [t]he construction that stays true to the claim language and most naturally aligns
with the patent's description of the invention will be, in the end, the correct construction."

Renishaw PLC v. Marposs Societa ' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
that "a claim interpretation that would exclude the inventor' s device is rarely the correct
4

interpretation." Osram GmbHv. Int 'l Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
III.

SANCTIONS

Nuvasive ' s position is that none of the terms in any of the three patents-in-suit requires
construction. In pursuing this position, Nu Vasive filed an opening claim construction brief that
did not address any of the parties' claim construction disputes, beyond merely identifying where
in the claims the disputed terms could be found. NuVasive' s opening claim construction brief
did not provide any support (beyond conclusory rhetoric) for its position that no construction of
any disputed term was necessary. Nor did NuVasive' s opening brief provide criticism of Globus'
proposed constructions- even though NuVasive knew Globus ' proposed constructions and knew
the evidence Globus would rely on in support of them. In fact, NuVasive' s opening brief failed
to cite even once to the specification of any of the three patents-in-suit.
Instead, NuVasive ' s approach, by its own description, was as follows:
Because the source of many of Globus' proposed constructions is
not entirely clear (Globus cited to entire office actions and
responses thereto in the file histories), Nu Vasive will not present
its arguments against Globus' proposed constructions in this
opening brief Given that there are no claim construction
arguments in this opening brief, there should be nothing for
Globus to respond to in its responsive brief Rather than
presenting arguments about terms for which Globus may ultimately
not seek construction or responding to arguments that Globus may
ultimately decide not to make, NuVasive presents in this opening
brief a discussion of the technology at issue, a discussion of the
applicable law of claim construction and a recitation of
representative claims at issue that include all of the terms for which
Globus currently seeks construction. Nu Vasive submits that
simply reading these claims provides strong support for its
position that construction is unnecessary.
(D.I. 69 at 1-2) (emphasis added) This approach to claim construction was entirely unhelpful to

5

the Court and prejudicial to Globus, which only first had an opportunity to consider NuVasive' s
arguments against Globus' proposed constructions after reviewing NuVasive' s answering brief.
Consequently, the Court found it necessary following the Markman hearing to provide
NuVasive an opportunity to propose alternative constructions for the 15 claim terms that were
the subject ofthe claim construction process. (D.I. 95) 3 NuVasive complied with the Court's
order by providing alternative constructions while preserving its preferred position that "these
terms do not need to be redefined by the Court." (D.I. 97 at 2) Globus responded. (D.I. 98) The
Court also directed the parties to brief an Order to Show Cause why NuVasive should not be
sanctioned for its handling of the claim construction process. 4
Having considered all of these materials, the Court has determined that sanctions are not
warranted. The post-hearing submissions have adequately remedied the prejudice to Globus (and
the Court) from NuVasive's conduct. The Court has not found that NuVasive acted in bad faith.
While the extra expenditures of money and time necessitated by NuVasive' s conduct are
unfortunate, no additional sanctions will be imposed.

***
3

Specifically, on December 13, 2011 , the day after the Markman hearing, the Court
entered an Order as follows: "To the extent that NuVasive seeks the opportunity to present
alternative proposed constructions of any or all of the claim terms in dispute - while preserving
its primary contention that the 'ordinary and customary' meaning should apply- NuVasive may
present such alternative constructions according to the following schedule." (D.I. 95) The Order
further provided that NuVasive had three days to submit a three-page letter "setting out its
proposed alternative constructions and support for them." (Id.) Thereafter, Globus was given
two weeks to respond with a letter brief of up to six pages.
4

The same December 13, 2011 Order further directed NuVasive to "show cause as to why
it should not be sanctioned for its conduct in connection with preparation of the Joint Claim
Construction Chart and its claim construction briefing." (D.I. 95 at 1-2) The Order set out a
briefing schedule to address the possibility of sanctions.
6

Before turning to the substance of the claim construction disputes, the Court deems it
appropriate to elaborate on what it has found troubling about NuV asive ' s approach to the claim
construction process, and particularly its opening brief.
Fundamentally, NuVasive had an obligation to assist the Court in resolving the parties '
claim construction disputes. Perhaps the situation presented here was so unusual as to warrant a
departure from the Court' s ordinary practices, which include preparation of a Joint Claim
Construction Chart, identifying disputed terms as well as both sides' proposed constructions and
support for them ; and simultaneous opening and responsive briefs, each containing argument
supportive of a party' s own positions and critical of those of the opposing party. If so, it was
incumbent on the parties - and most especially NuVasive, as it evidently knew for quite a while
that it did not believe any terms needed to be construed - to inform the Court and to propose
appropriate modifications. It was not appropriate for Nu Vasive singlehandedly to determine that,
in this case, the claim construction disputes were so simple that the Court would not require the
full and informed assistance ofboth parties. 5

5

In opposing sanctions, NuVasive writes:
However, unlike the typical claim construction disputes where
determining the appropriate meaning of claim terms is challenging
due to the complexity of the technology and/or the nuances of the
claim language, specification or prosecution history, this case
presented none of those issues. Instead, the claims of the patentsin-suit use readily understood, non-technical words, and there is
nothing in the way oflexicography or disclaimer about which the
parties could legitimately debate.

(D .I. 99 at 11) The Court has not found the claim construction disputes presented here to be
nearly as easy as NuVasive suggests. Indeed, the Court agrees with Globus that "many ofthe
disputed terms are technical and not easily understood by the jury." (D.I. 72 at 1)
7

In short, the Court agrees with Globus that "NuVasive's Initial Briefwas woefully
insufficient and unproductive." (D.I. 103 at 11) While NuVasive's conduct is not sanctionable,
neither is it laudable, and it has resulted in making the Court's always difficult task of construing
disputed claim terms even more challenging.

III.

CONSTRUCTION OF DISPUTED TERMS
In setting out the parties' positions and the Court's resolution of their disputes, the Court

indicates as the "Plaintiffs Proposed Construction" both NuVasive's preferred position- that
each term be given its "ordinary and customary meaning" - and, where NuV asive has stated one,
NuVasive's less preferred alternative proposed construction. Given the Court's Order (D.I. 95),
and consistent with the Court's decision not to sanction NuVasive, the Court does not agree with
Globus that NuVasive's alternative constructions are "improper." (D.I. 98 at 1)6

6

The Court does, however, agree with this statement from Globus:
There is no reason why NuVasive could not have submitted these
proposed constructions earlier in the claim construction process.
NuVasive's "hide-the-ball" tactics precluded the parties' ability to
engage in a meaningful meet and confer, brief the real issues in
dispute, and present the Court with pertinent argument, evidence,
and authority on those issues. Besides frustrating the claim
construction process, NuV asive has also wasted the parties' and the
Court's resources, including the present briefing, on issues that
should and easily could have been submitted months ago,
consistent with the Court's Scheduling Order.

(D.I. 98 at 1 n.l)
8

A.

"handle assembly" 7
Plaintiff's Proposed Construction: ordinary and customary meaning or
alternatively "an assembly that may be grasped" ('801 patent) or "linkage
assembly" ('057 patent)
Defendant's Proposed Construction: "components to be grasped
and held for manipulation by the hand"
Court's Construction: "an assembly that may be grasped by hand"8

The primary point of disagreement between the parties with respect to the "handle
assembly" term is whether the handle assembly must be grasped and handled such that it can be
used to do something, as proposed by Globus, or rather, as argued by NuVasive, the handle
assembly need only be capable of doing so. (Tr. at 53) The Court agrees with NuVasive that the
handle assembly must be capable of being grasped. The Court also believes it appropriate to
clarify for the jury that the capability of being grasped must include the capability of being
grasped by hand.
Claim 1 of the '801 patent states that the handle assembly "pivots ... in response to

manual adjustment of a component of the handle assembly" (emphasis added). Claim 17 of the
'057 patent adds that the handle assembly is "capable of moving" and that the handle assembly is
used "to move." It is evident from the claims that the "manual adjustment" and "moving" must

7

The term appears in claim 1 of the '801 patent and claim 17 ofthe'057 patent.

8

The parties have a dispute as to the proper construction of "handle assembly" and that
dispute appears to be material to issues in this case. Accordingly, the Court concludes it has an
obligation to resolve this claim construction dispute. See 02 Micro Intern. Ltd. v. Beyond
Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) ("When the parties raise an
actual dispute regarding the proper scope of the claims, the court, not the jury, must resolve that
dispute."). The Court has reached the same conclusion for each of the terms put in dispute by
Globus.
9

be capable of being done by hand.
The '801 specification discloses that a user can squeeze the ends of the handle assembly.
(See, e.g., '801 patent, col. 8 lines 12-20) The "squeezing motion" causes the retractor blades to
move. Figures in the specifications- such as Figure 6 of '057 patent and Figure 11 of the '801
patent - depict embodiments of the claims that may be grasped by hand.
The Court agrees with Globus that additional support for including a reference to "the
hand" in the proper construction of"handle assembly" is found in both the prosecution history
and Webster's Third New International Dictionary (defining "handle" as "a part that is designed
esp. to be grasped by hand or that may be grasped by hand").
The Court will not inject the words "held for manipulation" into the construction because
doing so would improperly import limitations from the specification into the claims. The
specification reads: "[b]y way of example only ... the handle assembly may be manipulated to
open the retractor assembly." ('801 patent, col. 13 lines 35-40) (emphasis added); see also id.
col. 3 lines 30-37, col. 5 lines 45-56, col. 6 lines 46-54) This exemplary language does not
appear to have been intended by the patentee to limit the scope of the claims. See generally
Scanner Techs. Corp. v. !COS Vision Sys. Corp., 365 F.3d 1299, 1303 (Fed. Cir. 2004) (finding
patentee did not evince clear intent to limit).
The Court agrees with Globus that the term "handle assembly" should be construed to
have the same meaning for both patents. (See D.I. 98 at 3)9
9

The Court has considered Globus' prosecution disclaimer argument for this "handle
assembly" term (as well as for other terms). Although not finding any clear and unmistakable
disavowal of claim scope, see Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1325, 1325-26 (Fed.
Cir. 2006) ("[F]or prosecution disclaimer to attach ... the alleged disavowing actions or
statements made during prosecution [must] be both clear and unmistakable."), the Court has
10

B.

"handle assembly being capable of moving said plurality of retractor
blades" 10

Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "handle assembly (as construed by the Court) that is able to
move the plurality of retractor blades"
Defendant's Proposed Construction: "handle assembly that can
simultaneously move by hand the plurality of retractor blades"
Court' s Construction: "an assembly that may be grasped by hand that is
able to move the plurality of retractor blades"
The parties' primary dispute with respect to this term is whether both handles of the
handle assembly must move simultaneously, as Globus proposes, or need not do so (but may), as
NuVasive proposes. (See Tr. at 57; D.I. 99 at 3) The Court concludes that while the blades must
be introduced into the patient's body simultaneously, it is not a requirement of the claims that the
blades- once inside the body - need to be able to move simultaneously. (See ' 057 patent claim
1) (stating that retractor blades "are deliverable to said surgical target site simultaneously"))
Globus' citations to the specification support the conclusion only that a preferred embodiment
has blades that move simultaneously. (See, e.g. , ' 057 patent, col. 4 lines 28-32) ("allowing the
retractor blades to separate from one another (preferably simultaneously) to create an operative
corridor to the surgical target site") Nor does the prosecution history persuade the Court
otherwise. While Globus emphasizes that the Examiner stated that "simultaneously introducing

"considered and given . .. due weight" to each ofNuVasive' s amendments and corresponding
arguments made during prosecution, in connection with each disputed term, just as Globus has
requested (see, e.g., D.l. 98 at 3). See generally Desper Products, Inc. v. QSound Labs, Inc. , 157
F.3d 1325, 1333-36 (Fed. Cir. 1998). NuVasive agreed that it is appropriate to look at the
prosecution history. (Tr. at 62)
10

The term appears in claim 17 of the ' 057 patent.
11

the plurality of retractor blades" was the reason for allowance (D.I. 72 at 20), NuVasive
accurately responds that the Examiner was silent as to whether the blades move simultaneously.
(D.I. 85 at 11) The Court will adopt NuVasive' s alternative proposal.

C.

"pivoting said first and second pivotable arm members relative to one
another" 11
Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "capable of moving the first pi votable arm member to pivot relative
to the second pivotable arm member, and moving the second pivotable arm
member to pivot relative to the first pivotable arm member"
Defendant's Proposed Construction: "turning or rotating the first and second
pivotable arm members against each other about a point."
Court's Construction: "capable of moving the first pivotable arm member to pivot
relative to the second pivotable arm member, and moving the second pivotable
arm member to pivot relative to the first pivotable arm member"

To the extent the parties' dispute relates to whether the blades must turn simultaneously,
the Court reaches the same conclusion as it did with respect to the preceding term. Globus'
construction is further problematic because it would rewrite, without basis, "pivoting" as
"turning or rotating" and replace the claim language "relative to one another" with "against each
other about a point." Globus' citation to a Webster's dictionary definition and a purported
disavowal of claim scope during prosecution are unpersuasive. (D .I. 72 at 16) The Court
concludes that the parties' dispute as to the scope of this claim term is resolved by adoption of
NuVasive's alternative proposed construction.

11

The term appears in claim 1 ofthe '801 patent.
12

D.

"actuating" 12
Plaintiff's Proposed Construction: ordinary and customary meaning or
alternatively "operating"
Defendant's Proposed Construction: "squeezing by hands"
Court's Construction: "operating"

The parties' dispute over this term somewhat repeats their dispute with respect to the
prior ("pivoting") term, in that Globus would require "simultaneous" movement of the blades
while NuVasive would not. For the same reasons already given, the Court agrees with NuVasive
that simultaneous movement of the blades is not required.
Additionally, Globus' construction employs the word "squeezing," yet no form of the
word "squeeze" appears in the '057 patent. (Tr. at 72) 13 The Court finds no basis to write the
word "squeeze" into "actuating." To the contrary, the Court agrees with NuVasive that to adopt
Globus' construction would improperly limit a claim of the '057 patent to a preferred
embodiment of the '801 patent. NuVasive's alternative construction properly resolves the
parties' dispute.
E.

"coupled"/"coupling" 14
Plaintiff's Proposed Construction: ordinary and customary meaning or
alternatively "linked"/"linking"
Defendant's Proposed Construction: "connected"/ "connecting"
Court' s Construction: "directly connected/directly connecting"

12

The term appears in claim 17 ofthe '057 patent.

13

"Squeeze" and "squeezing" are used in the '801 patent. (Tr. at 56)

14

The terms appear in claims 17 and 24 of the '057 patent.
13

These terms relate to the structure of the retractor and retractor blades, as used in claims
17 and 24 of the ' 057 patent. The issue is whether there needs to be a direct connection, as
Globus contends. The Court agrees with Globus that there must be such a connection.
At the hearing, NuVasive stated that "coupled" does "encompass direct attachment where
the blades and the arm portions of the retractor frame are touching" and indicated it could accept
(but does not prefer) "directly coupled." (Tr. 82-83) Generally, the claims of the '057 patent
appear to use the term "coupled" to describe elements that are directly, physically connected.
(See ' 057 patent claims 1, 5, 10, 17) Hence, the Court will adopt Globus' proposed construction.

F.

"rigidly coupled" 15

Plaintiff's Proposed Construction: ordinary and customary meaning or
alternatively "firmly linked"
Defendant' s Proposed Construction: "fixed and immovably connected."
Court' s Construction: "fixed and immovably connected"
The dispute here is whether "rigidly coupled" requires coupling that is "fixed" and
"immovable" or instead only requires coupling that is "firm" or "stiff." (D.I. 99 at 5)
As Globus observes, both the ' 057 and ' 801 patents claim "coupled" retractor blades.
(D.I. 72 at 18) Unlike the ' 057 patent, the ' 801 patent also includes claims containing the
limitation "rigidly coupled." During prosecution of the ' 801 patent, NuVasive added "rigidly
coupled" to claim 1 in an effort to distinguish prior art. (D.I. 73 Ex. 22, 12/28/07 ROA at p. 2)
Under the circumstances, "rigidly coupled" must mean something different that "coupled." (D.I.
99 at 5; Tr. at 77, 80, 87) The Court concludes that its meaning, in the context of the '801 patent,

15

The term appears in claim 1 of the ' 801 patent.
14

is that a "fixed and immovable connection" is required.
Here (as with most other terms in dispute) Globus relies on a disclaimer argument (see
Tr. at 77 -79), contending that "NuVasive expressly elected claims that are directed to blades that
are 'rigidly attached,' not to retractor blades that are ' releasably coupled."' The Court is
unpersuaded by Globus ' disclaimer argument, for reasons including that the patentee, in
distinguishing the Koros reference, emphasized that the current invention is different because
Koros does not teach "rigid[] coupling . .. prior to introduction into the surgical target site," the
emphasis suggesting at least ambiguity as to whether Koros was being distinguished on the
grounds Globus argues. (See Tr. at 86-87; D.I. 73-22 at 1798) Still, this prosecution history
provides some support to Globus ' proposed construction and is a reason the Court will adopt
Globus' proposal.
G.

"being positioned to abut one another and form a closed perimeter" 16
Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "being positioned such that each blade touches the adjacent blade(s)
at one or more points to form an enclosed region"
Defendant' s Proposed Construction: "being positioned whereby each edge of the
plurality of retractor blades is positioned to touch an adjacent blade along the
entire edge to form an entirely encircled perimeter without gaps"
Court' s Construction: "being positioned such that each blade touches the adjacent
blade(s) at one or more points to form an enclosed region"

The parties' primary dispute with respect to this term is over the meaning of "abut."
Globus argues that "abut" requires the retractor blades to touch adjacently along the entire edge
to form an entirely encircled perimeter without gaps. (D.I. 72 at 19) NuVasive counters that

16

The term appears in claim 17 of the '057 patent.
15

claim 17 does not require the blades to make contact along the entire edge but that, instead, a
closed perimeter can be formed by a single point of contact between the retractor blades. (D.I. 85
at 21) The Court agrees with Nu Vasive. 17
The specification teaches that the retractor blades may be positioned so that they are
"generally abutting" one another. ('057 patent, col. 10 lines 3-41) " [G]enerally abutting"
indicates that the patentee did not intend to import into the claims a restrictive requirement that
the blades must be "positioned to touch an adjacent blade along the entire edge to form an
entirely encircled perimeter without gaps."
Globus points to Figure 6 of the ' 057 patent, which does show blades touching at more
than one point. (Tr. at 90-91) But this figure depicts a preferred embodiment. Globus '
arguments for limiting the claim to this preferred embodiment are unavailing. See MBO Labs.,
Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) ("[P]atent coverage is not

necessarily limited to inventions that look like the ones in the figures . . . . To hold otherwise
would be to import limitations onto the claim from the specification, which is fraught with
danger."'). The Court is likewise unpersuaded by Globus ' argument to limit claim scope because
of what is described in passing in the specification as "the present invention" (in a "Brief
Description of the Drawings") (see ' 057 patent, col. 5 lines 62-67)
The Court will adopt NuVasive' s alternative proposed construction. 18

17

NuVasive concedes "a limited disclaimer during prosecution when [the patentee]
changed the term ' generally adjacent' to ' abut one another and form a closed perimeter,"' such
that "the blades have to touch." (Tr. at 108)
18

At the hearing, NuVasive appeared to concede that all three of the blades must touch at
least at one point. (Tr. at 108-1 0) While Globus expresses concern that in its proposed
alternative NuVasive "appears to backtrack and suggest that each blade needs to touch only one
16

H.

"closed position" 19

Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "position where each blade has at least one point of contact with the
adjacent two blades"
Defendant' s Proposed Construction: "a position whereby each edge of the
plurality of retractor blades is positioned to touch an adjacent blade along the
entire edge to form an entirely encircled perimeter without gaps"
Court' s Construction: "position where each blade has at least one point of contact
with the adjacent two blades"
The parties' dispute is essentially the same dispute as has already been resolved with
respect to the preceding "being position to abut one another and form a closed perimeter" term.
For the same reasons, the Court agrees with NuVasive and will adopt its alternative proposed
construction.
I.

"open position" 20

Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "a position characterized by said plurality of retractor blades being
positioned generally away from one another and forming an open perimeter"
Defendant's Proposed Construction: the term is indefinite
Court' s Construction: "a position characterized by said plurality of retractor
blades being positioned generally away from one another and forming an open
perimeter"
Globus contends the term "open position" is indefinite. Globus has not demonstrated by
clear and convincing evidence that this claim term is insolubly ambiguous, such that it is

adjacent blade at one or more points" (D.I. 99 at 5), the Court does not understand NuVasive' s
alternative to withdraw from NuVasive ' s earlier concession.
19

The term appears in claim 1 of the ' 801 patent.

20

The term appears in claim 17 of the ' 057 patent.
17

incapable of construction. See generally Halliburton Energy Servs. v. M-1 LLC, 514 F .3d 1244,
1249-1250 (Fed. Cir. 2008) (describing indefiniteness as "exacting standard," which is satisfied
when claim term is "completely dependent on a person' s subjective opinion"); Exxon Res. &
Eng'g Co. v. United States, 265 F.3d 1371 , 1375 (Fed. Cir. 2001) ("Ifthe meaning ofthe claim is

discernible, even though the task may be formidable and the conclusion may be one over which
reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on
indefiniteness grounds."). NuVasive ' s alternative is consistent with how a person of ordinary
skill in the art would understand the ordinary and customary meaning of "open position" in the
context of the '057 patent.
J.

"being positioned generally away from one another and forming an
open perimeter" 21

Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "the blades are separated from one another to form an open
perimeter"
Defendant's Proposed Construction: the term is indefinite
Court' s Construction: "the blades are separated from one another to form
an open perimeter"
Globus has failed to prove by clear and convincing evidence this term is indefinite. This
term presents essentially the same issues as the preceding term ("open position"). For the same
reasons, the Court adopts NuVasive' s alternative proposed construction.

21

The term appears in claim 17 of the ' 057 patent.
18

K.

"opened"22

Plaintiffs Proposed Construction: ordinary and customary meaning or
"the blades are moved from the closed position"
Defendant's Proposed Construction: "positioned away from one another."
Court' s Construction: "the blades are moved from the closed position"
This is largely the same dispute as already addressed above. Claim 1 of the ' 801 patent
indicates that the retractor blades are "opened" when the first and second pivotable arm members
are pivoted relative to one another. For largely the same reasons as given with respect to "closed
position" and "being positioned generally away from one another and forming an open
perimeter," the Court will adopt NuVasive ' s alternative proposed construction.
L.

"groove"23

Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "channel or slot in the surface of the blade having a width
less than the width of the blade"
Defendant' s Proposed Construction: "long narrow cut or indentation in the
surface of the retractor blade"
Court' s Construction: "channel or slot in the surface of the blade having a
width less than the width of the blade"
Globus contends that the "inherent" meaning of "groove" is a cut or indentation that is
"long and narrow." (Tr. at 103-04) NuVasive contends that the inherent (or ordinary and
customary) meaning of "groove" does not require long and narrow cuts. (Tr. at 117) The Court
does not share NuVasive ' s confidence that, without construction, the jury will know which side's

22

The term appears in claim 1 of the ' 80 1 patent.

23

The term appears in claim 1 of the ' 80 1 patent.
19

conflicting "inherent meaning" is the correct one in the context of the patent-in-suit. (Tr. at 118)

See generally Power-One, Inc. v. Artesyn Technologies, Inc., 599 F.3d 1343, 1348 (Fed. Cir.
201 0) ("The terms, as construed by the court, must ensure that the jury fully understands the
court' s claim construction rulings and what the patentee covered by the claims.") (internal
quotation marks omitted).
Thus, the Court will resolve the parties ' dispute as to the scope of the claim by construing
"groove." The Court concludes that the term "groove" is used in the ordinary and customary
manner that one having ordinary skill in the art would understand when reviewing the '80 1
patent, a meaning which is captured by NuVasive' s alternative proposed construction. By
contrast, it appears that Globus ' proposed construction might exclude certain embodiments
claimed in the ' 801 patent (see, e.g., claims 1, 17, 19, and 21).

M.

"neuromonitoring"/"nerve monitoring" 24

Plaintiffs Proposed Construction: ordinary and customary meaning or
alternatively "monitoring the patient to determine the presence of (and optionally,
the proximity and/or direction to) neural structures associated with the approach
to the surgical site by providing a stimulation signal that is capable of innervating
neuromuscular structures"
Defendant's Proposed Construction: "monitoring the patient to determine the
existence of neural structures to the surgical target site by providing a stimulation
signal that is capable of innervating neuromuscular structures"
Court' s Construction: "monitoring the patient to determine the presence of (and
optionally, the proximity and/or direction to) neural structures associated with the
approach to the surgical site by providing a stimulation signal that is capable of
innervating neuromuscular structures"
The parties agree that "nerve monitoring" means "neuromonitoring," but they dispute the

24

The term appears in claim 19 ofthe ' 057 patent.
20

meaning ofneuromonitoring. (D.I. 72 at 27) The parties' proposed constructions for this term
are similar but NuVasive adds "presence of and/or optionally the proximity and/or direction to
neural structures." (Tr. at 119) Globus argues that this additional language is improper because
it "relates only to a 'monitoring system' or a ' surgical access system' and not to
'neuromonitoring' by itself." (D.I. 98) However, the Court agrees with NuVasive that, in the
context ofthe patent-in-suit, the term "neuromonitoring" does require such a system. NuVasive
derived its additional language from the "Summary of the Invention" section of the '057 patent
and discussion of a preferred embodiment. (See ' 057 patent, col. 21ine 61 to col. 3 line 1, col. 7
lines 15-21 , col. 8 lines 8-25, col. 121ines 36-41) The Court will adopt NuVasive's alternative
proposal.
N.

"trans-psoas"25

Plaintiff's Proposed Construction: ordinary and customary meaning
Defendant' s Proposed Construction: "through the psoas"
Court' s Construction: "through the psoas"
At the Markman hearing, the parties advised the Court they were both agreeable to
Globus ' proposed construction. (Tr. at 115; see also D.I. 97 at 3) Accordingly, "trans-psoas"
will be construed to mean "through the psoas."

25

The term appears in claims 17, 26, and 27 ofthe ' 057 patent and claims 1 and 2 ofthe
' 80 1 patent.
21

0.

"using [at least one] stimulation electrode" 26
Plaintiffs Proposed Construction: ordinary and customary meaning
Defendant's Proposed Construction: "emitting an electrical stimulation signal
through [at least one/a] stimulation electrode"
Court' s Construction: "emitting an electrical stimulation signal through [at least
one/a] stimulation electrode"

At the Markman hearing, the parties advised the Court they were both agreeable to
Globus' proposed construction. (Tr. at 118-19) The Court agrees with the parties that the "user"
does not emit the electrical stimulation signal. Accordingly, "using [at least one] stimulation
electrode" shall be construed to mean "emitting an electrical stimulation signal through [at least
one/a] stimulation electrode."

IV.

CONCLUSION
An appropriate Order will be entered.

26

The term appears in claims 1 and 13 of the '840 patent.

22