Arthrex, Inc. v. Parcus Medical, LLC

Filing 390

OPINION AND ORDER granting 195 Parcus' Motion for Claim Construction and 200 Arthrex's Markman Brief in Support of Claim Construction. See Opinion and Order for the Court's construction of the disputed terms. Signed by Judge John E. Steele on 7/29/2014. (MAB)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
ARTHREX, INC.,
Plaintiff,
v.

Case No: 2:11-cv-694-FtM-29CM

PARCUS MEDICAL, LLC,
Defendant.

OPINION AND ORDER
This matter comes before the Court on Parcus Medical, LLC’s
Motion for Claim Construction (Doc. #195) and Arthrex, Inc.’s
Markman Brief in Support of Claim Construction (Doc. #200), both
filed on November 15, 2013.

Arthrex filed a Response to Parcus’

Motion for Claim Construction (Doc. #208) on December 2, 2013, and
Parcus filed a Memorandum in Opposition to Arthrex’s Markman Brief
(Doc. #222) on December 6, 2013.

The Court held a Markman hearing

on July 21, 2014. Upon consideration of the parties’ arguments,
the Court construes the disputed terms as set forth below.
I.

Background

Arthrex, Inc. (Arthrex) is a global medical device company
engaged in the research, design, and sale of unique devices for
the orthopedic surgical market.

Arthrex was founded in the early

1980’s, and is based in Naples, Florida.

In 2007, several former

high-level Arthrex executives formed Parcus Medical, LLC (Parcus)

to sell “generic” arthroscopic products with quality equal or
superior to the products offered by the dominant companies in the
industry, such as Arthrex, but at far lower prices.
Arthrex initiated this action against Parcus on December 15,
2011, and filed a six-count Amended Complaint on August 29, 2012,
alleging infringement of U.S. Patent Nos. 5,993,451 (the ‘451
Patent) and 6,641,597 (the ‘597 Patent). (Doc. #81.) Parcus filed
an

Answer

and

Counterclaims

Affirmative

alleging

Defenses,

invalidity

and

as

well

as

Amended

non-infringement

of

the

patents at issue (Counterclaims I-IV), and violations of the
Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. §
501.201 et seq. (FDUTPA) (Counterclaim V).

(Doc. #87.)

Arthrex

responded to Parcus’ counterclaims on September 21, 2012.

(Doc.

#98.)
II.

Claim Construction Principles

The first step of the inquiries governing the infringement
and validity of a patent requires a proper construction of the
claims.

See Cook Biotech, Inc. v. Acell, Inc., 460 F.3d 1365,

1372 (Fed. Cir. 2006); Medichem, S.A. v. Rolabo, S.L., 353 F.3d
928,

933

(Fed.

Cir.

2003).

“Claim

construction

is

a

legal

statement of the scope of the patent right; it does not turn on
witness credibility, but on the content of the patent documents.”
Lighting Ballast Control LLC v. Philips Electronics North America
Corp., 744 F.3d 1272, 1284 (Fed. Cir. 2014) (en banc).

2

The

district court determines “the metes and bounds of the claims that
define the patent right . . . as set forth in the patent documents.”
Id. at 1285.
Claim construction is a matter of law.

Shire Dev., LLC v.

Watson Pharms., Inc., 746 F.3d 1326, 1330 (Fed. Cir. 2014).

The

proper construction of a patent's claims requires the court to
look “to the words of the claims themselves, the specification,
the prosecution history, and any relevant extrinsic evidence.”
Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1228 (Fed. Cir.
2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1315–17 (Fed.
Cir. 2005) (en banc)).

When construing a claim, a court must start

with the language of the claim and remain focused on the words of
the claim throughout. Interactive Gift Express, Inc. v. Compuserve
Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).
are

generally

given

their

ordinary

and

“The words of a claim
customary

meaning

as

understood by a person of ordinary skill in the art when read in
the context of the specification and prosecution history.” Thorner
v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed Cir.
2012) (citing Phillips, 415 F.3d at 1313).
such

as

the

specification

and

Intrinsic evidence,

prosecution

history,

may

shed

contextual light on the ordinary and customary meaning of a claim
term.

Shire Development, 746 F.3d at 1330; SkinMedica, Inc. v.

Histogen Inc., 727 F.3d 1187, 1195 (Fed. Cir. 2013).
intrinsic

evidence,

the

written

3

description

is

of

Among the
particular

import,

and

it

is

“entirely

appropriate

for

a

court,

when

conducting claim construction, to rely heavily on [it] for guidance
as to the meaning of the claims.”

Phillips, 415 F.3d at 1317.

This is so because the specification is the “single best guide to
the meaning of a disputed term.”

Id. at 1315 (quoting Vitronics

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
“After considering this intrinsic evidence, a court may also
seek guidance from extrinsic evidence such as expert testimony,
dictionaries, and treatises.”
752

F.3d

1358,

1361

(Fed.

Suffolk Techs., LLC v. AOL Inc.,
Cir.

2014);

Markman

v.

Westview

Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1996) (en banc).
While the extrinsic evidence “can shed useful light on the relevant
art,”

it

is

determining
language.”

“less
the

significant

legally

than

operative

the

meaning

intrinsic
of

record

disputed

in

claim

C.R. Bard, Inc. v. United States Surgical Corp., 388

F.3d 858, 862 (Fed. Cir. 2004) (internal quotation marks and
citation omitted).
Claim construction is not required to construe undisputed
claim terms.

Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d

1324, 1332 (Fed. Cir. 2009).

The parties in this case now agree

that the only claims for which construction is required are those
set forth in this Opinion and Order.

4

III. The Patents in Suit
A.

The ‘451 Patent
The ‘451 Patent, entitled “Cannulated Suture Anchor Drill

Guide,” was filed on January 14, 1999, and issued on November 30,
1999.

It

claims

priority

from

provisional

60/023,088, which was filed on July 25, 1996.

application

No.

The ‘451 Patent was

issued to Dr. Stephen S. Burkhart and assigned to Arthrex.

(‘451

Patent.)
The invention disclosed in the ‘451 Patent “provides a method
and apparatus for inserting and installing suture anchors through
a thin, cannulated drill guide.”

(‘451 Patent, 1:53-55.)

To

install a suture anchor into bone, an obturator is used with the
drill guide to penetrate the ligament.

Once the ligament has been

penetrated, the obturator is removed and the V-shaped indentation
of the drill guide is placed so that the indentation straddles the
bone formation at the repair site.

A suture anchor and driver

assembly are then inserted through a central cannula, which extends
through the shaft and handle of the drill guide, and the driver
assembly is used to attach the suture anchor to the bone.

An open

section in the drill guide allows for visualization of the suture
anchor during installation and a laser mark located on the side of
the suture anchor driver serves as a depth stop.
2:1-15.)

(‘451 Patent,

The drill guide of the ‘451 Patent was an advancement in

the field of arthroscopic surgery because it allowed for the suture

5

anchor and the suture to be inserted through the ligament and bone
in one step, thereby eliminating the need for suture passers to
take the suture through the ligament as an additional step.

(‘451

Patent, 2:20-25.)
The two independent claims of the ‘451 Patent are claim 1 and
claim 7.

The pertinent portion of claim 1 states as follows, with

the disputed terms highlighted:
1. A surgical instrument for installing a suture anchor
into bone by turning the suture anchor using a driver,
the instrument comprising: a cannulated drill guide
having a proximal end and a distal end; a cylindrical
handle having a central cannula disposed on the proximal
end of the drill guide, the cannulae of the drill guide
and the handle having a common central axis; a V-shaped
indentation at the distal end of the drill guide for
straddling a bone formation at a repair site; and at
least one window near the distal end of the drill guide
and proximal to the V-shaped indentation for viewing the
suture anchor and driver as they pass through the
cannulated drill guide.
. . .
7.
The surgical instrument assembly for installing a
suture anchor into bone by turning the suture anchor
using a driver, the instrument comprising: a cannulated
drill guide having a proximal end and a distal end; a
cylindrical handle having a central cannula disposed on
the proximal end of the drill guide, the cannulae of the
drill guide and the handle having a common central axis;
a V-shaped indentation at the distal end of the drill
guide for straddling a bone formation at a repair site;
at least one window near the distal end of the drill
guide for viewing the suture anchor and driver as they
pass through the cannulated drill guide and proximal to
the V-shaped indentation; and a suture anchor driver
slidably disposed within the cannulated drill guide and
having a proximal end and a distal end, the suture anchor
driver being calibrated with the drill guide for

6

indicating a depth of insertion of the suture anchor
installed into the bone.
(‘451 Patent, 4:33-48, 63-5:1-15.)

The disputed terms of the ‘451

Patent are construed as set forth below:
(1)

“A

surgical

instrument

[assembly]

for

installing

a

suture anchor into bone by turning the suture anchor
using a driver”
The initial phrase of the ‘451 Patent requiring construction
is a portion of the preamble of claims 1 and 7.

Parcus asserts

that the preamble, read in its entirety, is a claim limitation
because the preamble states that the suture anchor and assembly
are installed “by turning.”

(Doc. #195, p. 16.)

Arthrex asserts

that the preamble is not a claim limitation because there was no
reliance on this version of the preamble to distinguish the claimed
invention from the prior art during the prosecution of the ‘451
Patent.

(Doc. #208, p. 16.)

“Whether to treat a preamble term as a claim limitation is
‘determined on the facts of each case in light of the claim as a
whole and the invention described in the patent.’”

American Med.

Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010)
(quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823,
831 (Fed. Cir. 2003)).

“[A] claim preamble has the import that

the claim as a whole suggests for it. In other words, when the
claim drafter chooses to use both the preamble and the body to

7

define the subject matter of the claimed invention, the invention
so defined, and not some other, is the one the patent protects.”
Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d
615, 620 (Fed. Cir. 1995).
Generally, the preamble does not limit a claim.

Catalina

Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002).
body

A preamble is not regarded as limiting “when the claim

describes

a

structurally

complete

invention

such

that

deletion of the preamble phrase does not affect the structure or
steps of the claimed invention.”

Id. at 809.

“Thus, in general,

the purpose of a claim preamble is to give context for what is
being described in the body of the claim; if it is reasonably
susceptible to being construed to be merely duplicative of the
limitations in the body of the claim (and was not clearly added to
overcome a rejection), we do not construe it to be a separate
limitation.”

Symantec Corp. v. Computer Associates Int’l, Inc.,

522 F.3d 1279, 1288-89 (Fed. Cir. 2008).
A preamble will be construed as limiting, however, “if it
recites essential structure or steps, or if it is ‘necessary to
give life, meaning, and vitality’ to the claim.”

Catalina Mktg.

Int’l, Inc., 289 F.3d at 808 (quoting Pitney Bowes, Inc. v.
Hewlett-Packard

Co.,

182

F.3d

1298,

1309

(Fed.

Cir.

1999)).

Additionally, “clear reliance on the preamble during prosecution
to distinguish the claimed invention from the prior art transforms

8

the

preamble

into

a

claim

limitation

because

such

reliance

indicates use of the preamble to define, in part, the claimed
invention.”

Id.

“When limitations in the body of the claim rely

upon and derive antecedent basis from the preamble, then the
preamble may act as a necessary component of the claimed invention.
On the other hand, if the body of the claim sets out the complete
invention, then the language of the preamble may be superfluous.
Eaton Corp. v. Rockwell Intern. Corp., 323 F.3d 1332, 1339 (Fed.
Cir. 2003) (internal citations and quotation marks omitted).
Parcus argues that prosecution history reveals that the “by
turning” portion of the preamble is a claim limitation.
disagrees.

The Court

On June 21, 1999, the patent examiner allowed claims

1 and 7 of the ‘451 Patent.

(Doc. #200-22, p. 2.)

At the time of

allowance, the preamble of claim 1 was “A surgical instrument for
drilling a suture anchor into bone using a driver,” and the
preamble

to

claim

7

was

“A

surgical

drilling a suture anchor into bone.”
The

prosecution

history

reveals

that

instrument

assembly

for

(Doc. #200-21, pp. 2-3.)
Arthrex,

following

the

issuance of the Notice of Allowance, requested to amend claims 1
and 7 to
correctly recite an instrument for installing, rather
than drilling, a suture anchor into bone, by turning the
suture anchor.
The specification similarly has been
amended to more accurately describe the invention. The
correction relates to the fact that threaded suture
anchors such as those depicted in Figs. 8-9 which do not
have flutes and do not “drill” into the bone.

9

(Doc. #200-19, p. 58.) The prosecution history clearly establishes
that the claims were accepted prior to the amendment; thus, the
Court finds that the amendments to the preamble were not relied
upon to distinguish the claimed invention from the prior art.
Absent such reliance, a preamble is generally not limiting unless
it is necessary to provide antecedent basis for the body of the
claim.

See Catalina Mktg., 289 F.3d at 809.

Parcus argues that the preamble does provide antecedent basis
for

the

claim

disagrees.

and

is

therefore

limiting.

The

Court

again

If the phrase “by turning” was deleted from the

preamble of claims 1 and 7, the claims would still describe a
structurally complete cannulated suture anchor drill guide or
assembly.

Because claims 1 and 7 disclose an “instrument” or an

“assembly,” the addition of “by turning” to the preamble does not
add to the structure of the disclosed invention.

No other portion

of the paten refers to installation “by turning,” and the intrinsic
evidence

does

invention.

not

suggest

that

this

is

a

limitation

to

the

Furthermore, “a patent grants the right to exclude

others from making, using, selling, offering to sale, or importing
the claimed apparatus or composition for any use of that apparatus
or composition, whether or not the patentee envisioned such use.”
Catalina Mktg., 289 F.3d at 809.

10

Accordingly, the Court finds

that the “by turning” portion of the preamble of claims 1 and 7
are not claim limitations.
(2)

“a cylindrical handle”

Arthrex asserts that “cylindrical handle” should be given its
ordinary meaning, that is, “a handle that is shaped similar to a
cylinder.”

(Doc.

#208,

p.

12.)

Parcus

challenges

this

interpretation, arguing that a better reading of the term is “[a]
three-dimensional surface or solid object bounded by a curved
surface and two parallel circles of equal size at the ends.
curved

surface

is

formed

by

all

the

line

segments

corresponding points of the two parallel circles.”
12.)

The

joining

(Doc. #195, p.

In short, Parcus proposes that the handle be an exact

geometric cylinder.

Parcus argues that Arthrex has proffered a

definition of “cylindrical” that “robs the term of all meaning or
definiteness.”

(Doc. #195, p. 13.)

Parcus further asserts that

it would be a complete mystery as to “[h]ow ‘cylinder-like’ a shape
must be to qualify as ‘similar to a cylinder.’”

(Id.)

“Cylindrical” is not a term with a defined meaning in the
patent or in the field of art.

The common dictionary definition

of “cylindrical” is “relating to or having the form or properties
of a cylinder.”

Merriam-Webster Dictionary, http://www.merriam-

webster.com/dictionary/cylindrical (last visited July 22, 2014).
See also Stedman’s Medical Dictionary 445 (27th ed. 2000) (defining
“cylindrical”

as

“[s]haped

like

11

a

cylinder;

referring

to

a

cylinder”).

This ordinary definition is consistent with Arthrex’s

proposed construction.
The claims refer to a “cylindrical” handle, not a handle which
is a geometric cylinder. If the Court were to accept Parcus’
proposed construction, limitations that are not supported by the
claim language or the specification would be read into the patent.
Such a construction would also exclude a preferred embodiment of
the cylindrical handle from the scope of the claim.
Patent, Fig. 4.)

(See ‘451

This “is rarely, if ever, correct.”

On-Line

Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386
F.3d

1133,

1139

(Fed.

Cir.

2004)

(quoting

Globetrotter Software, Inc. v. Elan Computer Grp.,
Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004)).
In Edwards Lifesciences AG v. CoreValve, Inc., 699 F.3d 1305,
1312 (Fed. Cir. 2012), the defendant argued that “cylindrical
support” should be construed in accordance with the geometric
definition of a cylinder.

The Federal Circuit rejected this

argument because the limitation that the support be a perfect
cylinder was not found in the asserted patent’s specification.
Id.

A similar argument was presented in Acumed LLC v. Stryker

Corp., 483 F.3d 800, 804 (Fed. Cir. 2007).

In Acumed, the district

court construed the claim requirement of a “curved shank” as a
shank that “has a bend or deviation from a straight line without
sharp corners or sharp angles.”

12

Id.

The defendant argued on

appeal

that

a

better

continuous bend.”

reading

Id.

of

the

term

is

“a

nonangular

The Federal Circuit upheld the district

court’s construction of “curved” because the use of a geometric
construction, as opposed to the ordinary, lay meaning of the term,
would create improper limitations.
the

district

court’s

construction

The defendant’s argument that
was

insufficiently

definite

since “the court did not specify precisely how ‘sharp’ is too
sharp” was also rejected because the resolution of the issue was
properly left to the trier of fact.

Id. at 806.

See also Novatek,

Inc. v. Sollami Co., 559 F. App’x 1011, 1020-21 (Fed. Cir. 2014)
(requirement

of

“elongate

cylindrical

object”

was

proper

construction).
The

Court

finds

geometric cylinder.

no

evidence

that

the

handle

must

be

a

Accordingly, the Court construes “cylindrical

handle” as “a handle that is shaped similar to a cylinder.”
(3)

“a V-shaped indentation at the distal end of the drill
guide for straddling a bone formation at a repair site”

Parcus

contends

that

the

term

“V-shaped

indentation”

is

readily understandable and need not be construed by the Court, but
if construction is required, Parcus asserts that it should be
construed as “[a]n indentation in the shape of a ‘V’ or open fork.”
(Doc. #195, pp. 14-15.)

Arthrex, on the other hand, proposes that

the entire phrase be construed as “[a]n opening having a V-shape
spanning a tip of the drill guide for straddling anatomical bone

13

at a repair site.”

(Doc. #208, p. 14.)

Unlike

Arthrex’s proposed construction, which is limited to
a

single

V-shaped

construction

permits

indention,
the

Parcus’

inclusion

of

proposed
multiple

indentations.
Parcus’ proposed construction disregards both the
claim language and the written description.
beyond

“a

V-shaped

indentation”

reveals

Reading
that

the

indentation is used to straddle a bone formation at
the

repair

description

site.
of

(‘451

the

Patent,

preferred

4:43-44.)

embodiment

The

further

provides that “the V-shaped tip 10 [shown in FIG. 1] is formed by
a

notch

having

an

angle

of

preferably

50°.

The

V-shaped

configuration of the guide tip sits precisely onto the rim of the
glenoid for accurate, anatomical screw placement.”
3:29-32.)

(‘451 Patent,

Figures 6 and 6A, as shown below, illustrates how the

indented tip straddles the bone formation.

FIG. 6

14

Arthrex’s proposed construction is also supported by the
prosecution history.

The prosecution history reveals that the

limitation of a “V-shaped indentation” was added to the claim to
distinguish the claimed invention from the prior art cited by the
examiner,

specifically,

5,755,721

(the

‘721

the

Patent),

Hearn
which

Patent,

U.S.

disclosed

Patent

a

“U”

No.

shaped

indentation spanning the tip of the drill guide (see Fig. 4 of the
‘721 Patent below).

(Doc. #200-19, pp. 46-58.)
specification

Because the
of

the

‘451

Patent describes the V-shaped
indentation as spanning the
entire tip of the drill guide
and the V-shaped tip was used to distinguish the indentation from
the “U” shaped tip in the ‘721 Patent during prosecution, the Court
agrees with Arthrex’s proposed construction.

Accordingly, “a V-

shaped indentation at the distal end of the drill guide for
straddling a bone formation at a repair site” means “an opening
having a V-shape spanning a tip of the drill guide for straddling
anatomical bone at a repair site.”
B.

The ‘597 Patent
The ‘597 Patent, titled “Interference Fit Knotless Suture

Anchor Fixation,” was filed on May 24, 2002, and issued on November
4, 2003.

It claims priority to provisional application Nos.

60/350,020, filed on January 23, 2002, and 60/293,170, filed on

15

May 25, 2001.

The ‘597 Patent was invented by Dr. Stephen S.

Burkhart, R. Donald Grafton, and Peter J. Dreyfus, and assigned to
Arthrex.

(‘597 Patent.)

The ‘597 Patent discloses a device and method “for securing
soft tissue to bone, and more particularly, to suture anchors for
proximating tissue to bone using knotless interference fixation.”
(‘597 Patent, 1:10-15.)

The suture anchor described by the ‘597

Patent has a ribbed or threaded body for retaining the anchor in
a hole formed in the bone, a suture eyelet on the distal end of
the anchor, and a drive head formed on the proximal end of the
anchor body.

(‘597 Patent, 1:50-52; 4:4-10.)

The method of

reattaching tissue to bone using the suture anchor is comprised of
the following steps: First, a length of suture is secured to the
tissue.

The length of suture attached to the tissue is then

threaded though the eyelet of the anchor, leaving lengths of suture
extending from either side of the eyelet.

(‘597 Patent, 4:26-30.)

Finally, the suture anchor is installed in a preformed hole in the
bone, whereby the lengths of suture are wedged between the suture
anchor and the bone.

(‘597 Patent, 1:60-67.)

By wedging the

suture between the suture anchor and the bone, the method of the
‘597 Patent can be used to reattach tissue to bone without a
surgeon having to tie a knot.

(‘597 Patent, 1:10-15, 25-31, 60-

67.)

16

The pertinent portion of claim 7 states as follows, with the
disputed terms highlighted:
7. A method of reattaching tissue to bone using a suture
anchor having an eyelet formed on a distal end of the
anchor and a drive head formed on a proximal end of the
anchor, the method comprising the steps of: securing a
length of suture to tissue; threading the length of
suture through the eyelet on the distal end of the
anchor, leaving lengths of suture extending from either
side of the eyelet; and installing the suture anchor
into the bone, whereby the lengths of suture are wedged
between the suture anchor and the bone.
(‘597 Patent, 4:23-33.)

The disputed terms of the ‘597 patent are

construed as set forth below:
(1)

“an eyelet formed on a distal end of the anchor”

The dispute over the construction of this phrase is whether
the claim language requires the eyelet to project out from the end
of the anchor or just be located on the distal part of the anchor.
Parcus’ proposed construction is “[a] loop, hole or opening on, or
protruding distally from, the distal tip of a suture anchor.”
(Doc.

#195,

construction

p.

10.)

Arthrex

improperly

argues

imports

that

Parcus’

limitations

proposed

from

the

specification; therefore, the phrase should be construed as “[a]
suture anchor having an eyelet through which suture can be passed
located at a distal part of the anchor.”

(Doc. #208, p. 9.)

The claim requires the suture anchor to have an eyelet “formed
on a distal end.”

The phrase “formed on” suggests that the eyelet

is constructed or placed on the distal end of the anchor and is

17

therefore distinct from an eyelet “on” the anchor.

This reading

of “formed on” is supported by the claims describing the specific
attributes of the suture anchor claimed in the ‘597 Patent.
The language in claim 1 is similar to the language in claim
7 in that the suture anchor has “an eyelet formed on the distal
end of the body.”

(‘597 Patent, 4:11.)

Claim 4 discloses the

suture anchor of claim 1 “wherein the eyelet is formed by a loop
of suture.”

(‘597 Patent, 4:15-16.)

An eyelet formed by a loop

suture (as shown below) signifies that the eyelet is formed on the
distal tip of the anchor body, not on
the body itself. The specification also
describes

a

“suture

anchor

having

a

suture eyelet provided on the distal end
of the anchor.”

(‘597 Patent, 1:51-52.)

There can be a fine line between construing the claims in
light of the specification and improperly importing a limitation
from the specification into the claims.

See Retractable Techs.,

Inc. v. Becton, 653 F.3d 1296, 1305 (Fed. Cir. 2011).

“In

reviewing the intrinsic record to construe the claims, [courts]
strive to capture the scope of the actual invention, rather than
strictly limit the scope of claims to disclosed embodiments or
allow

the

claim

language

to

become

specification conveys is the invention.”

18

divorced
Id.

from

what

the

In this case, the patent, when viewed in its entirety, reveals
that the actual invention claimed has an eyelet formed on the
distal tip of the suture anchor.

Therefore, the Court construes

“an eyelet formed on a distal end of the anchor” as “a loop, hole
or opening on, or protruding distally from, the distal tip of a
suture anchor.”
(2)

“a drive head formed on a proximal end of the anchor”

The parties agree that term “drive head” describes the part
of the anchor that is engaged by the driver, but argue as to
whether the “drive head” has to be distinct from the anchor body.
Arthrex proposes that “drive head” be construed as “the part of
the anchor that engages and compliments the suture anchor driver
and that the drive head need not have any particular shape.”
#200, p. 15.)

(Doc.

Parcus, on the other hand, asserts that “drive head”

should be construed as “[a] head, i.e. a part that projects or
extends from the proximal end of the anchor to be driven by an
engaging driver, and not merely a surface or cavity in the end.”
(Doc. #195, p. 2.)
The claim does not state that the “drive head” is located at
the proximal end of the anchor, as Arthrex’s proposed construction
suggests; rather, the plain language of the claim states that the
head is “formed on” the anchor.
head

is

distinct

consistent

with

from
the

the

This language suggests that the

anchor

references

19

body.
and

Such

a

reading

illustrations

in

is
the

specification.

Figures

1-3

(shown

right) illustrate how the drive head
(10) is distinct from the anchor body.
Arthrex asserts that a prior art
reference

supports

construction.

its

proposed

The Court disagrees.

In

construing a claim, prior art can be
helpful in determining how a disputed
term is used by those skilled in the
art.

ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1321

(Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1584).

The prior

art refererence Arthrex refers to is the Dinsdale Patent, U.S.
Patent No. 5,733,307 (the ‘307 Patent), which describes a “drive
head” having a cavity or socket on the anchor body.
p. 5.)

(Doc. #208,

Claim 1 of the Dinsdale Patent claims a “bone anchor body

having a driver end” and claim 4 provides that “the bone anchor
further comprises a drive pocket formed in said drive end.”
Patent, 5:39-40, 59-62.)

(‘307

Although the detailed description of

Dinsdale refers to a “drive head” (16) having a countersunk pocket
(18) (shown left), the patent does not
claim a drive head.
“driver

end”

is

An anchor with a
also

redibly

distinguisable from a “drive head formed

20

on a proximal end of the anchor” because a “driver end” connotates
that it part of the anchor.
Another

piece

of

extrinsic

evidence

supporting

Parcus’

proposed construction is the testimony of Arthrex’s expert, Jorge
Ochoa (Mr. Ochoa).

Mr. Ochoa testified that a head is generally

distinct from the body and projects outward.
Because

the

intrinsic

and

extrinsic

evidence

(Doc. #225-2.)
support

Parcus’

construction, the Court construes “drive head” as “a head, i.e. a
part that projects or extends from the proximal end of the anchor
to be driven by an engaging driver, and not merely a surface or
cavity in the end.”
Accordingly, it is now
ORDERED:
Parcus Medical, LLC’s Motion for Claim Construction (Doc.
#195)

and

Arthrex,

Inc.’s

Markman

Brief

in

Support

of

Claim

Construction (Doc. #200) are GRANTED as to the construction of the
following terms:
1.

The disputed terms of the ‘451 Patent are construed as
follows:
i.

The “by turning” portion of the preamble of claims 1
and 7 are not claim limitations

ii.

A “cylindrical handle” means “a handle that is shaped
similar to a cylinder.”

21

iii. A “V-shaped indentation at the distal end of the drill
guide for straddling a bone formation at a repair
site” means “an opening having a V-shape spanning a
tip of the drill guide for straddling anatomical bone
at a repair site.”
2.

The disputed terms of the ‘597 Patent are construed as
follows:
i.

An “eyelet formed on a distal end of the anchor” means
“a loop, hole or opening on, or protruding distally
from, the distal tip of a suture anchor.”

ii.

A “drive head formed on a proximal end of the anchor”
means “a head, i.e. a part that projects or extends
from the proximal end of the anchor to be driven by
an engaging driver, and not merely a surface or cavity
in the end.”

DONE AND ORDERED at Fort Myers, Florida, this
July, 2014.

Copies:
Counsel of record

22

29th

day of