St. Jude Medical Cardiology Division Inc. et al v. Volcano Corporation
Filing
169
MEMORANDUM OPINION regarding the issue of claim construction of six disputed terms. Within five days the parties shall submit a proposed Order consistent with this Memorandum Opinion suitable for submission to the jury. Signed by Judge Richard G. Andrews on 4/22/2014. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
ST. JUDE MEDICAL, CARDIOLOGY
DIVISION, INC., ST. JUDE MEDICAL
SYSTEMS AB, and ST. JUDE MEDICAL
S.C., INC.,
Plaintiffs,
Civil Action No. 12-441-RGA
v.
VOLCANO CORPORATION,
Defendant.
MEMORANDUM OPINION
Jason J. Rawnsley, Esq., RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; John
Allcock, Esq. (argued), DLA PIPER LLP, New York, NY; Stuart E. Pollack, Esq. (argued), DLA
PIPER LLP, New York, NY; Nicholas F. Aldrich, Jr., Esq., DLA PIPER LLP, New York, NY;
Marc E. Miller, Esq., DLA PIPER LLP, New York, NY.
Attorneys for Plaintiffs.
Thomas Lee Halkowski, Esq., FISH & RICHARDSON, P.C., Wilmington, DE; Frank E.
Scherkenbach, Esq. (argued), FISH & RICHARDSON, P.C., Boston, MA; Todd G. Miller, Esq.,
FISH & RICHARDSON, P.C., San Diego, CA; Michael M. Rosen, Esq., FISH &
RICHARDSON, P.C., San Diego, CA; Ryan P. O'Connor, Esq., FISH & RICHARDSON, P.C.,
San Diego, CA.
Attorneys for Defendant.
April
lA, 2014
Pending before this Court is the issue of claim construction of six disputed terms found in
U.S. Patent No. 6,565,514 ("the '514 patent")
I. BACKGROUND
St. Jude Medical, Cardiology Division, Inc., St. Jude Medical Systems AB, and St. Jude
Medical S.C., Inc. filed a patent infringement action against Volcano Corporation on April 9,
2012. (D.I. 1). On June 25, 2012, Volcano wrote a letter to the Court explaining that "[n]o
significant facts are in dispute, and the matter can be resolved in its entirety by the Court's
construction of just two claim limitations." (D.I. 16, p. 1). Based on this representation, the
Court granted an expedited briefing and argument schedule for the two terms Volcano identified
in the '514 patent. (D.I. 23). The Court construed those terms on May 30, 2013, although that
construction did not end the litigation. (D.I. 50). A new scheduling order was entered, setting
the briefing and argument schedule for the remaining disputed terms in the '514 patent. (D.I.
60). The Court has considered the parties' Joint Claim Construction Brief (D.I. 133), appendix
(D.I. 134), and oral argument on April2, 2014.
II. LEGALSTANDARD
"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) (en bane) (internal quotation marks omitted). "'[T]here is no magic formula or
catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
weight to appropriate sources 'in light ofthe statutes and policies that inform patent law."'
SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
415 F.3d at 1324). When construing patent claims, a matter oflaw, a court considers the literal
2
language of the claim, the patent specification, and the prosecution history. Markman v.
Westview Instruments, Inc., 52 F.3d 967,977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
(1996). Of these sources, "the 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."
Phillips, 415 F.3d at 1315 (internal quotations and citations omitted).
Furthermore, "the 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." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted).
"[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the
entire patent." !d. at 1321 (internal quotation marks omitted). "In some cases, the ordinary
meaning of claim language as understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves little more than the application
of the widely accepted meaning of commonly understood words." !d. at 1314 (internal citations
omitted).
A court may consider extrinsic evidence, which "consists of all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises," in order to assist the court in understanding the underlying technology, the meaning of
terms to one skilled in the art and how the invention works. !d. at 1317-19 (internal quotation
marks and citations omitted). However, extrinsic evidence is less reliable and less useful in
claim construction than the patent and its prosecution history. !d.
Moreover, "[a] claim construction is persuasive, not because it follows a certain rule, but
because it defines terms in the context of the whole patent." Renishaw P LC v. Marposs Societa'
3
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 interpretation." Osram GmbH v. Int 'I
Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation
omitted).
III. CONSTRUCTION OF DISPUTED TERMS
A. The '514 Patent
The purpose of the invention can be summarized as follows:
[A]n object of the invention is to provide improved systems for monitoring
physiological variables, in particular for pressure measurements in the coronary
vessels, and especially for the reliable determination of Fractional Flow Reserve,
FFRmyo·
Another object is to provide methods for calculation of average pressure
values and detection of heart beat[ s] using pressure signals :from the measurements.
The present invention monitors, determines by measuring and calculation
physiological variables related to blood pressure, wherein at least two physiological
variables, arterial pressure Pa and distal coronary pressure Pct, [are] detected by and
derived from a guidewire-mounted pressure sensor. Myocordial Fractional Flow
Reserve (FFRmyo) is determined by calculating a ratio Pct/Pa from said measured
physiological variables (Pa, Pct) and a graph is formed and displayed of the data
resulting :from said calculation. The invention also provides an Interactive
[G]raphical User Interface system for controlling the performance of and for
displaying, in at least one screen on a display in a monitoring unit, intermediate and
final results of said invented method.
One advantage[] of the present invention [is] that the FFRmyo-value has a
clear breakpoint of 0.75 between significant and non-significant stenoses. This
value is easily and rapidly obtained by intracoronary pressure measurements at
maximum vasodilation by use of the invented method and system.
Another advantage is that the Interactive [G]raphical User Interface system
provides a user-friendly handling.
'514 patent, 1:60-2:22. Claim 16, which contains several of the disputed terms, is representative
and recites a:
System for monitoring, determining by measurement and calculation and
graphically displaying physiological variables related to blood pressure,
comprising:
a graphical user interface for selection of functions :from a menu system;
4
a sensor element, said sensor element being capable of detecting
continuously at least two physiological variables, arterial pressure (P a) and distal
coronary pressure (Pd) and delivering processable signals to a unit being able to
process [] said processable signals;
a ratio element, said ratio element being capable of calculating a ratio
P ct!P a from said measured physiological variables (Pa, Pd) by processing said
processable signals;
a display element, said display element being capable of forming a graph
and displaying said graph of the data resulting from said calculation;
a marking element, said marking element being capable of marking
automatically, or manually by an operator/user, at least one interesting point or
portion on the graph; and
a calculating element, said calculating element being capable of using said
interesting point on the graph for calculating a new physiological variable.
Id. at claim 16.
1. "a ratio element, said ratio element being capable of calculating a ratio Pct!P a from said
measured physiological variables (Pa, Pd) by processing said processable signals"
a. Volcano's proposed construction: This is a means-plus-function term with the
function of"calculating a ratio Pd/Pa from said measured physiological variables (Pa, Pct) by
processing said processable signals." The corresponding structure is "a computer program or
computer software that can divide said measured physiological variable (Pd) by said measured
physiological variable (Pa) by processing said processable signals." If§ 112, ~ 6 does not apply,
then the term means "a computer program or computer software that can divide said measured
physiological variable (Pct) by said measured physiological variable (Pa) by processing said
processable signals."
b. St. Jude's proposed construction: "A computer program or computer software
that can divide a distal coronary pressure from the measured physiological variable Pd by an
arterial pressure from the measured arterial pressure Pa." Alternatively, if§ 112, ~ 6 applies, the
corresponding structure would be "a computer program or computer software that can divide a
5
distal coronary pressure from said measured physiological variable Pd by an arterial pressure
from said measured arterial pressure P a."
c. Court's construction: "A computer program or computer software that can
divide said measured physiological variable (Pd) by said measured physiological variable (Pa) by
processing said processable signals."
The term "a ratio element, said ratio element being capable of calculating a ratio P diP a
from said measured physiological variables (Pa, Pd) by processing said processable signals" is
not properly construed as a means-plus-function limitation. 1 A claim term that does not contain
the word "means" is presumptively not subject to § 112, ~ 6 (now§ 112(f)). See CCS Fitness,
Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). The presumption "can be
overcome if it is demonstrated that 'the claim term fails to recite sufficiently definite structure or
else recites function without reciting sufficient structure for performing that function.'" Lighting
World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting CCS
Fitness, 288 F.3d at 1369); Mass. Inst. of Tech. & Elecs.for Imaging, Inc. v. Abacus Software,
462 F.3d 1344, 1354 (Fed. Cir. 2006) ("MIT') ("Claim language that further defines a generic
term like 'mechanism' can sometimes add sufficient structure to avoid 112 ~ 6.").
This presumption, however, "is a strong one that is not readily overcome." Lighting
World, 382 F.3d at 1358; Flo Healthcare Solutions, LLC v. Kappas, 697 F.3d 1367, 1374 (Fed.
Cir. 2012) ("When the claim drafter has not signaled his intent to invoke§ 112, ~ 6 by using the
term 'means,' we are unwilling to apply that provision without a showing that the limitation
1
The following analysis applies with equal force to the "ratio element" term in claim 24. Therefore, "a ratio
element, said ratio element being capable of continuously calculating a ratio between two calculated average
pressures Pd!Pa from said floating average of measured physiological variables (Pa, Pd)" is construed to mean "a
computer program or computer software that can continuously divide said floating average of measured
physiological variable (P d) by said floating average of measured physiological variable (P .)."
6
essentially is devoid of anything that can be construed as structure. Thus, we will not apply §
112, ~ 6 if the limitation contains a term that 'is used in common parlance or by persons of skill
in the pertinent art to designate structure.'" (internal citations omitted)). Even though a term
might not bring a particular structure to mind, that is not dispositive and the court can look to the
dictionary to see if the term is one that is "understood to describe structure, as opposed to a term
that is simply a nonce word or a verbal construct that is not recognized as the name of structure
and is simply a substitute for the term 'means for."' 2 Lighting World, 382 F.3d at 1360; MIT,
462 F.3d at 1354.
In MIT, for example, the Federal Circuit found that the term "colorant selection
mechanism" was subject to§ 112, ~ 6. See MIT, 462 F.3d at 1354 (noting that the patentee used
"mechanism" and "means" as synonyms and that "[ a]t least one dictionary definition equates
mechanism with means"). Moreover, "colorant selection" was not defined in the specification,
did not have a dictionary definition, and there was no showing that "colorant selection
mechanism" would "connote sufficient structure" to one of ordinary skill in the art. !d. The
Federal Circuit later relied on MIT in holding that a claim reciting a "mechanism for moving said
finger" was subject to§ 112, ~ 6. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095-97
(Fed. Cir. 2008). In addition to a dearth of structural context in the claim language, the
"mechanism for moving said finger" also lacked an adjective that "endows the claimed
'mechanism' with a physical or structural component." !d. at 1096. Recognizing that the person
having ordinary skill in the art ("PHOSITA") "would have no recourse but to tum to the []
patent's specification to derive a structural connotation for the generically claimed 'mechanism
for moving said finger,"' the Court applied§ 112, ~ 6. !d. (hinting that inclusion of"a 'finger
2
A "nonce word" is "a word coined and used for a single occasion."
7
displacement mechanism,' a 'lateral projection/retraction mechanism,' or even a 'clamping
finger actuator,"' in the patent would have provided sufficient structural support to permit the
court to delve into the PHOSITA's understanding ofthe term). In contrast, the Federal Circuit
held that "detent mechanism" was not subject to § 112, ~ 6 because "the noun 'detent' denotes a
type of device with a generally understood meaning in the mechanical arts, even though the
definitions are expressed in functional terms." Greenberg v. Ethicon Endo-Surgery, Inc., 91
F.3d 1580, 1583 (Fed. Cir. 1996).
Although an examination of the language in claim 16 shows that the "ratio element"
limitation itself is devoid of structure, § 112, ~ 6 is inapplicable because the patentees acted as
their own lexicographers. In its MIT decision, the Federal Circuit noted that whether the claim
term was "defined in the specification" is a relevant consideration for determining the
applicability of§ 112, ~ 6 to claim language that does not contain the word "means." See MIT,
462 F.3d at 1354. The specification here defines an "[e]lement being capable of calculating a
ratio Pct!Pa from said measured physiological variables Pa, Pct by processing said signals" as "a
computer program or computer software, stored in one of the storages connected to the control
unit." '514 patent, 4:57-60. The specification further notes that the "control unit is implemented
as a micro-computer or a CPU." Id. at 4:62. The patentees' definition also shows that "ratio
element" is not merely a nonce word or a substitute for the phrase "means for." See Lighting
World, 382 F.3d at 1358. Instead, the patentees specifically envisioned the "ratio element" as a
computer program or computer software. This is sufficient to prevent Volcano from overcoming
the "strong" presumption against § 112, ~ 6' s application to a claim term that does not contain
the word "means."
8
The parties also disagree on the function ofthe computer program/software, and that
disagreement turns on the meaning ofthe word "from" in the claim language. The claim
language requires calculating a "ratio Pd!Pafrom said measured physiological variables (Pa, Pd)
by processing said processable signals." '514 patent, claim 16 (emphasis added). In other
words, the ratio is calculated by processing the variables Pa and Pd. The word "said" describing
the physiological variables refers to the immediately preceding "sensor element" limitation,
where the patentee claims a "sensor element being capable of detecting continuously at least two
physiological variables, arterial pressure (Pa) and distal coronary pressure (Pd)." Id.
St. Jude's proposal attempts to broaden the scope ofthe claim beyond Paand Pd. More
specifically, St. Jude suggests that the ratio's components are the distal coronary pressure and the
arterial pressure, which are measured from Pd and Pa, respectively. (D.I. 133, p. 1) (proposing as
structure a computer program that can divide "a distal coronary pressure from the measured
physiological variable Pd by an arterial pressure from the measured arterial variable Pa")). St.
Jude's construction is inconsistent with the claim language which defines arterial pressure as Pa
and distal coronary pressure as Pd. The Court adopts Volcano's alternative proposed definition
because it stays true to the claim language and the specification by requiring the division of P d by
Pa through processing the processable signals.
2. "a marking element, said marking element being capable of marking automatically, or
manually by an operator/user, at least one interesting point or portion on the graph"
a. Volcano's proposed construction: This is a means-plus-function term with the
function of"marking automatically, or manually by an operator/user, at least one interesting
point or portion on the graph"; the corresponding structure is "computer software," however, no
9
algorithm implemented by that software is disclosed by the specification. Therefore, this
limitation is indefinite.
The limitation "interesting point or portion on the graph" is also indefinite.
b. St. Jude's proposed construction: "A computer program or computer software
that can mark a point, area, or region on the graphical display of interest to the user, chosen
either automatically or by the user." Alternatively, if§ 112, ~ 6 applies, the corresponding
structure is "a computer program or computer software that can mark a point, area, or region on
the graphical display of interest to the user, chosen either automatically or by the user available
from the graphical interface system."
The term "interesting point or portion on the graph" is not indefinite and means "a point,
area, or region on the graphical display of interest to the user, chosen either automatically or by
the user."
c. Court's construction: "A computer program or computer software that can
mark a point on the graphical display of interest to the user, chosen either automatically or by the
user." The "interesting point or portion of the graph limitation" means "a point on the graph that
can be used to calculate a new physiological variable."
The term "marking element" is not subject to § 112, ~ 6, and the analysis of"marking
element" parallels that of "ratio element," discussed in section III.A.1, supra. Again, the
patentees here acted as their own lexicographers. The specification states that an "[ e]lement
being capable of marking automatically, or manually by an operator/user, at least one interesting
point or portion on the graph ... [is] also implemented as software used by the control unit."
'514 patent, 5:55-61. A definition in the specification is a relevant consideration when
determining whether to apply § 112, ~ 6 to a claim term for which the word "means" is absent.
10
See MIT, 462 F.3d at 1354. Therefore, the Court is persuaded that Volcano has not overcome the
strong presumption against construing "marking element" as a means-plus-function term.
The parties also dispute whether marking an "interesting point or portion on the graph" is
indefinite. Volcano cites Datamize, LLC for the proposition that an objective standard must exist
that permits the public to discern the claimed invention's scope. Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350-56 (Fed. Cir. 2005) (finding "aesthetically pleasing"
indefinite pursuant to § 112, ~ 2 for failing to particularly point out and distinctly claim the
"subject matter which the patentee regards as his invention"). St. Jude responds by pointing to a
definition in the specification. The patentees defined the "interesting point" when calculating
FFR as "the minimum value ofthe displayed pressure ratio-graph." See '514 patent, 5:61-62.
The specification also discusses automatically and manually marking several other points. For
example, the specification describes the system automatically marking the minimum value on the
Pct!Pa graph once the graph is complete. !d. at 7:19-22. If an "artifact," or negative spike, caused
that minimum, the marker "can be moved to a more proper point" where the new FFR value will
be computed. !d. at 7:26-30. The user can also activate the marker function during recording to
mark certain events, such as a cough or when the sensor is moved to a different location. !d. at
7:31-34. Finally, in the event that multiple stenoses are present, the user can "mark a plurality of
measurement points" and use these points "for the calculation of several FFR-values." !d. at
7:35-38. Although these points are not specifically referred to as "interesting points" in the
specification, the patentees' discussion of them in the context of calculating a new physiological
variable makes clear that these points are important and therefore could be of interest to a user.
These examples show that Volcano has failed to meet its burden of proving that
"interesting point" is indefinite. See Datamize, LLC, 417 F.3d at 1347 ("Only claims 'not
11
amenable to construction' or 'insolubly ambiguous' are indefinite."); Personalized User Model
LLP v. Google Inc., 2012 WL 295048, at *23-24 (D. Del. Jan. 25, 2012) (finding patent that
estimates whether documents are "of interest to the user" definite because the specification
describes a method for quantifying whether a document was received positively or negatively by
the user). Moreover, the Court's construction alleviates Volcano's concerns about subjectivity
because any point on the graph can be used to calculate a new physiological variable. The '514
patent, therefore, does not "fail[] to provide any objective way to determine" whether a point
would be considered "interesting." See Datamize, LLC, 417 F.3d at 1356.
3. "a calculating element, said calculating element being capable of using said interesting
point on the graph for calculating a new physiological variable"
a. Volcano's proposed construction: This is a means-plus-function term with the
function of "using said interesting point on the graph for calculating a new physiological
variable"; the corresponding structure is "a computer program or computer software," however,
no algorithm implemented by that program or software is disclosed by the specification.
Therefore, this limitation is indefinite.
The limitations "interesting point on the graph" and "calculating a new physiological
variable" are also indefinite.
b. St. Jude's proposed construction: Section 112, ,-r 6 does not apply and the term
means "a computer program or computer software that can compute a value from the interesting
point or portion." Alternatively, if§ 112, ,-r 6 does apply, the structure is "a computer program or
computer software that can compute a value from the interesting point or portion, such as
calculating FFR using the calculating methods described in the patent."
12
"Interesting point or portion on the graph" is not indefinite and means "a point, area, or
region on the graphical display of interest to the user, chosen either automatically or by the user."
"Calculating a new physiological variable" is not indefinite and means "computing a value from
the interesting point or portion."
c. Court's construction: The "calculating element" term means "a computer
program or computer software that can compute a new physiological variable from the
interesting point." The "interesting point or portion of the graph limitation" means "a point on
the graph that can be used to calculate a new physiological variable." The term "calculating a
new physiological variable" means "computing an FFR value from the interesting point."
The term "calculating element" is not subject to § 112, ~ 6, and the analysis of
"calculating element" parallels that of "ratio element," discussed in section III.A.1, supra.
Again, the patentees here acted as their own lexicographers. The specification states that an
"[e]lement being capable ofusing such an interesting point on the graph for calculating a new
physiological variable [is] also implemented as software used by the control unit." '514 patent,
5:58-61. A definition in the specification is a relevant consideration when determining whether
to apply§ 112, ~ 6 to a claim term for which the word "means" is absent. See MIT, 462 F.3d at
1354. Therefore, the Court is persuaded that Volcano has not overcome the presumption against
construing "calculating element" as a means-plus-function term. 3
As discussed in section III.A.2, supra, "interesting point" is construed to mean "a point
on the graph that can be used to calculate a new physiological variable."
3
Although the Court agrees with the bulk of St. Jude's construction, its proposal that the computer program be able
to compute "a value" is too broad. Both the claim language and the specification describe calculating a "new
physiological variable," not any "value," and the term's definition is limited accordingly. See '514 patent, claim 16;
5:58-60.
13
The parties also dispute whether the term "calculating a new physiological variable" is
indefinite. St. Jude argues that FFR is an example of a new physiological variable that is
supported by the specification. 4 Volcano counters that there is no support for the calculation of
any new physiological variable in the specification, and that FFR cannot be a new physiological
variable, within the meaning of the claim language, because FFR is already calculated at each
point by the "ratio element." (D.I. 133, p. 65).
The specification discloses the idea of calculating a new physiological variable in
connection with its description ofthe flow chart in Figure 2. See '514 patent, 3:21-24
("[M]arking automatically, or manually by an operator/user, at least one interesting point or
I
portion on the graph; [and] using such an interesting point on the graph for calculating a new
can be moved to a "more proper point, and the system will immediately display the FFR-value
I
I
corresponding to the point selected." Id. at 7:28-30. The Court disagrees with Volcano's
I
physiological variable."). The specification further states that if an artifact is detected the marker
i
~
f
(
argument that the use of the word "display," instead of"calculate," in this passage means that the
FFR value has already been calculated at every point on the graph prior to placing the marker on
any particular point. See id. Additionally, the specification discloses the formula for calculating
FFR. ld. at 1:28-36.
This constitutes sufficient evidence to find that FFR is one example of a new
physiological variable within the context of the claim language. In the Court's opinion,
constraining "calculating a new physiological variable" to what is disclosed in the specification,
4
St. Jude also points to the gradient (Pa-Pct) as a physiological variable "well-known in the art," but readily admits
that its calculation "is not spelled out in the '514 patent." (D.I. 133, p. 61).
14
I
!
~
namely FFR, is the proper construction here. 5 Therefore, "a new physiological variable" is not
"insolubly ambiguous," and the Court declines to find the term indefinite.
4. "software code for performing the steps of claim 1" and "a computer readable
program for causing a processor in a control unit to control an execution of the steps of claim 1"
a. Volcano's proposed construction: This is a means-plus-function term with the
function of "performing the steps of claim 1"; the corresponding structure is "computer
software," however, no algorithm implemented by that software is disclosed by the specification.
Therefore, this limitation is indefinite. 6
b. St. Jude's proposed construction: "A computer program or subroutine."
c. Court's construction: Plain and ordinary meaning.
Volcano argues that it has overcome the presumption against applying§ 112, ,-r 6 to
"software code" and "computer readable program" because the only structure provided in the
claim language is unspecified software. St. Jude, on the other hand, alleges that both terms mean
"a computer program or subroutine." The Court is not persuaded that it should adopt either
construction.
In support of its position, Volcano principally relies upon the Federal Circuit's Altiris
decision. There, the claim language described a "means of booting" that involved a first and
second "set of commands," and the Court concluded that it was a means-plus-function limitation.
Altiris, Inc. v. Symantec Corp, 318 F.3d 1363, 1375-76 (Fed. Cir. 2003). But the term "means
for booting" at issue in Altiris has the word "means" in the claim language. As a result, and
5
St. Jude does not contest this narrowing construction. (D.I. 133, p. 61 ("[W]hether the Court limits 'calculating
element' to FFR or adopts St. Jude's broader construction is irrelevant.")).
6
Volcano's proposed construction for "a computer readable program for causing a processor in a control unit to
control an execution of the steps of claim 1" is identical, with the exception that the proposed function is "causing a
processor in a control unit to control an execution of the steps of claim 1."
15
unlike the disputed terms here, there was no presumption against applying§ 112, ~ 6. In the
same decision the Federal Circuit affirmed the district court's construction of"automation code,"
which is more analogous to the computer program at issue here, outside of the§ 112, ~ 6
framework. !d. at 1374-75 (defining "automation code" as "the code in the automation partition
which loads an operating system, LAN drivers for the resident NIC, and a program for reading a
database on the network server to ascertain the automation commands to be executed").
St. Jude did not elaborate on why it included a "subroutine" in its proposed definition.
If, as it appears from the context of St. Jude's argument, a subroutine is simply part of a
computer program, its inclusion seems redundant. Therefore, both terms are to be construed
according to their plain and ordinary meaning. See Phillips, 415 F.3d at 1312 ("[W]ords of a
claim are generally given their ordinary and customary meaning." (internal quotations omitted)).
5. "displaying ... intermediate and final results of the method of claim 1"
a. Volcano's proposed construction: "Display[ing] the values of the ratio Pd!Pa as
they are calculated (i.e., in real-time)."
b. St. Jude's proposed construction: "Displaying values of any of the following
results: processable Pa values, processable Pd values, floating average, or a ratio Pd/Pa."
c. Court's construction: "Displaying values of any of the following results:
processable Pa values, processable Pd values, floating average, or a ratio Pd!Pa."
The issue here is the definition of "intermediate and final results" in the context of the
'514 patent. St. Jude argues that the intermediate results are "values such as the processable Pa
and Pd values and the floating averages," and the final result is "a ratio Pd/Pa." (D.I. 133, p. 79).
Volcano counters that the final result is "the specified graph of PdiP a formed and displayed, and
therefore the 'intermediate result,' which is not described in the '514 patent, must be referring to
16
a portion of the same 'result'-a graph formed and displayed as it is created." (!d., p. 82). The
Court agrees with St. Jude.
Claim 5 is dependent on claim 1, which requires "detecting continuously at least two
physiological variables, arterial pressure (Pa) and distal coronary pressure (Pd)," "transducing
said physiological variables to processable signals," delivering those signals to a processing unit,
processing the signals, and then continuously calculating a ratio. '514 patent, claim 1. It is true
that the P d and P a values are inputs in the sense that they are components of the final result: the
Pd!Pa ratio. But Pd and Pa are also the result of the intermediate steps of claim 1, including the
transducing step. Therefore, the "intermediate and final results" properly encompass these
values as intermediate results and the claim is not limited to displaying real-time results, as
posited by Volcano.
6. "displaying said graph of the data resulting from said calculation"
a. Volcano's proposed construction: Indefinite.
b. St. Jude's proposed construction: "Displaying said graph" means "displaying
as a set of points, as a line or line segment, as a curve, or as an area"; "of the data resulting from
said calculation" means "of a ratio (P d-Pv)/(Pa-Pv)."
c. Court's construction: "Displaying said graph" means "displaying as a set of
points, as a line or line segment, as a curve, or as an area"; "of the data resulting from said
calculation" means "of a ratio (Pd-Pv)/(Pa-Pv)."
Volcano argues that the term "displaying said graph of the data resulting from said
calculation," found in dependent claim 2, is indefinite. Volcano notes that both claim 1 and
dependent claim 2 teach a method that involves a calculation, and that claim 2 's reference to
graphing "said calculation" is insolubly ambiguous because a PHOSITA would not know
17
whether the calculation in claim 1 or claim 2 must be graphed. See Exxon Research & Eng 'g
Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). It would be legal error, according to
Volcano, to impute an order into the steps of a method claim unless an order is actually recited.
See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001).
Therefore, Volcano insists that there is no basis for construing the second "graphing" limitation
as referring to the second calculation. St. Jude counters that both claim 1 and claim 2 have a
calculation limitation and a graphing limitation, thereby making it obvious to the PHOSITA
which calculation is graphed in which claim. The Court agrees with St. Jude.
A brief description of the claim structure is instructive. Claim 1 is a method claim and
one of its limitations describes calculating a ratio ofPct!Pa. The following limitation requires
"forming a graph and displaying said graph of the data resulting from said calculation." Claim
I 's requirement to graph "said calculation" clearly refers to the calculated ratio ofPctiPa. Claim 2
is dependent on claim 1 and is laid out in a similar structure. The fourth limitation of claim 2
discloses the calculation of a new ratio: (Pct-Pv)/(Pa-Pv). The fifth and final limitation of claim 2
requires "forming a graph and displaying said graph of the data resulting from said calculation."
In this context, it is clear that "said calculation" in claim 2 refers to the ratio calculation
disclosed in the immediately preceding limitation of claim 2, namely (Pct-Pv)/(Pa-Pv), and not the
ratio disclosed in claim 1. This construction is consistent with the rules of English grammar and
common sense. See Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1336 (Fed. Cir. 2008)
(recognizing instances where courts applied "the rules of English grammar to statutory
construction"). Were that not the case, the calculation in claim I would be graphed twice-in
both claim 1 and dependent claim 2-and the calculation described in claim 2 would not be
I8
graphed at all. This cannot be the case, and the more logical reading of the claims is the one
advanced by St. JudeJ
IV. CONCLUSION
Within five days the parties shall submit a proposed Order consistent with this
Memorandum Opinion suitable for submission to the jury.
7
During the Marlanan hearing the Court invited Volcano to submit a letter citing a Federal Circuit case holding that
a claim term with two possible antecedents is indefinite. Volcano provided a letter citing Baldwin Graphic Systems
v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir. 2008). (D.I. 161). Volcano admits that Baldwin is "not controlling with
regard to the specific facts presented here." (Jd.). In fact, Baldwin addresses whether the use of defmite articles to
refer back to a claim term prefaced with the indefmite article "a" or "an" can alter the default rule that "a" or "an"
means "one or more." See Baldwin Graphic Systems, 512 F.3d at 1342-43. The question currently before the Court,
however, is whether the presence of two possible antecedents renders a claim indefmite. Although the Baldwin
court cites the section of the Manual of Patent Examining Procedure that Volcano relies on to support its position,
the facts are distinguishable and the court's analysis does not illuminate the current inquiry.
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