Sarif Biomedical LLC v. Brainlab Inc. et al

Filing 125

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 8/26/15. (ntl)

IN THE UNITED STATES DISTRICT COURT
. FORTHE DISTRICT OF DELAWARE
SARIF BIOMEDICAL LLC,
Plaintiff,
. v.

BRAINLAB, INC.; BRAINLAB AG;
BRAINLAB MEDIZINISCHE
COMPUTERSYSTEME GMBH
Defendants.

)
)
)
)
)
)
)
)
)
)
)

C.A. No. 13-846-LPS

Richard D. Kirk, Stephen B. Brauerman, Vanessa R. Tiradentes, Sara E. Bussiere, BAYARD,
P.A., Wilmington, DE
Marc A. Fenster, Jeffrey Z.Y. Liao, RUSS, AUGUST & KABAT, Los Angeles, CA
Attorneys for Plaintiff

Maryellen Noreika, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE
Jay R. Campbell, Joshua M. Ryland, TUCKER ELLIS LLP, Cleveland, OH
Attorneys for Defendants

MEMORANDUM OPINION

-August 26, 2015
Wilmington, DE

:k~JL!b
Pending before the Court is the issue of claim construction for nine disputed terms in U.S .
. Patent No. 5,755;725 ("the

I.

~725

patent"), all appearing in claim 1.

BACKGROUND
Plaintiff Sarif Biomedical LLC ("Sarif' or "Plaintiff') filed this patent infringement suit

against Defendants Brainlab, Inc., Brainlab AG, and Brainlab Medizinische Computersysteme
GMBH ("Defendants") on May 14, 2013, alleging infringement of the '725 patent. (D.I. 1) Sarif
amended its complainron July 19, 2013. (D.I. 12)
The '725 patent, entitled "Computer-Assisted Microsurgery Methods and Equipment,"
issued on May 26, 1998. (D.I. 1-1) The '725 patent relates to surgical installations that allow
physicians to guide the position of a surgical tool during an operation using digital images and
reference frames which, when correlated by computer technology, avoid the need to immobilize
the patient during operations. (See D.I. 75 at 1) A goal of the invention is to "assure a
correlation between the digital images obtained by means of a medical imaging system with the
patient so as to provide the surgeon with the data intended to guide his operative strategy in real
time." ('725 patent, col. 2 11. 42-46)
The parties completed claim construction briefing on February 24, 2015. (D.I. 73, 75, 76,
79, 81, 85) The Court conducted a claim construction hearing on March 6, 2015. (D.I. 121)
("Tr.") At the hearing, both sides chose to present live testimony from an expert, and to crossexamine each other's expert. (See Tr. at 6-39, 88-100) Defendants submitted supplemental
authority to the Court on June 22, 2015. (D .I. 124)

1

II.

LEGAL STANDARDS
The ultimate question of the proper construction of a patent is a question of law. See

Teva Phann. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of pat~nt 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).

"[T]here is no magic formula or catechism for conducting claim construction." Id. 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
(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 of the 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 .... " Id. (internal citation omitted).
2

It is likewise true that "[d]ifferences 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." Id. at 131415 (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
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 v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff'd, 517 U.S. 370 (1996). 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 131 7. "[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the

3

invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.
In some cases, "the district court will need to look beyond the patent's intrinsic evidence
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at
841. Extrinsic evidence "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. In addition, expert testimony can be useful "to ensure that the court's understanding of
the technical aspects of the patent is consistent with that of a person of skill in the art, or to
establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must not lose· sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
bias that is not present in intrinsic evidence." Id. 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. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney

Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).

4

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
interpretation." Osram GmbH v. Int'! Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U.S. Int'! Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).

III.

DISPUTED TERMS 1
A.

"microsurgery"

Sarif's Proposal

This term, which appears only in the preamble, is not a limitation.
If construction is necessary, "Surgery performed using
magnification" or "Surgery performed at a fine scale"
If Defendants' construction is adopted, "microscope" should be
defined broadly to include optical, digital, or other types of
microscopes, and not only optical microscopes.
An alternative construction: "Surgery performed using an optical,
digital, or any other type of microscope."

Defendants' Proposal

This term is a limitation.
"Surgery performed using a microscope"

Court's Construction

This term is a limitation.
"Surgery performed at a fine scale"

The parties dispute whether the term "microsurgery," which appears in the preamble of
claim 1, is a limitation and needs construction. Defendants assert that the term must be limiting,

1

The parties agreed to the construction of seven terms, which the Court will adopt. (See
D.I. 69 at 11)
5

since the subsequent use of the term "the tool" - in claim limitation 1(d) - would otherwise lack
an antecedent. (See Tr. at 77)
Generally a preample does not limit the claims. See Allen Eng 'g Corp. v. Bartell Indus.,

Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). However, language in a preamble is limiting "if it
recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the
claim." Catalina Mktg. Int'l, Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(internal quotation marks omitted). Consistent with Catalina, a preamble term is limiting if it:
(1) provides antecedent basis for a claim tenrt, (2) is essential to help understand the claim terms,
(3) provides any additional steps or structure that is underscored as important by the
specification, or (4) was relied on during prosecution. See id.
The preamble to claim 1 of the '725 patent recites: "A computer-assisted microsurgery
installation, comprising ... " ('725 patent, col. 1011. 62-63) This is the only instance of the term
"microsurgery" appearing in the claims of the '725 patent. (See Tr. at 74) The parties agree that
if this use of the term "microsurgery'' is not limiting, then it need not be construed. (See Tr. at
77, 78)
The Court concludes that the preamble of claim 1 is limiting, since it provides the
·antecedent basis for the term "the tool," which appears later in limitations (d)(l ), (d)(2), (d)(3),
and (e) of the sanie claim 1. These later references to "the tool" refer to a microsurgical tool (as
is discussed further below).
Neither the claims nor the specification provide guidance as to the meaning of
"microsurgery" as used in the claims of the '725 patent. The parties have provided competing
declarations of experts. On behalf of Plaintiff, Dr. Filler opined, "A person of skill in the art

6

would understand the term 'microsurgery' to refer to surgery at a fine scale." (D.I. 82 if 67)
Defendants' expert, Dr. Pelc, had a more limited opinion, stating that "microsurgery'' refers only
to "surgery using a microscope." (D.I. 74 if 13) The Court concludes that Dr. Pele's view is too
narrow in the context of the '725 patent, which nowhere mentions a "microscope." (See Tr. at 76
("There is no 'microscope' recited in the '725 patent"); see also id. at 77-78 ("The definitions
that we have given the Court clearly show ... that microsurgery is surgery using a microscope,
and that is just a way of interpreting it. I agree that it's not defined in the specification as that ..
.")) Further, Dr. Filler provided examples of microsurgery which do not utilize microscopes.
(See, e.g., D.I. 82 if 72 (describing microsurgery using loupes)) Accordingly, the Court adopts

Plaintiff's broader construction, "surgery performed at a fine scale."

B.

"tool"

Sarif's Proposal

Plain and ordinary meaning. Alternatively, "a surgical instrument"

Defendants' Proposal

"a microsurgical instrument"

Court's Construction

"a microsurgical instrument"

The parties dispute whether "tool" requires construction and, if so, whether it is limited to
"microsurgical" instruments (as opposed to all surgical instruments). It follows from the Court's
conclusions above regarding "microsurgery'' being a claim limitation, and providing the
antecedent basis for "the tool," that "the tool" must be construed and has the meaning "a
microsurgical instrument." (See Tr. at 79)

7

C.

"an articulated tool support"

Sarif's Proposal

"A structure supporting the tool that allows flexibility of movement
of the tool along plural axes. " 2

Defendants' Proposal

"A structure supporting the tool with at least one arm hinged
between its ends that allows movement of the tool in any direction."

Court's Construction

"A structure supporting the tool and including sections that are
hinged or otherwise connected to allow flexibility of movement of
the tool along plural axes"

The parties dispute whether the term "articulated" as used in the context of the '725
patent requires a hinge. 3 (See Tr. at 79) Defendants argue that Plaintiff's proposal for
"articulated" leaves the limitation nearly meaningless, as without requiring a hinged arm, the
term "articulated" is read out of the claim term. (D.I. 73 at 17)
"Articulated tool support" is not expressly defined in the specification. (See Tr. at 80)
However, an example of an articulated support does appear in the specification. (See '725
patent, Fig. 1a (showing "an articulated support (1 )");see also id. at col. 3 1. 60 - col. 4 1. 22)
Defendants assert that "[t]he term 'articulated tool support' is well-illustrated by the specification
and drawings which show a structure described by defendants' construction." (D.I. 76 at 12)
The embodiment which Defendants rely on is one example of a structure which contains
an articulated tool support. (See '725 patent, col. 411. 8-9) Neither the claims nor the
specification exclude other embodiments, including supports which may not include what has
been traditionally understood to be a joint or hinge. Plaintiff offers extrinsic support for a

2

Plaintiff offered an alternative proposal during the claim construction hearing: "Sections
configured to allow flexibility of movement in plural axes." (Tr. at 83)
Defendants offered aconcession at the hearing that, "if 'hinged' is a problem, 'jointed'
could be used." (Tr. 83)
3

8

broader construction. (See D.I. 82 il 74) (Dr. Filler declaring that person of ordinary skill in the
art would understand that "something that is 'articulated' may or may not be 'hinged' so long as
it is 'otherwise connected so as to allow flexibility of movement."') Dr. Filler identifies
articulated arm supports currently used in the field which do not include hinges. (Id. at il 77)
The parties have also cited to dictionary definitions of "articulated." (See D.I. 75-3

E~.

C

(defining "articulated" as "built in sections that are hinged or otherwise connected so as to allow
flexibility of movement"); see also Tr. at 80 ("built in sections that are hinged or otherwise
connected so as to allow flexibility of movement"), 81 ("consisting of segments united by
joints"))
Having considered this collection of intrinsic and extrinsic evidence, the Court will
refrain from importing limitations from the examples of the specification into the claims. The
Court largely adopts Plaintiff's proposed construction but amends it to ensure that "articulated"
has meaning and that its meaning is consistent with the extrinsic evidence. 4

D.

"a reference frame RP of a patient I patient reference frame RP"

Sarif's Proposal

"A reference frame that moves with points in or on the patient".

Defendants' Proposal

"A reference frame that moves with the position of markers placed
on, worn by, carried by, or implanted into a patient."

Court's Construction

"A reference frame that moves with points in or on the patient"

The parties dispute whether naturally-occurring "points" on the patient can serve as the
reference frame of the patient, or whether the claim term is limited to specific "markers." The

4

This alternate construction also incorporates Plaintiff's proposal during the hearing to
include the concept of "sections." Since the "sections" must somehow be connected, the Court's
construction uses the language which Dr. Filler relied upon and the which Plaintiff cited in its
brief: "hinged or otherwise connected."
9

specification discloses various methods for localizing the patient: "by installing a normalized
rigid trihedron, or by installing unaligned implants, or by designating characteristic[] points of
the surface of the patient ... for example, the nose, the comers of the eyes or the chin." ('725
patent, col. 5 1. 67 - col. 6 1. 11) Defendants contend that even this last method requires "marking
4 conspicuous point[s] on the patient (for example, the nose, the eyes, etc.)." (Id. at col. 711. 2930)

Although the specification discloses "marking," there is no mention of "markers" and
Defendants' construction does not define what a marker is. Furthermore, the marking
contemplated by the specification is to define the "points in or on the patient," indicating that the
point on the patient that can serve as the reference (rather than the marker always having to serve
as the reference). Therefore, the Court will adopt Plaintiff's proposed construction, which is not
limited to specific markers.

E.

"A function of the position of a reference frame RP
of a patient in the fixed reference frame Re''

Sarif's Proposal

"varying based on where the reference frame ~ of a patient is
located relative to the fixed reference frame Re"

Defendants' Proposal

"has a known mathematical relationship with [the position of a
reference frame ~ of a patient in the fixed reference frame RcJ''

Court's Construction

"varying based on where the reference frame ~ of a patient is
located relative to the fixed reference frame Re"

The parties dispute whether the claim term "a function of' requires "a known
mathematical relationship" as proposed by Defendants. Claim limitation 1(c) recites "at least
two sensors, integral with the fixed reference frame Re, supplying a signal that is a function of the

10

position of a reference frame~ of a patient in the fixed reference frame Re." (Id. at col. 1111. 14)
The specification does not teach a "known mathematical relationship" and Defendants
cite no intrinsic evidence for their reliance on this narrow definition of the term "function." The
Court has been directed to no persuasive basis for restricting the claim term in the manner
proposed by Defendants. Hence, the Court will adopt the plain and ordinary meaning, which is
the construction proposed by Plaintiff.

F.

"control position and displacements of the tool as a
function of control signals originating from a control unit,
wherein the fixed reference frame Re is independent of the
patient reference frame RP and of the image reference frame Ri"

Sarif's Proposal

This element is not a means-plus-function clause.
Plain and ordinary meaning.

Defendants' Proposal

This element is a means-plus-function clause
Function:

"control position and displacements of the tool as a
function of control signals originating from a control
unit, wherein the fixed reference frame Re is
independent of the patient reference frame ~ and of
the image reference frame R_/'

Structure:

Not supported in the specification

Alternatively, if the term is not indefinite:
"control movements of the tool using the real-time signal from the at
least two sensors"5

5

Defendants offer an alternative construction in the event the Court finds that the term is
not indefinite. (See Tr. at 68-69) Plaintiff agrees that this alternative construction is the plain
and ordinary meaning and does not object to its adoption. (Tr. at 72)
11

Court's Construction

This element is a means-plus-function clause
Function:

"control position and displacements of the tool as a
function of control signals originating from a control
unit, wherein the fixed reference frame Re is
independent of the patient reference frame ~ and of
the image reference frame ~"

Structure:

Not supported in the specification

First, the parties dispute whether this element is a means-plus-function term. If the Court
finds that it is, Defendants assert that no structure has been disclosed as required under§ 112,

if 6.

In the alternative, if the Court finds that this is not a means-plus-function claim, then the

parties agree as to the construction which should be adopted.
The Federal Circuit has articulated the analysis for determining whether a claim invokes
§ 112, if 6, as follows:
The overall means-plus-function analysis is a two-step process ....
In the first step, we must determine if the claim limitation is
drafted in means-plus-function format. As part of this step, we
must construe the claim limitation to decide if it connotes
"sufficiently definite structure" to a person of ordinary skill in the
art, which requires us to consider the specification (among other
evidence). In the second step, if the limitation is in means-plusfunction format, we must specifically review the specification for
"corresponding structure." Thus, while these two "structure"
inquiries are inherently related, they are distinct.
Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1296 (Fed. Cir.- 2014).

The disputed claim term here appears in claim 1, which recites, "(d) a computer adapted
to: ... (3) control position and displacements of the tool ...." ('725 patent, col. 11 11. 5-13)
(hereinafter, "the (d)(3) term") For the (d)(3) term- as well as the (d)(l) term discussed in the
next section- Defendants arguethat although the claim does not use the term "means," the claim
12

language is equivalent to typical means.;.plus-function claim language and, therefore, the claim
·limitation comes within the scope of§ 112,

ir 6 .

. "Without the term 'means,' a claim element is presumed to fall outside
means-plus-function strictures." Micro Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d
1250, 1257 (Fed. Cir. 1999); see also Personalized Media Commc 'ns, LLC v.· Int'! Trade

Comm 'n, 161 F.3d 696, 703-04 (Fed. Cir. 1998) ("[F]ailure to use the word 'means' creates a
presumption that§ 112, if 6 does not apply."). Subsequent to the claim construction hearing in
this case, the Federal Circuit stated:
The standard is whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite
meaning as the name for structure. When a claim term lacks the
word "means," the presumption can be overcome and § 112, para.
6 will apply if the challenger demonstrates that the claim term fails
to "recite sufficiently definite structure" or else recites "function
without reciting sufficient structure for performing that function."

Williamson v. Citrix Online, LLC, 792 F. 3d 1339, 1349 (Fed. Cir. 2015} (en bane) (internal
·citations omitted). 6 In addition, the Federal Circuit abandoned "characterizing as 'strong' the
presumption that a limitation lacking the word 'means' is not subject to§ 112, para. 6." Id.
In this case, the presumption against means-plus-function claiming in the absence of the
word "means" has been overcome. The (d)(3) term, and the entirety of the intrinsic (and
extrinsic) evidence, fail to recite sufficiently definite structure to accomplish the function of
"control position and displacem~nts of the tool as a function of control signals originating from a
control unit." Claim 1 's "computer adapted to" perform this function is an insufficient disclosure

6

Williamson is the subject to Defendants' post-hearing submission of supplemental
authority. (D .I. 124) Plaintiff qid not respond to Defendants' filing.
13

of structure as there is no disclosure as to how the computer would perform the function. "[I]f a
claim recites a generic term that, properly construed in light of the specification, lacks
sufficiently definite structure to a person of ordinary skill in the art, the presumption is overcome
and the patentee has invoked means-plus-function claiming." Apple, 757 F.3d at 1300.
Moreover, as recently stated by the Federal Circuit in Williamson, "the fact that one of skill in the
art could program a computer to perform the recited functions cannot create structure where none
otherwise is disclosed." Williamson, 792 F.3d at 1351.
The Court is persuaded by Defendants that there is insufficient structure disclosing how
the computer in claim l(d) "control[s the] position and displacements of the tool." ('725 patent,
col. 11 1. 13) Plaintiff contends:
The '725 patent explains that the previously acquired digital
imaging data, after being processed by calibration, segmentation,
and indexing, can be used to plan the movements of the tool during
the operative phase and that the algorithms disclosed in the '725
patent for establishing correspondence among the tool reference
frame Ro, fixed reference frame Re, patient reference frame Rp,
and image reference frame Ri enable "automatic control of the tool
in real time in relation to a target defined in the image data base."
(D.I. 79 at 7) (internal citations omitted) Plaintiff further relies on equations disclosed in the
specification as the purported requisite structure for controlling the position of the tool in step
(d)(3). (See '725 patent, col. 1011. 53-56) However, Plaintiff- and its expert Dr. Fillerconcedes that "the structure of the device that performs the recited function are the numerous
well-developed systems, including general purpose IBM PC or Apple computers running
specialized software." (D.l. 79 at 8 (emphasis added); see also D.l. 82 if 53 ("As of the filing
date of the '725 patent, a person of skill in the art would understand that the 'computer' and

14

'control unit' performing this function would be a small general-purpose computer in the
operating room - universally either an Apple or an IBM PC type computer depending on surgeon
preference, running specialized software, and there would be no need for the '725 patent to
identify the precise type of computer or control unit that could be used given this well-known
understanding.")) This is inadequate disclosure of structure to support a means-plus-function
term. The patent provides no guidance as to how the computer would operate, other than the
general assertion that it would run "specialized software."

G.

"determine correspondence of a reference frame R 0 of
the tool with the patient reference frame RP and the image
reference frame Ri as a function of the signal from the at least two sensors"

Sarif's Proposal

This limitation is not a means-plus-function clause.
Plain and ordinary meaning

15

Defendants' Proposal

This element is a means-plus-function clause
-Function:

Structure:

"determine correspondence of a reference frame R 0
of the tool with the patient reference frame R,, and the
image reference frame R; as a function of the signal
from the at least two sensors."
Not supported in the specification

Alternatively, ifthe term is not indefinite:
"the signal that provides the measurements of the position and
orientation of the tool reference frame and the patient reference
frame" 7

Court's Construction

This element is a means-plus-function clause
Function:

"determine correspondence of a reference frame R 0
of the tool with the patient reference frame ~ and the
image reference frame R; as a function of the signal
from the at least two sensors."

Structure:

The corresponding structure related to this term is
disclosed in the specification of the '725 patent at
col. 7, 1. 66 through col. 10, 1. 56. 8

7

Defendants offer an alternative construction should the Court find that the term is not
indefinite. (See Tr. at 69) Plaintiff agrees that this proposal is the plain and ordinary meaning
and does not object to its adoption. (Tr. at 72) Although Defendants repeatedly stated (in their
briefing and at the hearing) this alternative construction should be adopted if the term is not
indefinite, the Court understands Defendants' alternative proposal to be pertinent only ifthe
Court determines the claim term is not a means-plus-function term. (See Tr. at 69, 72) However,
having found that Defendants have overcome the presumption against this term being a meansplus-function term, the Court will not adopt Defendants' alternative proposal, as that alternative
is not a means-plus-function construction.
8

N either party proposed what structure the Court should identify if it finds the (d)( 1) term
is means-plus-function, but sufficiently definite, as it does here. Therefore, the Court relies on
Plaintiffs answering brief to identify the associated structure. (See D.I. 79 at 8)
16

This dispute is analogous to the one just discussed, although the outcome differs. Claim
1 element (d) recites: "(d) a computer adapted to: ... (1) determine correspondence of a
reference frame R 0 of the tool with the patient reference frame
~as

~

and the image reference frame

a function of the signal from the at least two sensors." ('725 patent, col. 1111. 5-9)

(hereinafter, "the (d)(l) term") Defendants again contend that although the term "means" is not
used, they have rebutted the presumption against construing the (d)(l) term as a means-plusfunction term. Plaintiff disagrees.
The Court concludes that while Defendants have overcome the presumption against this
term being a means-plus-function term, Defendants have failed to show that there is insufficient
structure disclosing how the computer claimed in the (d)(l) term "determines correspondence" of
the tool reference frame, the patient reference frame, and the image reference frame "as a
function of the signal from the at least two sensors." (Id. at col. 11 11. 6-9) As Plaintiff explains,
algorithms disclosed in the specification correspond to the functional language of the (d)(l) term,
including in Step 1 of the specification as found in columns 6 and 7. (See Tr. at 71) Step 1
teaches the "[i]mplementation of concordance between the image reference frame and the patient
reference frame." ('725 patent, col. 611. 42-43) Once the patient and the image references
correspond, the patent teaches steps for corresponding the tool and fixed reference frames (Step
2), and the image and camera reference frames (Step 3). (Id. at col. 7 1. 66 - col. 10 1. 27) Finally,
Step 4 teaches "[i]mplementation of concordance between the image reference frame and the tool
reference frame." (Id. at col. 10 11. 28-29)
Unlike the (d)(3) term, the (d)(l) term does identify sufficient structure to perform the
identified function. The specification adequately discloses how the computer "determine[ s]
17

correspondence" of the various reference frames. The mathematical equations and steps set forth

in the specification provide a person of ordinary skill in the art sufficiently definite structure.
The structure provided in the specification is also clearly linked to the function of the
(d)(l) term, which is to correspond three reference frames - the patient, the image, and the tool - ·
as a function of the signal received from sensors. As Plaintiff explains:
A person of skill in the art reading the '725 patent would
understand that the patient frame of reference (~) is simply the
real version of the virtual data set (R) [the image reference frame] .
. . . When the patient is positioned in the room it is possible to
locate various points in the patient/image reference frame (~ and
R) and place them within the room reference frame. This allows
these three systems to be fused . . . . Once this is done, when the
tool frame of reference R0 is moved relative to the Re room frame,
it will simultaneously be possible to know how the tool is moving
relative to the patient and image frames.
(D.I. 79 at 8-9)

H.

"visualization of position of the tool in the image reference frame Rt

Sarif's proposal

Defendants' proposal

Court's Construction

"displaying the current position of the tool relative to objects in the
preoperative images of the patient that define the image reference
frame R/'
"displaying the current position of the tool overlaid on the
preoperative images of the patient that define the image reference
·frame R"
"displaying the current position of the tool relative to objects in the
preoperative images of the patient that define the image reference
frameR/'

The parties are in agreement that "an image reference frame R" is "a reference frame that
defines the position and orientation of objects in the preoperative images."· (D.I. 69 at 11) The
parties do not agree, however, whether the preoperative image is overlaid, as Defendants

18

contend, or may instead simply be displayed "relative to objects in the preoperative images," as
Plaintiff asserts.
Defendants argue, "The disputed claim language requires that the position of the tool
must be shown in the image reference frame . . . The tool's current position can only be
displayed in the preoperative images if it is overlaid on those images." (D.I. 73 at 19)
Neither the claims nor the specification use the term "overlaid." The requirement that
"the position of the tool [be displayed] in the image reference frame R_/' (see '725 patent, col. 11

11. 10-12), can be satisfied through an overlay of the images, but this is not the only way it may be
satisfied. Accordingly, the Court will adopt Plaintiffs proposed construction.

I.

"means for determining coordinates of the tool in the fixed reference system
Re based on data from the image data base"

Sarif's Proposal

This element is a means-plus-function clause.
Function:

"determining coordinates of the tool in the fixed
reference system Rc based on data from the image
data base."

Structure:

"at least two acquisition camera~ integral with the
fixed reference system Rc and positions such that
their field of observation contains the mobility space
of the tool" disclosed at Col. 3 Lns. 39-43 and the
algorithms disclosed at Col. 7 Ln. 66-Col. 9 Ln. 60
under the heading "Step 2: Implementation of
concordance between the tool reference frame and
the fixed reference frame."

19

Defendants' Proposal

This element is a means-plus-function clause.
Function:

Structure:
Court's Construction

"determining coordinates of the tool in the fixed
reference system Rc based on data from the image
data base."
Not supported in the specification.

This element is a means-plus-function clause.
Function:

"determining coordinates of the tool in the fixed
reference system Rc based on data from the image
data base."

Structure:

Not supported in the specification.

The parties agree this is a means-plus-function term, and further agree on the function,
but disagree as to whether there is a disclosed structure. Sarif points to the acquisition cameras
and the algorithms disclosed in the patent specification as the requisite corresponding structure
for the agreed-upon function. (Tr. at 42-43) Defendants contend that there is no adequate
disclosure of corresponding structure. They put on their expert, Dr. Pelc, to testify at the hearing
with respect to this claim dispute. (See, e.g., Tr. at 89-93) Having considered the intrinsic and
extrinsic evidence, the Court agrees with Defendants.
The specification states, "[T]he means for determining the coordinates of the tool in said
fixed reference system Rc are constituted by at least two acquisition cameras integral with the
fixed reference system Rc and positioned such that their field of observation contains the mobility
space of the tool." ('745 patent, col. 3 11. 39-43) The acquisition cameras are (as both sides
agree) clearly linked to at least a portion of the recited function. (See, e.g., Tr. at 43, 47)
However, the Court further agrees with Defendants that the cameras do not determine the

20

coordinates "based on data from the image data base." (See Tr. at 48 ("The problem we have
here is that ... [t]here is no image database. The cameras obviously don't take things from the
image database."); see also id. at 11 (Sarif s expert Dr. Filler agreeing that function envisions
using data image database to determinate what tool coordinates should be.))
Sarif encourages the Court to _find adequate structure from the algorithms disclosed over
four columns of the patent, which describe going from one frame of reference to another,
encompassing "Step 2: Implementation of concordance between the tool reference frame and the
fixed reference frame," "Step 3: Implementation of concordance between the image reference
frame and the camera reference frame," and "Step 4: Implementation of concordance between the
image reference frame and the tool reference frame." ('745 patent, col. 71. 66 - col. 101. 60)
Sarif s expert testified at the hearing that he believes the necessary structure is disclosed as the
transformation equation found in Column 10, which "makes it possible to control the tool in realtime, just to determine its position, in relation to a target that's defined in the image database."
(Tr. at 12) This same expert, Dr. Filler, further testified that the transformation algorithms allow
a person practicing the invention to:
go from one frame of reference into another frame of reference ....
[T]he transformation would allow you to shift, reinterpret the
coordinates so that you can move continuously from one to the
other frame. That is performed by these transformation algorithms
which are laid out in the specification. . . . Step 2 . . . . Position
the tool in the reference frame based on the camera. Step 3,
correlate the image reference frame. And then we want to then
position the tool based on the image reference frame. So 2, 3, 4.
(Tr. at 13-14)

21

While it is true that the specification teaches detailed formulas for transitioning from one
frame to another, there is no clear structural link for the cameras to use the image database to
determine the coordinates of the tool - which is the disclosed function. Therefore, the Court is
persuaded by Defendants (and their expert, Dr. Pelc) with respect to this claim term.

VI.

CONCLUSION
An appropriate order follows.

22