Boston Scientific Corporation et al v. Cook Group Incorporated et al
REPORT AND RECOMMENDATIONS regarding the matter of Claim Construction. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 5/1/2017. Signed by Judge Christopher J. Burke on 4/12/2017. (dlk)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
BOSTON SCIENTIFIC CORPORATION
and BOSTON SCIENTIFIC SCIMED,
COOK GROUP INCORPORATED and
COOK MEDICAL LLC,
Civil Action No. 15-980-LPS-CJB
REPORT AND RECOMMENDATION
In this action filed by Plaintiffs/Counterclaim Defendants Boston Scientific Corporation
("BSC") and Boston Scientific SciMed, Inc. ("BSSI") (collectively, "Plaintiffs" or "Boston
Scientific") against Defendants/Counterclaimants Cook Group Incorporated and Cook Medical
LLC (collectively, "Defendants" or "Cook"), Plaintiffs allege infringement ofUnited States
Patent Nos. 8,685,048 (the '"048 patent"), 8,709,027 (the '"027 patent"), 8,974,371 (the "'371
patent"), and 9,271, 731 (the "'731 patent") (collectively, the "asserted patents" or the "patents-insuit"). Presently before the Court is the matter of claim construction. The Court recommends
that the District Court adopt the constructions set forth below for the three terms discussed in this
Report and Recommendation. 1
BACKGROUND AND LEGAL STANDARDS
On December 22, 2016, the Court issued a Report and Recommendation
regarding claim construction for seven disputed terms/term sets. (D.I. 80) The instant Report
and Recommendation addresses the remaining three disputed terms that were argued at the
Markman hearing, each of which involve consideration of case law relating to means-plusfunction claiming.
This Report and Recommendation incorporates by reference the content of Sections I and
II of the Court's December 22, 2016 Report and Recommendation, which included background
on the parties, the asserted patents and the case's procedural posture, as well as a summary of the
general principles of claim construction. (D.I. 80 at 2-6)
The claim construction disputes set out in this Report and Recommendation relate to
Cook's assertion that certain claims are indefinite under Section 112, and so some discussion of
the legal standards for definiteness is now also in order. Section 112 requires that a patent claim
"particularly point out and distinctly claim the subject matter which the applicant regards as
his invention." 35 U.S.C. § 112, if 2 ("Section 112, paragraph 2"). 2 If it does not, the claim is
indefinite and therefore invalid. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2125
(2014) ("Nautilus"). In Nautilus, the Supreme Court of the United States set out the test to be
applied in the indefiniteness inquiry: "a patent is invalid for indefiniteness if its claims, read in
light of the specification delineating the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the invention." Id at 2124.
Definiteness is to be evaluated from the perspective of someone skilled in the relevant art at the
time the patent was filed. Id at 2128.
The primary purpose of the definiteness requirement is to ensure that patent claims are
written in such a way that they give notice to the public of what is· claimed, thus enabling
The Court here refers to the version of Section 112 as it existed prior to the
passage of the Leahy-Smith America Invents Act ("AIA"). Although the structure of Section 112
changed after the AIA's passage, those changes are applicable only to any patent application filed
on or after September 16, 2012. See Alcon Research Ltd v. Barr Labs., Inc., 745 F.3d 1180,
1183 n.1 (Fed. Cir. 2014). Because the applications leading to the patents-in-suit were filed prior
to September 16, 2012, the Court will hereafter refer to the pre-AIA version of Section 112, as do
the parties in their briefing. (D.I. 56 at 15 n.10)
interested members of the public (e.g., competitors of the patent owner) to determine whether
they infringe. All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80
(Fed. Cir. 2002). Put another way, "[a] patent holder should know what he owns, and the public
should know what he does not." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
535 U.S. 722, 731 (2002).
Like claim construction, definiteness is a question of law for the court. H-W Tech., L. C.
v. Overstock.com, Inc., 758 F.3d 1329, 1332 (Fed. Cir. 2014); Pi-Net Int'! Inc. v. JPMorgan
Chase & Co., 42 F. Supp. 3d 579, 586 (D. Del. 2014). The United States Court of Appeals for
·the Federal Circuit has stated that "[a]ny fact critical to a holding on indefiniteness ... must be
proven by the challenger by clear and convincing evidence." Intel Corp. v. VIA Techs., Inc., 319
F.3d 1357, 1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
1316, 1338 (Fed. Cir. 2008).
Below, the Court addresses the three remaining terms at issue-"tension member," "a
linkage" and "opening element"-in the order in which they were to be presented at the
The term "tension member" appears in dependent claims 10 and 17 of the '3 71 patent.
Plaintiffs assert that the term should be afforded its plain and ordinary meaning. (D.I. 56 at 2930) Defendants argue that "tension member" is a means-plus-function limitation under Section
112, paragraph 6. (Id.) They state that the term connotes only the function "'to bias the first and
second arms to the expanded configuration[,]"' with a corresponding structure of "tension
member 206, clip arms 208, and yoke 204 with yoke overhangs 254, with the proximal ends 252
of clip arms 208 under yoke overhangs 254, so that the clip arms 208 are allowed to pivot over
tension member 206[.]" (Id)
35 u.s.c. § 112, ~ 6
35 U.S.C. § 112, if 6 ("Section 112, paragraph 6") provided as follows:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
The "means-plus-function" technique of claim drafting is a "convenience" that allows a patentee
to express a claim limitation in functional terms "without requiring the patentee to recite in the
claims all possible structures" that could perform that function. Med Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (internal quotation marks
and citation omitted). In exchange for getting the benefit of this drafting convenience, however,
patentees must disclose, in the written description of the patent, a corresponding structure for
performing the claimed function. Noah Sys, Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir.
2012); see also Elekta, 344 F.3d at 1210 ("'[T]he price that must be paid for use of that
convenience is limitation of the claim to the means specified in the written description and
equivalents thereof."'). A patentee satisfies this requirement "only if the specification or
prosecution history clearly links or associates that structure to the function recited in the claim."
In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (emphasis added) (quoting Elekta, 344 F.3d
at 1210); see also Elekta, 344 F.3d at 1220 ("The public should not be required to guess as to the
structure for which the patentee enjoys the right to exclude. The public instead is entitled to
know precisely what kind of structure the patentee has selected for the claimed functions, when
claims are written according to section 112, paragraph 6."). "If the specification does not contain
an adequate disclosure of the structure that corresponds to the claimed function, the patentee will
have failed to particularly point out and distinctly claim the invention as required by ... section
112, [paragraph 2] which renders the claim invalid for indefiniteness." Blackboard, Inc. v.
Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks and citation
Before determining whether a claim term satisfies the requirements of Section 112,
paragraph 6, a court must assess whether Section 112, paragraph 6 even applies to the term in the
first place. In making that determination, the Federal Circuit has long recognized the importance·
of whether or not the claim element utilizes the term "means." Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1348 (Fed. Cir. 2015). If it does, then this creates a rebuttable presumption that
Section 112, paragraph 6 is applicable; if it does not, then there is a rebuttable presumption that
Section 112, paragraph 6 does not apply. ld. 3 The party challenging that presumption bears the
burden of overcoming it "by a preponderance of the evidence." Apple Inc. v. Motorola, Inc., 757
In Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), the Federal
Circuit overruled prior precedent that had described this presumption as a "'strong"' one, and
instead held that to overcome the presumption, a party does not need to exceed a "heightened
burden" nor make a "heightened evidentiary showing[.]" 792 F.3d at 1349. Although
Williamson altered the strength of the presumption, the Court can still look to pre-Williamson
Federal Circuit case law for some guidance in analyzing whether disputed terms convey
sufficiently definite structure to a skilled artisan. See M2M Sols. LLC v. Sierra Wireless.Am.,
Inc., Civil Action No. 12-30-RGA, 2015 WL 5826816, at *2-3 (D. Del. Oct. 2, 2015); see also
TriPlay, Inc. v. WhatsApp, Inc., Civil Action No. 13-1703-LPS-CJB, 2016 WL 3574012, at *5
n.7 (D. Del. June 30, 2016), adopted by 2016 WL 6778215 (D. Del. Nov. 15, 2016); see also
(D.I. 67 at 151-52).
F.3d 1286, 1298 (Fed. Cir. 2014), overruled on other grounds by Williamson, 792 F.3d 1339. If,
for example, a claim term does not use the word "means," then a challenger may overcome the
presumption that Section 112, paragraph 6 does not apply by showing that "the claim term fails
to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient
structure for performing that function."' Williamson, 792 F.3d at 1348 (quoting Watts v. XL Sys.,
Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)); see also M2M Sols. LLC v. Sierra Wireless Am., Inc.,
Civil Action No. 12-30-RGA, 2015 WL 5826816, at *1 (D. Del. Oct. 2, 2015). 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." Williamson, 792 F.3d at 1348; see also
M2M, 2015 WL 5826816, at * 1. "[I]t is proper to consult the intrinsic record, including the
written description, when determining if a challenger has rebutted the presumption that a claim
lacking the term 'means' recites sufficiently definite structure.': lnventio AG v. ThyssenKrupp
Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011), overruled on other grounds by
Williamson, 792 F.3d 1339; see also Apple, 757 F.3d at 1298.
If a claim term turns out to be subject to the application of Section 112, paragraph 6, then
a court must assess whether the specification discloses sufficient structure to correspond to the
claimed function. Williamson, 792 F.3d at 1351. This process of construing a means-plusfunction limitation proceeds in two steps. The first step is determining the claimed function of
the limitation. Id.; Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). The second step is identifying the corresponding structure disclosed in the
specification and equivalents thereof. Williamson, 792 F.3d at 1351; Medtronic, Inc., 248 F.3d at
Turning now back to the claim term "tension member," the Comi first notes that the
relevant claims of the '3 71 patent do not use the words "means" in discussing what a "tension
member" is or how it functions. And so there is a presumption that Section 112, paragraph 6
does not apply. Defendants nonetheless contend that this presumption has been overcome here.
(D.I. 56 at 29-30; D.I. 61 at 19-20) The Court will therefore "construe the claim limitation to
decide if it connotes 'sufficiently definite structure' to a person of ordinary skill in the art[.]"
Apple, 757 F.3d at 1296.
According to Plaintiffs, the claims provide "a structural description of the 'tension
member"' through their description of how the "tension member" "connects to and interacts with
other components of the invention." (D.I. 57 at 25) (citing Finjan, Inc. v. Proo/point, Inc., No.
13-cv-05808-HSG, 2015 WL 7770208, at *11 (N.D. Cal. Dec. 3, 2015)) And indeed, the claims
state that the "tension member" is "slidably received in the capsule and configured to bias the
first and second arms to the expanded configuration." ('371 patent, cols. 17:34-36, 18:33-35)
This description, in addition to articulating the "tension member"'s function (it biases the clip
arms), also provides insight into the required physical structure of the "tension member." That
is, as Plaintiffs note, it requires that the "tension member" is of a size and shape such that: (1) it
"fits inside the capsule"; (2) it can be "positioned between the clip arms"; and (3) it is able to
exert a force on both the clip arms to "engage the clip arms [and] urge them radially outward."
(D.I. 57 at 26; Plaintiffs' Claim Construction Hearing Slides at 50) Courts have found that claim
elements described in similar ways have not been subject to Section 112, paragraph 6. See, e.g.,
Telebrands Corp. v. GMC Ware, Inc., CASE NO.: CV 15-03121 SJO (JCx), 2016 WL 6237917,
at *8 (C.D. Cal. Aug. 17, 2016) (concluding that the term "driving element" was "outside the
ambit of [Section 112, paragraph 6,]" in part because the claim language imposed limitations on
the shape, location, and size of the disputed component, and also described how the element
"operate[d] against the 'threaded sleeve' of the actuating element"); Finjan, 2015 WL 7770208,
at *11 (finding that claim's description of how a "content processor" interacted with the
invention's other components "inform[ed] the term's structural character"); cf DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1023-24 (Fed. Cir. 2006) (concluding, preWilliamson, that the term "compression member" was not a means-plus-function limitation
because the "claim language demonstrates that the compression member must fit inside the
cylindrical opening and be of sufficient size to exert a force on the screw head, which implies
structure" and "[t]he specification likewise makes clear that the term ... refers to a particular
cylindrical insert and is not simply a general reference to any structure that will perform a
The specification supports this conclusion. For example, it again explains that the tension
member must be structured and positioned such that it "allow[s] [the clip arms] to pivot over the
tension member, which in turn biases the distal ends" of the clip arms, so long as the proximal
ends of the clip arms are under the yoke overhang. ('371 patent, col. 10:44-48) This is depicted
in several of the illustrative figures. (Id, FIGS. 9, 10, 12) Similarly, the Summary of the
Invention section further describes the tension member as "connected to the clip arms and
biasing the clip arms toward an open, tissue receiving configuration[.]" (Id., col. 1:53-55) Thus,
the claims, specification, and figures not only articulate where the "tension member" is located
and how it interacts with other parts of the apparatus, but they do so in a way that provides
insight into how the "tension member" itself must be structured.
In support of their contrary contention, Defendants rely on four cases. First, they cite to
this Court's decision in LifePort Sciences LLC v. Cook Inc., Civil Action No. 13-362-GMS, 2015
WL 11237044 (D. Del. Aug. 20, 2015), for the proposition that "[t]he word 'member' is a
generic nonce word that connotes no definite structure." (D.I. 56 at 30) But LifePort Sciences
does not hold that "member" is a generic nonce word. In the opinion cited, the LifePort Sciences
Court reconsidered its earlier finding that "displacement member" should not be construed as a
means-plus-function term. 2015 WL 11237044, at *1 & n.1 (internal quotation marks omitted).
The LifePort Sciences Court came to this conclusion for two reasons, neither of which had to do
with categorizing "member" as a nonce word: (1) the Court's earlier decision had been premised
on a mistaken argument that the patentee itself had never made; and (2) the Court had improperly
failed to credit a strong argument made by the defendants: that the plaintiff had agreed that a
term that "employed identical language to the displacement member term ... failed to recite
adequate structure[,]" and so the "displacement member" term should be viewed the same way.
Id. at * 1. The instant case is readily distinguishable, as there is no other claim term employing
identical language to the term at issue, and Plaintiffs have here offered persuasive intrinsic
evidence as to the "tension member"'s structure.
Next, Defendants cite two cases for the proposition that if a patentee merely adds a prefix
to a generic nonce word, and the prefix simply describes the function of the nonce word, then this
cannot save a term from being found indefinite under Section 112. (D.I. 56 at 30 (citing
Williamson, 792 F.3d at 1351; Mass. Inst. ofTech. & Elecs.for Imaging, Inc. v. Abacus
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) ("MIT')) The Court does not quarrel with this
general proposition. It simply finds the proposition not to be relevant here, as no case law
indicates that "member" is in fact a nonce word. 4
Finally, Defendants rely on the Federal Circuit's decision in Media Rights Technologies,
Inc. v. Capital One Financial Corp., 800 F.3d 1366 (Fed. Cir. 2015), cert. denied, 136 S. Ct.
1173 (2016), in arguing that the "descriptions in the· claims of how the tension member 'connects
to and interacts with other components"' does not provide "the requisite structural description."
(D.I. 61 at 19 (quoting D.I. 57 at 25-26)) While this is Defendants' strongest case in support of
their argument, the Court finds that it does not carry the day here.
The Media Rights Court found that the term "compliance mechanism" did not connote a
definite structure because "the claims simply state[d] that the 'compliance mechanism' can
perform various functions." Media Rights, 800 F.3d at 1372. The written description did
"depict and describe how what [was] referred to as the 'copyright compliance mechanism'
At the Markman hearing, counsel for Defendants stated that the Manual of Patent
Examining Procedure ("MPEP") lists "member" as a term that is commonly recognized as a
substitute for "means." (Tr. at 144) The cited section of the MPEP, however, actually lists
"member for" as the term at issue, MPEP § 2181 (I)(A) (9th ed. 2015) (emphasis added), and
cites in support to a case, Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1214-15 (Fed. Cir.
1998), in which the claims at issue required "a movable link member for holding the lever out of
engagement with the cam surface before entry of a combination and for releasing the lever after
entry of the combination[,]" (id. (emphasis added and omitted)). In light of the lack of
supporting case law suggesting that "member" is a nonce term, the Court finds this difference
significant, as the inclusion of the word "for" indicates an emphasis on function. Cf MasHamilton Grp., 156 F.3d at 1214-15 (suggesting that the "subsequent functional language" after
"movable link member" in the claims, which begins with the use of the word "for," made a
significant difference in the Court's conclusion that the term was properly construed in meansplus-function format, since "[s]uch language is precisely what was intended by the statutory
phrase" in then-Section 112, paragraph 6). Indeed, the very next paragraph of the MPEP section
at issue identifies the terms "reciprocating member" and "eyeglass hanger member" as "examples
of structural terms that have been found not to invoke [Section 112, paragraph 6]." MPEP §
2181(I)(A) (emphasis in original) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1369-70 (Fed. Cir. 2002);Al-Site Corp. v. VS! Int'l, Inc., 174F.3d1308, 1318-19 (Fed. Cir.
[was] connected to various parts of the system, how the 'copyright compliance mechanism'
function[ed], and the potential-though not mandatory-functional components of the 'copyright
compliance mechanism."' Id But none of the passages describing the "compliance mechanism"
defined the term "in specific structural terms." Id at 13 72-73.
Here, the circumstances surrounding the Section 112, paragraph 6 analysis are different
than they were in Media Rights. For one thing, as Plaintiffs' counsel noted, Media Rights
involved the "context of software and hardware" and "computer systems[,]" which is a "much
more open-ended[,] convoluted[,] complex art" than that at issue here (involving clips). (D.I. 67
(Transcript of October 12, 2016 Claim Construction Hearing (hereinafter, "Tr.")) at 155)
Moreover, as was detailed above, the '371 patent's claims not only provide a description of how
the "tension member" is connected to other components of the clip at issue and how it functions,
but they require that a "tension member" have a certain physical structure in order to perform its
work. That is, they require that the "tension member" must be of a certain size and shape (such
that it fits inside the capsule), and that it be structured such that it can be positioned between the
clip arms and have a physical relationship with both of the clip arms (one where it is "configured
to bias the first and second arms [of the clip] to the expanded configuration"). Moreover, there
are several figures identifying exemplary embodiments that depict a "tension member" with just
this type of physical structure. This connotes sufficient structure to avoid construction as a
means-plus function limitation.
The Court thus finds that Defendants have not met their burden of overcoming, by a
preponderance of the evidence, the presumption that Section 112, paragraph 6 does not apply.
Having determined that Section 112, paragraph 6 does not apply, the Court will construe
"tension member" according to Plaintiffs' description of what the claims require. (See D.I. 57 at
26) The Court therefore recommends that "tension member" be construed as "a member that fits
inside the capsule, is positioned between the clip arms, and engages the clip arms to urge them
The parties next dispute the term "a linkage" as recited in Claims 1, 13, and 20 (and the
associated dependent claims) 5 of the '027 patent. Plaintiffs assert that the meaning of "linkage" is
sufficiently clear and requires no construction. (D.I. 57 at 10) Defendants argue that the claims
recite "linkage" solely in the following functional terms, with no corresponding structure:
Claims 1, 3-11: ("to spread the first and second clip legs apart from one
another into a tissue-receiving configuration as the control member is
moved distally relative to the clip"; and "to drive the first and second clip
legs radially outward as the control member is moved distally relative to
Claims 13-15, 17-19: ("to move the clip distally out of the sleeve"; "[to]
cause the first and second clip legs to spread apart from one another into a
tissue-receiving configuration as the clip is moved distally relative to the
sleeve"; and "to drive the first and second clip legs radially outward as the
control member is moved distally relative to the clip")
Claim 20: ("to drive the first and second clip legs radially outward to a
tissue-receiving configuration" when the control member is "mov[ ed] ...
(D.I. 56 at 14-15) They contend that because this term is purely functional, it is indefinite under
Section 112, paragraph 2 (even if found to invoke means-plus-function claiming under Section
Dependent claims 2, 3, 16, and 17 of the '027 patent also use the term "linkage[.]"
('027 patent, cols. 15:46, 49-51; 16:37, 40-42)
112, paragraph 6). The Court will begin its analysis by determining whether the term invokes
Section 112, paragraph 6.
u.s.c. § 112, ~ 6
Applying the same type of analysis as it did with the term "tension member," the Court
begins by noting that, as with the previous term, here the relevant claims do not use the word
"means." This triggers the rebuttable presumption that Section 112, paragraph 6 does not apply.
To be sure, Defendants are correct when they point out that each claim containing the
term "linkage" recites functions that the "linkage" performs. (See D.I. 56 at 16; see also '027
patent, cols. 15:38-45; 16:19-26, 62-65) But they are incorrect in asserting that the word
"linkage," in light of the context provided by the claims, does not refer to any particular structure.
(D.I. 56 at 16; D.I. 61 at 5-6) While one portion of the language in the claims at issue recites that
the "linkage" is "operatively associated with the control member[,]" ('027 patent, cols. 15:38,
16: 19), or "coupled to the control member[,]" (id., col. 16:57), other intrinsic evidence provides
further detail as to structure. For example, claims 1, 13 and 20 all additionally explain that the
"linkage" "contact[s] the inner surfaces of the first and second clip legs[,]" or use words to that
effect. (See, e.g., id., cols. 15:42-43; 16:23-24, 63-64) 6
Additionally, Plaintiffs argue that their position is further supported by the fact that "the
term 'linkage' or 'link' has been construed repeatedly by the courts without resorting to [use of
Section 112, paragraph 6]." (D.I. 57 at 11-12 (citing cases)) Defendants respond by noting that
"only one of the cases cited by Plaintiffs, Rodgers v. Johnson Health Tech. Co., No. A-02-CA6
Moreover, the specification provides an exemplary description of the structure of
the linkage that has these features. ('027 patent, cols. 8:60-9:3 (referencing a "linkage 1002") &
731, 2003 WL 25787488 (W.D. Tex. Dec. 8, 2003), actually considered the construction of a
term including the word 'linkage."' (D .I; 61 at 6) And it is true that most of the cases cited by
Plaintiffs address some variation of the word "link," rather than "linkage." But Defendants offer
no reason why "linkage" connotes less structure than "link" does. Further, Defendants'
arguments for why Rodgers is inapplicable in the instant case, (see id at 6-7), can actually be
viewed as providing further support for Plaintiffs' position. In Rodgers, as Defendants note,
"neither party ... argued that 'linkage' was a means-plus-function limitation ... [and] the court
declined to construe the term ['linkage assemblies for orienting the bottom of the feet of the
user']." (Id. at 7 (emphasis in original)); see also Rodgers, 2003 WL 25787488, at *2-3. That
neither party even suggested the possibility that the phrase including "linkage" should be
construed as a means-plus-function limitation could well be read as an indication that the phrase,
in fact, clearly connoted sufficient structure so as to avoid the need for further construction.
Indeed, the reason the Rodgers Court declined to construe the term was because it found that the
"language [was] sufficiently clear and [did] not require additional definition." Rodgers, 2003
WL 25787488, at *3 (emphasis added). 7
For their part, Defendants rely primarily on a decision from the United States District
Court for the Southern District oflndiana: SOP Services, Inc. v. Vital Hunting Gear, Inc., No.
The Court agrees with Plaintiffs' counsel's contention, asserted at the Markman
hearing, that the terms "link" and "linkage" are commonly used in patents, and it would seem
that litigants very rarely argue that these terms implicate Section 112, paragraph 6. (See Tr. at
132, 136-37, 149-50; see also D.I. 57 at 11-12 (citing cases)); Cybergym Research LLC v. Icon
Health & Fitness, Inc., Civil Action No. 2:05-CV-527-DF, 2007 WL 5688735, at *27-28 (E.D.
Tex. Jan. 25, 2007) (construing "communication linkage"); Hay & Forage Indus. v. New Holland
N Am., Inc., 25 F. Supp. 2d 1170, 1179-80 (D. Kan. 1998) (construing "telescoping linkage" to
mean "a linkage having overlapping cylindrical sections").
3:11-cv-00112-RL Y-WGH, 2013 WL 2445016 (S.D. Ind. June 5, 2013). (D.I. 56 at 16; D.I. 61
at 7) In SOP Services, according to Defendants, "the court directly addressed the issue presented
here and held that the term 'linkage' failed to connote sufficiently definite structure to avoid
[Section 112, paragraph 6]." (D.I. 61 at 7 (citing SOP Servs., 2013 WL 2445016, at *7); see also
D.I. 56 at 16) In SOP Services, however, the district court was addressing the term "linkage
mechanism coupled between said arrow rest and a cable of a bow for actuating said arrow rest
between said first resting position and said second position"-not the term "linkage" itself. 2013
WL 2445016, at *6-8 (emphasis added). Since the term at issue in SOP Services did not facially
utilize the word "means," the presumption against means-plus-function claiming applied. Id at
*7. 8 In further assessing the Section 112, paragraph 6 issue, the SOP Services Court focused
most particularly on the fact that "linkage" was _used as a modifier to the term "mechanism"-a
term that is itself a well-recognized "generic" term. Id at *7; see also MIT, 462 F.3d at 1354.
And, in determining that Section 112, paragraph 6 in fact applied to the term, the SOP Services
Court was also clearly influenced by a particular figure in the patent-at-issue. That figure
described "'an alternative embodiment of a means for linking the arrow rest of the present
invention"'-providing further indication to the SOP Services Court that "linkage mechanism"
was meant to be understood as a reference to a '"linkage means[.]"' SOP Servs., 2013 WL
2445016, at *7 (emphasis in original).
There are at least two reasons why the decision in SOP Services is not apposite to the
circumstances at issue here or helpful to Defendants. First, unlike in that case, here the term at
As SOP Services was a pre-Williamson case, the district court there was utilizing a
"strong" presumption in this regard. SOP Servs., 2013 WL 2445016, at *7.
issue ("linkage") is not used as a modifier; instead, as Plaintiffs' counsel notes, it is used "as a
noun to do things." (Tr. at 134) Second, unlike in SOP Services, here the parties opposing
application of Section 112, paragraph 6 (Plaintiffs) have identified persuasive evidence from the
patent of the structure associated with the term. Contra SOP Servs., 2013 WL 2445016, at *7.
The Court thus finds that Defendants have not overcome the presumption that Section
112, paragraph 6 does not apply to the term "a linkage."
35 u.s.c. § 112, ~ 2
Defendants also argue that "a linkage" is functional and indefinite under Section 112,
paragraph 2. (D.I. 56 at 15-17) An indefiniteness inquiry under Section 112, paragraph 2 is
"highly dependent on context (e.g., the disclosure in the specification and the knowledge of a
person of ordinary skill in the relevant art area.)." Biosig Instruments, Inc. v. Nautilus, Inc., 783
F.3d 1374, 1378 (Fed. Cir. 2015) (internal quotation marks and citation omitted), cert denied,
136 S. Ct. 569 (2015).
Defendants' indefiniteness arguments here appear to be contingent on the Court finding
that Section 112, paragraph 6 applies. (See D.I. 56 at 15-17) Indeed, the Court is not aware of
any instance in which a term survived scrutiny under the first step of the Section 112, paragraph
6 analysis, but was still found to have fallen short of the requirements of Section 12, paragraph 2.
See TriPlay, Inc. v. WhatsApp, Inc., Civil Action No. 13-1703-LPS-CJB, 2016 WL 3574012, at
*10 (D. Del. June 30, 2016), adopted by 2016 WL 6778215 (D. Del. Nov. 15, 2016); see also
Intellectual Ventures I, LLC v. Canon Inc., Civ. No. 13-473-SLR, 2015 WL 307868, at *2 (D.
Del. Jan. 23, 2015) (determining that Section 112, paragraph 6 did not apply, and subsequently,
that the "description provided by the claims and specification [was] also sufficient" for the term
to avoid being indefinite under Section 112, paragraph 2); cf In re Donaldson Co., Inc., 16 F.3d
1189, 1195 (Fed. Cir. 1994). For these reasons, the Court concludes that the term is not
indefinite under Section 112, paragraph 2.
As for the proper construction of the term, Plaintiffs cited certain dictionary definitions
defining "linkage" "as a specific structure that transmits force between interconnected
components." (D.I. 57 at 11 & exs. 1-2 (citing Webster's II New College Dictionary 638 (2001);
Am. Heritage Dictionary of the English Language 1047 (3d ed. 1996)) At oral argument, they
suggested that the following definition captured the well-accepted meaning of "linkage:" "[a]
system of interconnected machine parts used to transmit power or motion[.]" (Tr. at 133, 137;
see also Plaintiffs' Claim Construction Hearing Slides at 54; D.I. 57 at 11 & ex. 2) 9 Defendants
respond by noting that "other definitions found in the same dictionaries [cited by Plaintiffs]
... demonstrate that 'linkage' does not refer to any particular structure, but instead refers
generally to '[t]he act or process oflinking,' '[t]he condition of being linked,' or 'the state of
being linked."' (D.I. 61 at 5 (quoting D.I. 57, exs. 1-2))
Here, the Court finds that the dictionary definition offered by Plaintiffs can provide
helpful guidance as to the meaning of the claim term, and that those definitions pointed out by
Defendants do not. As was previously noted, the claim language shows that the recited "linkage"
As an alternative, Plaintiffs suggested "[a] system of interconnected machine
elements, such as rods, springs and pivots, used to transmit power or motion." (Tr. at 133;
Plaintiffs' Claim Construction Hearing Slides at 54; D.I. 57 at 11 & ex. 1) The Court finds that
the first definition is more apposite, as the patent offers no indication that "rods, springs [or]
pivots" should be particularly called out as examples of what might make up the "linkage"
element. (See D.I. 61 at 6)
is a particular physical structure of the invention that interacts with other components, such as the
control member and the inner surfaces of the clip legs. The definitions that Defendants point out,
by contrast, would suggest a construction of "linkage" as a general "act," "process," "condition,"
or "state," and therefore would not comport with the language of the '027 patent. As such, the
Court will not afford those definitions the same weight that it gives to Plaintiffs' proposed
definition. Cf Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (cautioning against
'.'the adoption of a dictionary definition entirely divorced from the context of the written
Therefore, both the intrinsic and extrinsic evidence here suggests that the term should be
afforded the construction proposed by Plaintiffs: "a system of interconnected machine parts used
to transmit power or motion."
The term "opening element" is found in claims 1, 2, 12, 13, and 20 of the '731 patent.
The independent claims 1, 12, and 20 recite "an opening element engaging inner walls of the first
and second clip arms ... urging [the clip to an] open tissue[-]receiving configuration[.]" ('731
patent, cols. 15:45-48, 16:32-35, 17:4-6) Defendants contend that "opening element" is a means. plus-function limitation under Section 112, paragraph 6. (D.I. 56 at 21) They propose that the
following functions are recited in the respective claims:
Claims 1, 2-4, 6-10, 12-14: (opening by "engaging inner walls of the first
and second clip arms"; and "urging the first and second clip arms away
from one another into the open tissue-receiving configuration")
Claims 13-15, 17-19: (opening by "engaging inner walls of the first and
second clip arms"; and "urging the clip to an open tissue receiving
Claim 20: (opening by "urging the clip to an open tissue receiving
(Id.) They further propose that:
[t]he corresponding structure in the specification necessary to
perform the recited functions are: control wire 1503, pill 1502
attached to the end of the control wire, two rigid arms 1504 located
between the clip legs 1508, and pill well 1507 engaged with the
pill 1502, such that the clip legs 1508 are forced apart from one
another as the control wire 1503 is pulled in a proximal direction.
(Id.) This structure is disclosed in the specification as one embodiment of the invention. (See
'731 patent, col. 11 :47-59) Plaintiffs argue that "opening element" is not a means-plus function
term and that it should be afforded its plain and ordinary meaning. (D .I. 57 at 16-17; D .I. 60 at
u.s.c. § 112, ~ 6
The Court analyzes whether Section 112, paragraph 6 applies to the term "opening
element" under the same framework as it used with the previous two terms. None of the claims
use the word "means," so there is a rebuttable presumption that Section 112, paragraph 6 does
not apply. And, once again, Defendants have failed to overcome this presumption by a
preponderance of the evidence.
Defendants begin by stating that "[t]he word 'element' is a generic nonce word that
connotes no definite structure[,]" and that the word "opening" "merely describes the function of
the generic 'element' without imparting a definite structure." (D.I. 56 at 21) (emphasis in
original) (citing Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1213-14 (Fed. Cir. 1998))
Next, they argue that the other words recited in the claims, such as "engaging" and "urging," are
also merely "functional limitations[.]" (D.I. 56 at 21-22)
However, as Plaintiffs explain, it is wrong to read the relevant claim language as being
devoid of evidence of structure. In claims 1 and 12, for example, structure is connoted through
the claims' statement "that the opening element engages the inner walls of the clip arms and
urges them away from one another." (D.I. 57 at 16) This indicates: (1) where the opening
element is positioned (between the clip arms) and (2) that it is of sufficient size and requisite
structure such that it can engage both clip arms and urge them away from one another. (See D.I.
60 at 11 (Plaintiffs noting that this limitation is "not merely a functional limitation as Cook
argues ... ; it is also a structural limitation because it describes where the opening.element is and
which structures it engages")) Claim 1 also provides that "the opening element is movable
between an expanded configuration and a retracted configuration to correspond to a movement of
the clip between the open tissue receiving configuration and the closed configuration." (Id., col.
15 :4S-52) The capability to expand and retract demonstrates that the opening element is
Defendants also note that "opening element" does not appear anywhere in the patent
specifications. (D.I. 61 at 12) But based on the description of the "opening element" in the
claims themselves, it is easy to identify the structures in the patent's drawings that constitute the
"opening element"-the pieces shown between the clip arms in Figures SA and B, 1OA and B
and ISA, Band C-and the corresponding descriptions of that structure.in the specification.
(See, e.g., '027 patent, col. 11:4S-50 (describing FIGS. 15A-D) & FIGS. SA, IOA, IOB
(incorporated by reference into the '731 patent at '731 patent, col. 1:7-20); see also Plaintiffs'
Claim Construction Hearing Slides at 60)
Defendants also argue that the Court may not "rely on a figure alone to show
corresponding structure when there [is] no supporting language in the written description." (D.I.
61at13 n.9 (citing Lampi Corp. v. Am. Power Prods., Inc., 228 F.3d 1365, 1372-73 (Fed. Cir.
2000)) Again, however, the Court is not relying on the figures alone. The claim language
provides evidence of structure, and the figures simply match that structure.
Defendants thus have not overcome the presumption that Section 112, paragraph 6 does
Defendants request that if the Court rejects its argument that "opening element" is a
means-plus-function limitation (which the Court now has), then the Court "should construe this
term in accordance with Plaintiffs' description of 'opening element' .. ., and the components
recited in the claims, to mean 'two rigid arms, located between the clip [legs], that translate the
tensile force on the control wire to an outward radial force on the clip [legs].'" (D.I. 61 at 12 n.8
(quoting D.I. 57 at 16-17)) This description of the opening element comes from the '027 patent's
specification, ('027 patent, col. 11 :48-50), and is quoted in Plaintiffs' briefing as evidence that
the specification provides structural limitations, (D.I. 57 at 16-17). But the quoted language
refers to just one embodiment, and imposes more restrictions than the claims themselves impose.
For example, the claims do not require the arms of the opening element to be "rigid." And
Defendants point to no evidence of a disclaimer or lexicography by the patentee that would read
an opening element without "rigid" arms out of the claims. See GE Lighting Sols., LLC v.
AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). Thus, the Court will not adopt this
Because the claim language sufficiently describes the requisite structure and function of
the "opening element," the Court recommends that "opening element" be afforded its plain and
For the foregoing reasons, the Court recommends the following constructions:
"tension member" means "a member that fits inside the capsule, is positioned
between the clip arms, and engages the clip arms to urge them radially outward."
"a linkage" means ''a system of interconnected machine parts used to transmit
power or motion."
"opening element" should be afforded its plain and ordinary meaning.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(l)(B), Fed. R.
Civ. P. 72(b)(1 ), and D. Del. LR 72.1. The parties may serve and file specific written objections
within fourteen (14) days after being served with a copy of this Report and Recommendation.
Fed. R. Civ. P. 72(b)(2). The failure of a party to object to legal conclusions may result in the
loss of the right to de novo review in the district court. See Sincavage v. Barnhart, 171 F. App'x
924, 925 n.1 (3d Cir. 2006),· Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987).
The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R.
Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website,
Dated: April 12, 2017
Christopher J. Burke
UNITED STATES MAGISTRATE JUDGE
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