Stern v. Globus Medical, Inc.

Filing 58

MEMORANDUM OPINION providing claim construction for multiple terms in U.S. Patent Nos. 8,556,895 and 8,858,556. 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 8/24/2017. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
JOSEPH D. STERN,
Plaintiff,
Civil Action No. 1:16-cv-91-RGA

V.

GLOBUS MEDICAL, INC.,
Defendant.

MEMORANDUM OPINION
Kenneth L. Dorsney, Esq., MORRIS JAMES LLP, Wilmington, DE; Joel A. Kauth, Esq.
(argued), KPPB LLP, Anaheim, CA; Mark Y. Yeh, Esq., KPPB LLP, Anaheim, CA.
Attorneys for Plaintiff
Adam W. Poff, Esq., YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE;
Robert M. Vrana, Esq., YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington,
DE; George D. Moustakas, Esq. (argued), HARNESS, DICKEY & PIERCE, P.L.C., Troy, MI.
Attorneys for Defendant

August

lf/, 201 7

AND~~E:
Presently before the Court is the issue of claim construction of multiple terms in U.S.
Patent Nos. 8,556,895 ("the '895 Patent") and 8,858,556 ("the '556 Patent). The Court has
considered the Parties' Joint Claim Construction Brief. (D.I. 52). The Court heard oral
argument on August 9, 2017. (D.I. 55) ("Hr'g Tr.").
I.

BACKGROUND

Plaintiff filed this action on February 17, 2016, alleging infringement of three patents.
(D.I. 1). On March 27, 2017, Plaintiff stipulated to dismissal of one of these patents, leaving the
'895 and '556 patents remaining in suit. (D.1. 40). These two remaining patents share a
common specification and claim cervical plating systems and methods of cervical fusion using
these systems.
II.

LEGAL ST AND ARD
"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. A WH 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 of the statutes and policies that inform patent law."'
SofiView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
415 F.3d at 1324) (alteration in original). When construing patent claims, a court considers the
literal 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), ajf'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 quotation marks omitted).
"[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 (citations and internal quotation marks omitted). "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. 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." Id. at 1314.
When a court relies solely upon the intrinsic evidence-the patent claims, the
specification, and the prosecution history-the court's construction is a determination oflaw.

See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also
make factual findings based upon consideration of extrinsic evidence, which "consists of all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19 (internal quotation marks
omitted). Extrinsic evidence may assist the court in understanding the underlying technology,
the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic
evidence, however, is less reliable and less useful in claim construction than the patent and its
prosecution history. Id.
"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 PLC v. Marposs Societa 'per

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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." Os ram GMBH v. Int'l Trade

Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation and internal quotation marks omitted).

III.

CONSTRUCTION OF DISPUTED TERMS

A.

The Patents-In-Suit
The '895 patent is directed to cervical plating systems and methods of cervical fusion

using those systems. Claim 1 is representative and reads as follows:
1.

An anterior cervical plating system comprising:

at least one pre-positioned cervical plate defining a cervical plate body
having a lower horizontal face configured to be disposed adjacent a first vertebral
body and an upper horizontal face opposite said fewer horizontal face, and having
at least a first vertebral anchoring mechanism configured to attach to the first
vertebral body and at least one interlocking portion arranged on the cervical plate
body along a longitudinal axis thereof;
at least one revision cervical plate defining a revision plate body having at
least a second vertebral anchoring mechanism configured to attach to a second
vertebral body and at least one armature extending from the revision plate body
along a longitudinal axis thereof, the at least one armature having a cooperative
interlocking portion disposed thereon;
wherein the at least one cooperative interlocking portion of the revision
plate is configured to cooperatively engage the at least one interlocking portion of
the pre-positioned cervical plate to provide a stabilizing interconnection between
adjacent pre-positioned cervical plate and the revision cervical plates, the
stabilizing interconnection being capable of resisting movement of the adjacent
cervical plates in at least one dimension;
wherein the cooperative interlocking portion of the revision cervical plate
is configured such that it initially engages the interlocking portion of the prepositioned cervical plate from above the upper horizontal face of the pre-positioned
cervical plate;
wherein no threaded connector is inserted through or between any portion
of the at least one armature in forming and permanently securing the stabilizing
interconnection between the interlocking portion of the pre-positioned cervical
plate and the cooperative interlocking portion of the revision plate; and
wherein the cooperative interlocking portion of the revision plate does not
directly anchor into the first vertebral body or the second vertebral body when the
stabilizing interconnection is made.

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('895 patent, claim 1) (disputed terms italicized). Certain disputed terms appear only in
dependent claims. Claims 3, 5, and 17 of the '895 patent are representative of these dependent
claims and read as follows:
3.
The system of claim 1, wherein the interlocking portion the of prepositioned cervical plate comprises a groove integrally formed into at least one of the distal
and proximal ends of the body of the cervical plate, and wherein the armature of the
revision plate is interlockingly cooperative with said groove.
5.
The system of claim 3, wherein the groove is slotted, and the armature has
a cooperatively interlocking latch integrally formed on a portion thereof.
17.
The system of claim 1, wherein each of the at least one pre-positioned
cervical plate and at least one revision cervical plate further comprise an opening formed
in the body of the plate disposed such that said opening overlaps and allows visual
inspection of the disc space between two adjacent vertebra when said cervical plates are
anchored in position.
('895 patent, claims 3, 5, 17) (disputed terms italicized).
The '556 patent is also directed to cervical plating systems and methods of cervical
fusion using those systems. Claim 1 is representative and reads as follows:
1.

An anterior cervical plating system comprising:
at least one pre-positioned cervical plate having upper and lower horizontal
faces, wherein at least a portion of the lower horizontal face is configured to be
disposed adjacent a first vertebral body, at least a first vertebral anchoring
mechanism configured to attach to the first vertebral body, and at least one
interlocking portion arranged on the pre-positioned cervical plate;
at least one revision cervical plate defining a revision plate body having
upper and lower horizontal faces, wherein at least a portion of the lower horizontal
face is configured to be disposed adjacent a second vertebral body, at least a second
vertebral anchoring mechanism configured to attach to the second vertebral body,
and at least one armature extending from the revision plate, the at least one armature
having a cooperative interlocking portion disposed thereon;
wherein the at least one cooperative interlocking portion of the revision
cervical plate is configured to cooperatively engage the at least one interlocking
portion of the pre-positioned plate to provide a stabilizing interconnection between
the pre-positioned and revision cervical plates, the stabilizing interconnection
being capable of resisting movement of the pre-positioned and revision cervical
plates; and
wherein the engagement between the pre-positioned and revision cervical
plates is initially formed by positioning the at least one armature of the revision
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cervical plate above the upper horizontal face of the pre-positioned cervical plate
and moving at least a portion of the revision plate in the direction of the second
vertebral body, and wherein the cooperative interlocking portion of the revision
cervical plate is configured such that when engaged to the interlocking portion of
the pre-positioned cervical plate a portion of the at least one armature is positioned
atop a portion of the upper horizontal face of the pre-positioned cervical plate; and
wherein no threaded connector passes through the portion of the at least one
armature positioned atop a portion of the upper horizontal face of the pre-positioned
cervical plate.
('556 patent, claim 1) (disputed terms italicized).

B.

Disputed Terms

1.

"interlocking portion"/"cooperative interlocking portion"
a.

Plaintiff's proposed construction: "a part of a [revision] cervical plate that
connects to a mating part of another plate, such as the cooperative interlocking
portion of a revision plate"

b.

Defendant's proposed construction: "plain and ordinary meaning; alternatively: a
part of a [revision] cervical plate that locks to a mating part of another plate"

c.

Court's construction: "part of a [revision] cervical plate that securely fixes to a
mating part of another plate"

It is clear from the claims, and the parties agree, that the "interlocking portion" is a part of
the base cervical plate while the "cooperative interlocking portion" is part of a revision cervical
plate. (Hr'g Tr. 5:2-7, 11:2-7). The parties' only material dispute as to both of these terms is
whether the "interlocking portions" of two cervical plates must lock together, as Defendant
contends, or whether there must merely connect together, as Plaintiff insists. (D.I. 52 at 13, 15).
As I stated at oral argument, I think "connect" is too broad, so I will reject that portion of Plaintiff's
construction. (Hr' g Tr. 9:3-5).
The specification describes the "linkage system," which is composed of "linkages and
coordinating surfaces," as "allow[ing] a new plate to be securely fixed to a preexisting plate."
('895 patent at 5:38-46). At oral argument, Plaintiff stated it would agree to substitute "securely

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fixes" for "connects." (Hr'g Tr. 27:2-6). Defendant objects to "securely fixes" as not being
limiting enough. (Hr'g Tr. 26:4-14).
Defendant insists that the concept of"locking" must be included in the construction ofthis
term. (Hr'g Tr. 26:17-19). Plaintiff's concern about using the word "lock" is that a jury might
conclude that the "interlocking portion" would prevent movement in all directions, which Plaintiff
contends unduly limits the construction. (D.I. 52 at 15). As Plaintiff notes, the claims specify that
"the stabilizing interconnection [is] capable of resisting movement of the adjacent cervical plates
in at least one dimension." ('895 patent claim 1). I agree with Plaintiff that Defendant is reading
too much into the word "interlocking." The claims describe sufficiently what the "interlocking
portion" of the plate must do (i.e., resist movement in at least one dimension) such that I think a
jury will be able to understand what "securely fixes" means in the context of the claims. I will
construe this term to mean "part of a [revision] cervical plate that securely fixes to a mating part
of another plate."
2.

"stabilizing interconnection"
a.

Plaintiff's proposed construction: "connection between two cervical plates that
reduces movement of either plate"

b.

Defendant's proposed construction: "plain and ordinary meaning"

c.

Court's construction: "plain and ordinary meaning"

At oral argument, Plaintiff agreed to construe this term to have its plain and ordinary
meaning. (Hr'g Tr. 31: 12-13). Therefore, this is the construction I will adopt.
3.

"engage"
a.

Plaintiff's proposed construction: "to connect"

b.

Defendant's proposed construction: "plain and ordinary meaning; alternatively: to
interlock or cause to interlock"

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c.

Court's construction: "no construction necessary"

In briefing, Plaintiff argued that this term has its "common meaning," which Plaintiff
understands to be ''to connect." (D.I. 52 at 28). Plaintiff objects to the use of the word "interlock"
in Defendant's alternative proposed construction because Plaintiff contends that the plates, while
"securely fixed" together, are not "permanently locked together." (Id. at 30). After hearing the
parties' arguments on this term, I stated that "I don't really think the jury will have trouble figuring
out whether a particular way the base plates and revised plates work with each other, whether they
are engaging or not engaging." (Hr'g Tr. 36:2-5). I am not persuaded that this term needs to be
construed. There is sufficient context in the claims and in the specification that I do not think a
jury will have any difficulty understanding whether two plates are "engaged." Therefore, I find
no construction is necessary for this term. The parties are prohibited from arguing that the term
means either "to connect" or "to interlock."
4.

"along"
a.

Plaintiff's proposed construction: "located on or over"

b.

Defendant's proposed construction: "on a line or course parallel and close to"

c.

Court's construction: "on a line or course parallel and close to"

As used in the claims, this term appears in the phrase "along a longitudinal axis." The only
dispute between the parties as to this term is whether the plate must be directly over the vertebral
body or merely close to, and parallel to, the vertebral body. (Hr' g Tr. 45 :2-10). In other words,
the parties dispute whether the armature or interlocking portion must be centered on the plate, as
Plaintiff contends it must. (Hr' g Tr. 51 :8-52:4). I agree with Defendant. There is nothing in the
claims or specification that limits the phrase "along a longitudinal axis" to mean "along a central
longitudinal axis," which is essentially what Plaintiff is proposing. As Defendant pointed out

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during oral argument, at least one embodiment disclosed in the patent has an interlocking portion
that is comprised of two arms that are parallel to a longitudinal axis but not centered on the plate.
(Hr'g Tr. 52:13-22;'895 patent, Fig. 25). I will adopt Defendant's proposed construction.
5.

"groove"
a.

Plaintiff's proposed construction: "an elongated channel or depression"

b.

Defendant's proposed construction: "plain and ordinary meaning"

c.

Court's construction: "no construction necessary"

During oral argument, it became clear that the only reason Plaintiff wishes to construe this
term is to head off one of Defendant's invalidity contentions. (Hr'g Tr. 55:1-6, 65:4-8). Despite
Defendant's best efforts to convince me that a screw hole can be considered a groove, I am not
persuaded that a jury will have difficulty understanding what a groove is in the context of the
asserted claims, and I am confident the jury will agree that a screw hole is not a groove. (Hr' g Tr.
61 :12-65:16). I find no construction is necessary for this term.
6.

"overlap"
a.

Plaintiff's proposed construction: "to extend over or past and cover a part of'

b.

Defendants' proposed construction: "to lie or extend over and cover part of'

c.

Court's construction: "to extend over or past and cover a part of'

The only material dispute as to this term is Defendant's proposed inclusion of "to lie."
Defendant agrees that two parts can "overlap" if one extends past the piece with which it is
overlapping, and Defendant contends that its construction actually includes this concept, so it
seems Defendant has no real objection to this portion of Plaintiffs construction. (Hr'g Tr. 67:1023). Rather, Defendant objects that Plaintiffs construction excludes the concept of "lying over,"
which I understand to mean that the plates must touch. (Hr'g Tr. 69:14-70:10). As Plaintiff noted

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I

at oral argument, however, this term is used in two contexts in the claims. (Hr'g Tr. 70:19-71:3).
In one context, it is a window, or opening in the plate that "allows visual inspection of the disc
space," so there is no contact with anything at all. (Hr'g Tr. 70:19-23; '895 patent, claim 17). I
agree with Plaintiff. I see no need to add this additional limitation to the construction as I think
the claims provide sufficient context that a jury will have no trouble figuring out what overlap
means and whether the two overlapping objects must "lie over" each other. I will adopt Plaintiff's
proposed construction.
7.

"revision cervical plate"
a.

Plaintiff's proposed construction: "a cervical plate with specialized features for
connecting to another cervical plate"

b.

Defendant's proposed construction: "plain and ordinary meaning"

c.

Court's construction: "no construction necessary"

As discussed at oral argument, I do not think this term needs to be construed. (Hr' g Tr.
71:21-72:6). The "revision cervical plate" is one component of the invention and I do not think
this term has a plain and ordinary meaning to a person of skill in the art. It seems to me that
Plaintiff's proposal adds nothing meaningful to a jury's understanding of the term and merely
introduces the vague descriptor "specialized features," a phrase I think is so non-specific that it
would be particularly unhelpful to a jury. I think that the meaning of the term is sufficiently clear
from the claims themselves without any further construction. Therefore, I find that no construction
is necessary for this term.
8.

"latch"
a.

Plaintiff's proposed construction: "a protruding part"

b.

Defendant's proposed construction: "plain and ordinary meaning"

c.

Court's construction: "decline to construe"
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This term appears in some asserted claims, but it does not appear in the specification. (Hr' g
Tr. 74:7-14). As with many of the other disputed terms, I am not convinced that this term needs
to be construed. I think that Plaintiff's proposed construction is so overbroad as to encompass
many things that would not be a "latch." Plaintiff admitted at oral argument that its proposal is
not consistent with any dictionary definition of"latch." (Hr'g Tr. 74:15-22). At oral argument, I
suggested that the plain and ordinary meaning of "latch" is "fastener." (Hr'g Tr. 74:23-75:3).
Plaintiff objected on the basis that the "latch" described in the patent is only half of the fastener.
(Hr'g Tr. 75:4-5). According to Plaintiff, "There is the latch on the arm part, and there's something
that receives the latch on the base part." (Hr'g Tr. 75:5-6). I agree with Plaintiff that the "latch"
is only half of the fastener. I do not agree that this means the term should be construed to mean "a
protruding part," however. As I see no support in the patent for such a broad construction, I will
reject Plaintiff's proposal. In the absence of a better proposal for the plain and ordinary meaning
of this term, I decline to construe it at this time.

IV.

CONCLUSION

Within five days the parties shall submit a proposed order consistent with this
Memorandum Opinion suitable for submission to the jury.

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