Ethicon LLC et al v. Intuitive Surgical, Inc. et al

Filing 254

MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 12/28/2018. (etg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

ETHICON LLC,
ETHICON ENDO-SURGERY,INC., and
ETHICON US LLC,
Plaintiffs,
C.A.NO. I7-87I-LPS

INTUITIVE SURGICAL,INC.,
INTUITIVE SURGICAL OPERATIONS,
INC. and INTUITIVE SURGICAL

HOLDINGS,LLC,
Defendants.

Jack B. Blumenfeid and Brian P. Egan, MORRIS,NICHOLS,ARSHT & TUNNELL LLP,
Wilmington,DE
Elizabeth S. Weiswasser and Anish R. Desai WEIL,GOTSHAL & MANGES LLP,New York,
NY

Diane P. Sullivan WEIL,GOTSHAL & MANGES LLP,Princeton, NJ

Christopher T. Marando, Christopher M.Pepe, and Matthew D. Sieger, WEIL, GOTSHAL &
MANGES LLP, Washington, D.C.
Attorneys for Plaintiffs
John W.Shaw,Karen E. Keller, and David M.Fry, SHAW KELLER LLP, Wilmington, DE
Robert A. Van Nest, Brian Ferrall, R. Adam Lauridsen, William S. Hicks, and Eduardo E.
Santacana, KEKER VAN NEST & PETERS LLP Houston, TX

Attorneys for Defendants

MEMORANDUM OPINION

December 28,2018

Wilmington, Delaware

STARI^U.S. District Judge:
Plaintiffs Ethicon LLC, Ethicon Endo-Surgery, and Ethicon US LLC ("Ethicon" or

"Plaintiffs") filed suit against Defendants Intuitive Surgical, Inc., Intuitive Surgical Operations,
Inc., and Intuitive Surgical Holdings, LLC ("Intuitive" or "Defendants") on May 30, 2017,

alleging infringement of United States Patent Nos. 9,585,658 ("the '658 patent"), 8,479,969("the
'969 patent"), 9,113,874 ("the '874 patent"), 8,998,058 ("the '058 patent"), 8,991,677 ("the '677
patent"), 9,084,601 ("the '601 patent"), and 8,616,431 ("the '431 patent")(collectively,"the
Asserted Patents"). (D.I. 135 at T[ 1) The Asserted Patents "relate to various aspects of
laparoscopic surgical stapling technology." (D.I. 119 at 1)
Presently before the Court is the issue of claim construction. The parties completed

briefing on September 24, 2018. (D.I. 116, 119, 127, 130, 152) The Court held a claim
construction hearing on October 1, 2018 (D.I. 175)("Tr.") and received supplemental briefing on

October 16 and 26,2018 (D.I. 180; D.I. 191).'
I.

LEGAL STANDARDS
A.

CLAIM CONSTRUCTION

The ultimate question of the proper construction ofa patent presents an issue of law. See
Teva Pharm. 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 patent law that the
claims of a patent define the invention to which the patentee is entitled the right to exclude."

'The Court is aware that on December 21, Defendants moved to stay this case pending
completion of inter partes reviews that have been instituted with respect to certain of the patentsin-suit. (D.I. 246) Briefing on the motion is ongoing. Given the timing of the motion, and the
fact that the Court had advised earlier this month that it anticipated issuing its claim construction
opinion by on or about December 31 {see D.I. 221), the Court assumes that Defendants are not
asking the Court to refrain from issuing the instant opinion. In any event, the Court perceives no
reason to do so.

Phillips V. AWHCorp.,415 F.3d 1303, 1312(Fed. Cir. 2005)(citation and 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 ofthe statutes and policies that inform patent law." Id.

"[T]he words ofa 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 ofthe invention, i.e., as ofthe effective filing date ofthe patent application."
M 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 ofthe surrounding words ofthe claim also must be
considered. Phillips,415 F.3d at 1314. Furthermore,"[ojther claims ofthe patent in question,
both asserted and unasserted, can also be valuable sources of enlightenment...[bjecause claim

terms are normally used consistently throughout the patent." Id. (internal citation omitted).
It is likewise true that "[djifferences 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. SRAMCorp.,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 ofthe 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." Hill-Rom Servs., Inc. v. Stryker
Corp., 755 F.3d 1367,1372(Fed. Cir. 2014)(internal quotation marks omitted).
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 ofthe complete record ofthe proceedings before the [Patent and Trademark Office]
and includes the prior art cited during the examination ofthe patent." Phillips, 415 F.3d at 1317.
"[T]he prosecution history can often inform the meaning ofthe claim language by demonstrating
how the inventor imderstood the invention and whether the inventor limited the invention in the

course of prosecution, making the claim scope narrower than it would otherwise be." Id.
"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 ofa term to those of skill in the relevant art because such dictionaries "endeavor to
collect the accepted meanings ofterms 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 ofthe technical aspects ofthe patent is consistent with that ofa 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 ofthe fact that "expert reports
and testimony [are] generated at the time of and for the purpose oflitigation and thus can suffer
firom 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 ofpatent claim scope unless considered in the
context ofthe intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously

describes the scope ofthe 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).

Finally,"[t]he construction that stays true to the claim language and most naturally aligns
with the patent's description ofthe 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 GmbHv. Int'l Trade Comm'n,505 F.3d 1351,1358(Fed. Cir. 2007)
(internal quotation marks omitted).
B.

INDEFINITENESS

A patent claim is indefinite if,"viewed in light ofthe specification and prosecution
history,[it fails to] inform those skilled in the art about the scope ofthe invention with
reasonable certainty." Nautilus, Inc. v. BiosigInstruments, Inc., 134 S. Ct. 2120,2129(2014).

A claim may be indefinite ifthe patent does not convey with reasonable certainty how to
measure a claimed feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341

(Fed. Cir. 2015). But "[i]f such an understanding of how to measure the claimed [feature] was
within the scope ofknowledge possessed by one of ordinary skill in the art, there is no

requirement for the specification to identify a particular measurement technique." Ethicon
Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312,1319(Fed. Cir. 2015).
II.

CONSTRUCTION OF DISPUTED TERMS
A.

'969 Patent terms

1.

"tool mounting portion operably coupled to a distal end of said
proximal spine portion"('969 claim 24)

Plaintiffs

tool mounting portion operably coupled to a proximal end ofsaid proximal spine portion
Defendants

tool mounting portion operably coupled to a distal end of said proximal spine portion
Court

tool mounting portion operably coupled to a distal end of said proximal spine portion

Ethicon argues that the Court should correct what Ethicon asserts is a typographical error
in the term, namely replacing "distal end" with "proximal end," in line with a U.S. Patent and
Trademark Office("PTO")January 2018 Certificate of Correction. (D.I. 119 at 24; D.I. 116 at

2)^ Ethicon insists that "the error is evident on the face ofthe patent, such that the correction is
not subject to reasonable debate based on the claim language and the specification, and that there
is nothing in the prosecution history that would suggest a different construction to be

appropriate." (Tr. at 9) Ethicon asks that even ifthe Court disagrees on the merits ofthe

^The application for this Certificate was filed shortly before Ethicon filed suit and was issued
after suit was filed. {See Tr. at 12)

correction, that it refrain from invalidating the Certificate until summary judgment or trial to
allow for the presentation offiirther evidence. {Id. at 13)
Intuitive argues that the "Certificate [of Correction] is invalid ... because '(1)the
corrected claim [is] broader than the original claim[]; and (2)the presence ofthe clerical or

typographical error, or how to correct that error, is not clearly evident to one of skill in the art.'"
(D.I. 116 at 2(quoting Central Admixture Pharm. Svcs., Inc. v. Adv. Cardiac Solutions, P.C.^
482 F.3d 1347, 1353-54(Fed. Cir. 2007)); Tr. at 20-22) Intuitive points out that proximal and

distal are opposites, that a plausible and working device exists under the claim term as originally

written (i.e., before the Certificate of Correction),^ and that the original claim mirrors another
claim in the patent that was not corrected. {See Tr. at 22-23) Intuitive also notes that Ethicon
has not rebutted Intuitive's expert on this issue. {Id. at 28)

Generally- and here -a district court may only correct an "obvious minor typographical
[or] clerical" error in a patent if(1)"the correction is not subject to reasonable debate based on
consideration ofthe claim language and the specification" and (2)"the prosecution history does

not suggest a different interpretation ofthe claims." Novo Indus., L.P. v. Micro Molds Corp.,
350 F.3d 1348,1354(Fed. Cir. 2003);see also Superior Fireplace Co. v. Majestic Prods. Co.,
270 F.3d 1358,1370(Fed. Cir. 2001). Here,the presence of an error is subject to reasonable
debate, and what the proper correction would be is also subject to reasonable debate. {See D.I.

116 at 3(noting consistency between original claim and other claims in patent and citing D.I.
117("Knodel Deck")It 15,18-19);'969 patent at claim 12,26; D.I. 127 at 2-3 (noting multiple

^Defendants concede that there may be a plausible infringement theory under the original claim
language. {See Tr. at 24)

means ofchanging term)) Ethicon's request to "correct" the error and change the scope ofthe
patent as issued is not supported by the record or the law.
Ethicon has had a fair opportunity to present evidence related to the parties' disputes. It
is highly doubtful that Ethicon will ever be able to adduce evidence sufficient to persuade the
Court that no reasonable debate surroimds whether the original patent contains an error and, if
so, that no reasonable debate also exists with respect to the appropriate correction ofsuch error.

Whether these findings should cause the Court to invalidate the Certificate of Correction, or take
some other action(now, or at a later stage ofthis litigation), is a matter on which the parties will
have to present their positions to the Court.
2.

"proximal/distal spine portion"(Claim 24)

Plaintiffs

structural member within [proximal/distall portion ofelongated shaft assembly
Defendants

discrete [proximal/distal] interior supporting member within the elongated shaft assembly
or

[proximal/distal] member within the elongated shaft assembly, which supports but is separate
from an exterior member ofthe elongated shaft assembly
Court

structural member within [proximal/distall portion ofelongated shaft assembly

The parties agree that the spine is located within the elongated shaft assembly. {See D.I.
119 at 13-14; D.I. 116 at 5) The disputes are whether the spine must"support" another structure

and whether the spine must be "separate" from an exterior member ofthe elongated shaft
assembly. {See Tr. at 38,40) The Court agrees with Plaintiffs that neither ofthese restrictions
on claim scope that are proposed by Defendants is actually required by the claims.
Defendants argue that "the specification repeatedly and consistently confirms that each of

the proximal and distal spine portions is physically distinct from each other and from the exterior

structures which they support." (D.I. 127 at 5)(citing '969 patent at Figs. 4-5,134,13:5-25,
77:53-78:1,78:35-45) According to Defendants,"this is true in every disclosed embodiment."

{Id.) Defendants contend that the patent teaches a spine that supports "the exterior portion ofthe
shaft assembly" and may also support"interior components, such as articulation bars." (D.I. 116
at 5 (citing '969 patent at 27:28-32, 29:45-47, 30:31-34; D.I. 118-1);

also Tr. at 41-42)

While previous versions of Defendants' proposed construction were unclear as to what needs to

be supported by the spine. Defendants' most recent construction "specifically identifies the
structure that must be supported: an exterior member ofthe elongated shaft assembly." (D.I. 127
at 4)

The Court agrees ^vith Plaintiffs that there is nothing in either the specification or the

claims that unambiguously requires that the spine be separate from exterior structures(or distinct
from portions of itself). The specification never describes the spines as "discrete" components.
Moreover,the claims do not clearly and always require that the spine perform a support function.
Additionally, Plaintiffs' proposed construction is supported by the doctrine of claim
differentiation, as unassorted claims 1 and 18 describe spines that explicitly support a closure
tube ofthe elongated assembly. ('969 patent claims 1,18)
B.

'658 Patent terms

• ^'opening member configured to move longitudinally to apply an
opening force to said anvil at a location other than said cam surface to
move said anvil into said open position"('658 claim 1)

• "opening system configured to move longitudinally to apply an opening
force to said second jaw at a location other than said cam surface to
move said second jaw into said open position"('658 claim 6)
• "opening member configured to move longitudinally to apply a pulling
force to said anvil at a location other than said cam surface to move

said anvil into said fully-open position"('658 claim 11)

• ^'pulling member configured to move longitudinally to apply a pulling
force to said anvil at a location other than said cam surface to move

said anvil"('658 claim 14)
Plaintiffs

Terms not subject to § 112(6). Plain and ordinary meaning.
Defendants

Terms subject to § 112(6).

Fimction; to move said anvil [second jaw]into open [fully-open] position by moving
longitudinally to apply an opening [pulling] force to said anvil [second jaw] at a location other
than said cam surface.

Structure: closure tube with an opening for engaging a tab on the anvil;
alternatively:

Terms not subject to § 112(6). Opening/pulling member configured to move longitudinally to
engage the anvil [second jaw] at a location that is different from where the closure cam
engages the anvil so as to move the anvil [second jaw] into open [fully open] position
Court

Terms not subject to § 112(6). Plain and ordinary meaning.

As Ethicon correctly notes, the presumption is that Section 112(6) does not apply to these
terms as they do not use the word "means." (D.I. 119 at 5;see also Williamson v. Citrix Online,
LLC,792 F.3d 1339,1348(Fed. Cir. 2015)(en banc)) Ethicon also cites Boston Scientific Corp.

V. Cook Group Inc., 2017 WL 3977256, at *3(D. Del. Sept. 11, 2017), in which this Court
construed the term "opening element" as not a means-plus-function term.

The Court agrees with Ethicon that the presumption against these terms being construed
as means-plus-function terms has not been rebutted. The patent describes sufficient structure:
the member is "configured to move longitudinally"(making it structurally dynamic),"must be

sufficiently strong and rigid in the longitudinal direction,""applies an opening force to said
anvil"(making it near the anvil), and engages the anvil at"a location other than said cam
surface." (D.I. 119 at 5-6 (citing Awtar Decl. at

17,18,19,20); see also Tr. at 48-49)

On the parties' disagreement as to whether the claimed "opening force" requires direct
(and not merely indirect) force, as Intuitive would require through the patent's use ofthe word

"engaging," the Court agrees with Ethicon that even indirect forces are within the scope ofthe
claims. (See Tr. at 49-50, 53-55, 57) The Court is persuaded by Ethicon's explanation that

Ethicon's expert's use ofthe word "engage" was not intended to limit the claim scope to direct

applications offorce. (See Tr. at 54,59-60) Nothing in the patents requires such a narrowing of
the claim scope.
C.

'874 Patent terms

1.

"driver element supported for axial travel through the [surgical] end
effector in response to [a]firing motion[s applied thereto]"('874
claims 9 and 20)

Plaintiffs

Term not subject to § 112(6). Plain and ordinary meaning.
Defendants

Term subject to § 112(6).

Function; providing axial travel through the surgical end effector in response to firing motions.
Structure: knife 32 with threaded opening for receiving helical drive screw 36(Fig. 3)
Court

Term subject to § 112(6).

Function: imparting motion onto another component.
Structure: sled 33 that traverses the channel which moves axially through the end effector and
drives the staples

Ethicon argues that because claims 9 and 20 require that the driver element is supported
for axial travel "through the surgical end effector," the claims inform a person of ordinary skill in

the art("POSA")that the driver element is located within and is smaller than the end effector.

(D.l. 119 at 8)(citing Awtar Decl. at K 25) Ethicon further contends that a POSA would

10

understand the element to be structurally dynamic and engage with other components ofthe
surgical instrument. {Id.; see also Tr. at 65)

Intuitive responds that"element" is a nonce word, which is not clarified by the prefix
"driver." (D.I. 116 at 11) It argues that "driver element""appears only in a summary section

that merely repeats the functional language ofthe claims." {Id.)(citing '874 patent at 4:42-44)
Ethicon further points out that "the specification refers to different structural components as
performing a driving function." {Id.)(citing '874 patent at 8:55-64)
On this term,the Court finds that Intuitive has rebutted the presumption against a means-

plus-function construction. The term will be construed in accordance with § 112(6).

Ethicon explained at the hearing that if this term is construed as a means-plus-function
term,the function is "to impart motion on the staple as it travels axially through the end effector"
(Tr. at 66)and the corresponding structure is a sled {see D.I. 119 at 9("But the knife is not a
driver-it does not impart motion on another structure. Instead, the correct corresponding
structure would be sled 33."); D.I. 130 at 6(pointing to Intuitive's discussion of sled as another
example of driver);'874 patent at 8:58-60, 10:36-53; Tr. at 66).

Intuitive responds that the knife is the only applicable structure;"[b]ecause knife 32

imparts motion to sled 33, it is a driver." (D.I. 127 at 11) Intuitive does not dispute that the sled
could be the driver, but insists that "[i]n the context ofthis patent, the knife clearly is the driver
element." (Tr. at 70)

In the Court's view, the driving of staples is central to this patent, which supports the
conclusion that the sled, rather than the knife, is the corresponding structure. The role ofthe
driver element is to traverse the channel and drive staples. {See Tr. at 66)

11

2.

'^reciprocatable closure element configured to apply said opening
and closing motions to said one of said first and second jaws'*('874
claim 9)

Plaintiffs

Term not subject to § 112(6). Plain and ordinary meaning.
Defendants

Term subject to § 112(6).

Function: to apply opening and closing motions to one of said first and second jaws.
Structure: distal closure tube 42 and proximate closure tube 40(Fig. 4)
alternatively:

Term not subject to § 112(6). Outer tube configured to apply said opening and closing
motions to said one of said first and second jaws
Court

Term subject to § 112(6).

Function; to apply opening and closing motions to one of said first and second jaws.
Structure: distal closure tube 42 and proximate closure tube 40(Fig. 4)
Ethicon again points to the presumption against application of§ 112(6), as this term does
not include the word "means," contending that a POSA would understand "that the driver

element is structurally configured to move back and forth along an axis, which distinguishes the
closure element from structurally fixed components and components configured to move only in

one direction." (D.I. 119 at 10(citing Awtar Decl. at ^ 32); Tr. at 73-74)'* But the Court agrees
with Intuitive asserts that the presumption is overcome here because the "claim term fails to
recite sufficiently definite structure." (D.I. 116 at 9(citing Williamson); Tr. at 80) "Element" is
being used here as a "nonce" word. (Id. at 9-10) Further,"reciprocatable," and "the requirement

'^Ethicon also points to positions advocated by Intuitive in an inter partes review ("IPR"), which
the Court considers relevant but non-dispositive, particularly given the different claim
construction standard that applied in the IPR.

12

that the 'closure element' apply opening and closing motions to 'one of said first and second
jaws[,]' carr[y] no generally imderstood structural meaning in the art." {Id. at 10)(citing D.L
129("Vaitekunas DecL") at 119)

In supplemental briefing, Ethicon argues that "[bjecause the reciprocatable closure
element limitation refers to a class of structures for opening and closing the jaws ofan end
effector, and does not encompass every structure for performing the claimed function, § 112(6)

does not apply." (D.I. 180 at 1-2) Intuitive responds that "it is undisputed that 'reciprocatable
closure element' is not limited to any specific structure or class of structures.... Accordingly,

§ 112(6) applies." (D.I. 191 at 2) Again,the Court agrees with Intuitive that the term is subject
to § 112(6)and finds that Intuitive's construction ofthe function and structure to be correct.
3.

"remote[Iy] user-controlled console"('874 claims 9 and 20)

Plaintiffs

Plain and ordinary meaning [remote input device operated by a user to actuate a surgical
instrument supported on a manipulator such as a robotic arm]
Or

Console that allows a user to control a surgical instrument
Defendants

Plain and ordinary meaning [user-controlled unit separate firom the surgical instrument that
communicates with the surgical instrument]
Court

Console that allows a user to control a surgical instrument

While both sides have suggested that the "plain and ordinary meaning" applies {see D.I.
116 at 6; D.I. 130 at 12), they do not agree on what the "plain and ordinary meaning" is {see,

e.g., Tr. at 81). The parties dispute whether the console needs to be capable of controlling the
instrument, as Ethicon proposes, or whether it is sufficient ifthe console merely is capable of
communications with the instrument, which is Intuitive's position. The Court views this as a

13

claim construction dispute, which it will resolve in Ethicon's favor by construing the term to
mean "console that allows a user to control a surgical instrument."
As Ethicon observes, Intuitive's construction "eviscerates the distinction that is apparent

in the '874 patent between a remote computer that receives data from a surgical instrument and a
remote console that allows the user to actuate the surgical instrument." (D.I. 119 at 15;

also

Tr. at 82("The problem for Intuitive is this is the wrong part ofthe spec. The claims in the '874
patent require a 'remote user-controlled console.' They are not directed to this part ofthe spec,
the 'remote computer device.'"))

Intuitive counters that Ethicon's construction improperly limits the term "to a single

embodiment without pointing to any language in the claim that suggests it covers only one
embodiment." (D.I. 116 at 6;see also Tr. at 85 (asserting that consoles can also "be used to

provide real-time information to a surgeon during surgery" or "report information from the
instrument for later use in diagnostic analyses")) Intuitive also relies on claim differentiation,
noting that "[f]our independent claims specifically require a 'remote user-controllable'(or 'usercontrolled') actuation console'(see claims 1,16,19,21), whereas claims 9 and 20(at issue here)
do not." (D.I. 116 at 7) Intuitive's arguments do not persuade the Court. The specification's
reference to "capable of communicating with the control unit and downloading the sensor data"
is in the context of describing the "remote computer device," not the "remote user-controlled
console." ('874 patent, 29:43-46) The "control" being referenced in connection with the
"remote user-controlled console" must be in "control" ofthe instrument. {See '874 patent,
30:48-61)

14

D.

'431 Patent terms

1.

''transmission arrangement"('431 claims 1,6,13)

Plaintiffs

Plain and ordinary meaning
or

an arrangement of one or more shafts and/or gears that transmits mechanical power.
Defendants

an assembly of shafts and/or gears, and other components that transmit mechanical power from
a source [ofrotary output motion] to a driven component
Court

an arrangement ofone or more shafts and/or gears that transmits mechanical power.

The dispute is whether the transmission arrangement must contain more components than

just gears and shafts. The specification supports Ethicon's contention that it only needs to
contain gears and shafts. {See D.I. 119 at 17)(citing '431 patent at Fig. 113,65:37-66:58)
Intuitive argues that the "embodiments to which claim 1 is directed all define the
transmission arrangement to include either a shifter motor or a shifter solenoid(an electrical

magnet), neither of which are shafts or gears." (D.I. 116 at 17-18)(citing '431 patent at Figs.
104-106; 63:42-59,64:17-65:36, 83:46-67, 84:34-65) But the Court finds no persuasive basis on

which to limit the scope ofthe claims to only such embodiments. {See D.I. 130 at 14("Other
embodiments disclosed herein obtain all ofthe control motions from motor arrangements within

the robotic system.")(quoting '431 Patent at 89:40-47); Tr. at 98-99)^

^Intuitive concedes that a "hypothetical transmission arrangement could comprise solely shafts
and/or gears." (D.I. 127 at 15)

15

2.

''transmission arrangement communicating with the control unit of
the robotic system"('431 claim 1)

Plaintiffs

Plain and ordinary meaning
or

the control unit provides a control signal that results in movement ofthe transmission
arrangement
Defendants

the transmission arrangement exchanging electronic control signals with the control unit ofthe
robotic system
Court

the control unit provides a control signal that results in movement ofthe transmission
arrangement

On this term, the dispute concerns the meaning of communicating. Plaintiffs assert that,
in the context ofthe specification, communicate describes control signals that result in
movement ofthe transmission arrangement, even ifthose signals do not directly reach the

transmission arrangement. Defendants respond that communicating requires that the electronic
signals must cause movement by directly reaching the transmission arrangement. The Court
agrees with Plaintiffs.

As Plaintiffs point out, the patent includes multiple references describing how "the
control unit ofthe robotic system applies an output motion that results in movement ofthe
transmission arrangement." (D.I. 119 at 16-17 (citing 431 patent at 69:54-67, 70:42-47); see also
Tr. at 101-04) From these references a POSA would understand that while the signals must
result in movement,there is no requirement of direct contact between the signals and the
transmission arrangement. While electronic signals must be involved, nothing precludes them

16

from being sent to a component outside the transmission arrangement, which then transmits

motion to the transmission arrangement.^
Defendants' specification citations demonstrate only that an electronic signal is required
- because this is how the transmission arrangement's shifter motor or shifter solenoid
communicate - but do not establish that direct contact must occur. (See D.I. 116 at 15)(citing

'431 patent at 63:37-41, 64:41-44, 83:49-55, 84:34-37) Nor do Defendants' references to
extrinsic evidence alter the Court's conclusion. (See D.I. 116 at 15)(citing extrinsic evidence)
3.

"[first and second] control assembly operably interfacing with said
elongated shaft assembly to apply said [first/second] control motion
thereto"('431 claim 6)

Plaintiffs

Term not subject to § 112(6). Plain and ordinary meaning.
Defendants

Term subject to § 112(6).

Function: operably interface with the elongated shaft assembly to apply [first/second] control
motions to the elongated shaft assembly.

Structure: Articulation system 6140, including articulation control arrangement(aka ball joint
assembly)6160, articulation drive assembly 6170, horizontal gear arrangement 6180 and
vertical gear arrangement 6190,of Fig. 149
alternatively^

the closure drive assembly 3951, and the firing drive assembly 3961, ofFig. 105 (col 63:6264:16).
Court

Term subject to § 112(6).

Function: operably interface with the elongated shaft assembly to apply [first/second] control
motions to ftie elongated shaft assembly.

Structure: Articulation system 6140, including articulation control arrangement(aka ball joint
assembly)6160, articulation drive assembly 6170, horizontal gear arrangement 6180 and
vertical gear arrangement 6190,of Fig. 149
^Defendants concede that shafts and gears "certainly do not [receive electronic communication
signals], and I don't think anyone contends they do." (Tr. at 111)
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The Court agrees with Intuitive that "assembly" is here being used as a nonce word and
that the claim lacks sufficient structure; the presumption is rebutted and the term must be

construed pursuant to § 112(6). (See D.I. 116 at 18-19)(citing Vistan Corp. v. Fadei USA, Inc.,
2012 WL 1496099, at *15(N.D. Gal. Apr. 27,2012)) The Court is further persuaded that
Intuitive has correctly identified the appropriate function and corresponding structure and, so,
will adopt Intuitive's proposed construction.
E.

'058,'677,and '601 Patents

1.

"housing"('058 claims 6,11;'677 claims 6,11;'601 claim 1)

Plaintiffs

Plain and ordinary meaning
Defendants

A structure that both covers and supports
Court

a single or multipart structure that covers and may also support or protect

The parties dispute whether "housing" includes "a multi-part structure" and whether it
must both "support and cover." (See D.I. 119 at 19-20) The Court concludes that, as used in
these patent claims,the housing may be a single part or multiple parts and that while it must
cover it does not also always have to support or protect. The specification discloses examples of
multipart housings. (See, e.g.,'601 patent at Fig. 3,46:60-62("housing portion 3662 of

disposable loading unit 3614 includes an upper housing half 3670 and a lower housing half 3672
contained within an outer casing 3674")) The intrinsic evidence does not, by contrast, support a

conclusion that the housing must always do more than cover. While certain claims indicate that

the housing supports(see '058 patent at claims 6, 11;'677 patent at claims 6,11), not all
"housing" claims do so.

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2.

"housing connector"('058 claim 6;'677 claims 6,17)

Plaintiffs

Plain and ordinary meaning.
Defendants

A portion ofthe housing that mounts it to another structure
Court

No construction necessary

Intuitive insists that"mount" needs to be included in the construction of"housing

connector" while Ethicon disagrees. Intuitive argues that "[i]n the specification, the surgical
instrument is described as being releasably coupled or attached to a tool 'mounting' portion"

(D.I. 116 at 22)(citing '058 patent at 17:2-4), and that this tool mounting portion is part ofthe

housing (id.)(citing '058 patent at 17:32-35). Intuitive additionally contends that the inventors
understood mounting to mean the same thing as connecting: "[t]hey use the term 'mounting' to
describe connection mechanisms other than battery contacts, switches and indicator lights." (D.I.

127 at 19)(citing '058 patent at 17:2-4; 17:36-38;'601 at 17:38-41)

The Court is not persuaded that the proper construction of"housing connector" is as
narrow as Intuitive suggests. In particular, the Court does not agree that the housing connector

must be "mounted." Having resolved this dispute, the Court agrees with Ethicon that no
construction of"housing connector" is required.

3.

"engagement member"('601 claim 1)

Plaintiffs

Plain and ordinary meaning
Defendants

A protrusion that prevents longitudinal movement
Court

Plain and ordinary meaning

Ethicon contends that "engage" or "engagement""can include objects in contact," a

concept which is broader than Intuitive's proposed limitation to a "protrusion that prevents

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longitudinal movement." (D.I. 119 at 22) To support its broader construction, Ethicon points to
multiple instances ofthe patent demonstrating that "engage" includes many forms ofcontact.
(See id.)(citing '601 patent at 11:44-47; 11:53-55; 12:9-12; 20:37-41) For its part, Intuitive
relies heavily on the specification's use of the term "engagement member" to describe the

"process of attaching, using protrusions('nubs'), the disposable loading unit to the surgical tool.'
(D.I. 116 at 23)(citing '601 at 47:53-58) Intuitive points to no instance ofthe patentee being its
own lexicographer or clearly and unmistakably disavowing claim scope with respect to
engagement member. The Court is persuaded that Ethicon's view on this dispute is correct,
which does not require the Court to provide an express construction ofthe term.
4.

'^actuator arrangement''('601 claim 1)

Plaintiffs

Plain and ordinary meaning
or

a mechanical structure that enables movement ofanother mechanical structure
Defendants

Indefinite
Court

Indefinite
Intuitive asks the Court to find this term indefinite. All that is known from the claims and

specification is that the actuator is coupled to the housing. (D.I. 116 at 24) Because there are
many structures that connect to the housing and actuate something (see id.)(citing '601 patent at
17:31-41), a POSA would not be able to determine, with reasonable certainty, which structure

20

constitutes the actuator arrangement. Intuitive provides expert declarations to support its

contentions. (See Vaitekunas Decl.

49-51; D.I. 129 at 124)^

Ethicon defends the claim by pointing to the "actuation sled" described in the patent,
which "enables movement of staples in the stapler cartridge." (D.I. 119 at 23)(citing '601 patent
at 11:33-38,13:59-61) Ethicon further points to its expert's declaration, which identified

actuator arrangements in the specification. (D.I. 130 at 21 n.12)(citing D.I. 121 at

46-48)

Ethicon also relies on an engineering dictionary to show that an actuator would be understood as
a "mechanism that affects movement of another component." (D.I. 119 at 22-23)

Intuitive has shown, by clear and convincing evidence,that a POSA would not have
reasonable certainty as to what the patentee intended to be understood as the actuator

arrangement. The specification provides little guidance. Intuitive's expert persuasively explains
why a POSA would not understand how the patent is using the term. (See Vaitekimas Decl. at
H 51)("There are many possible structures that may be removably coupled to the housing and
used with a contact arrangement regulating the supply of power to a motor, and the purported

requirement that the 'actuator arrangement''enables movement' is too vague to differentiate
what structure or structures are covered by the term.")
III.

CONCLUSION

The Court will construe the disputed terms as explained above. An appropriate Order
follows.

^At the hearing the Court denied Ethicon's motion to strike Intuitive's responsive expert
declaration, instead permitting the parties to file post-hearing letter briefs. (See Tr. at 136-37;
.see also D.I. 138,139,142,144)

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