COOK INCORPORATED v. ENDOLOGIX, INC.

Filing 355

ENTRY ON COOK'S MOTION FOR CLARIFICATION - Cook's motion for clarification (Dkt. 341 ) is GRANTED. The Court adopts the new construction, "every eye of a set of eyes of the second stent encloses a bend at one of the opposite ends of the first stent" for the '706 patent, Claim 12 term "said set of eyes of said second stent are engaged about said first wire at one of said opposite ends." *SEE ENTRY*. Signed by Judge Tanya Walton Pratt on 9/27/2012. (JD)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
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COOK INCORPORATED Corporate Parent
COOK GROUP INCORPORATED,
Plaintiff,
vs.
ENDOLOGIX, INC.,
Defendant.
______________________________________
ENDOLOGIX, INC.,
Counter Claimant,
vs.
COOK INCORPORATED,
Counter Defendants.

No. 1:09-cv-01248-TWP-DKL

ENTRY ON COOK’S MOTION FOR CLARIFICATION
This matter is before the Court on Plaintiff Cook, Incorporated’s (“Cook”) Motion for
Clarification Regarding the Court’s Claim Construction for the “Said Set of Eyes” Limitation in
Claim 12 of U.S. Patent 5,035,706 (Dkt. 341).

This Court entered its ruling on claim

construction on August 16, 2011. Cook now argues that the Court unintentionally created an
ambiguity when it construed “said set of eyes of said second stent” to mean “every eye of the
second stent.” Dkt. 145 at 23. Because the Court agrees with Cook that the resolution of this
asserted ambiguity will avoid disruption and confusion at trial, Cook’s motion for clarification
(Dkt. 341) is GRANTED.

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I. BACKGROUND
The facts and background of this case are set forth in the Court’s Entry on Claim
Construction (Dkt. 145) and Entry on Endologix’s Motion for Summary Judgment of
Noninfringement of the Patents-in-Suit (Dkt. 300). The following facts are pertinent to the
current motion.
Following a Markman hearing, the Court entered its claim construction on August 16,
2011, in which it construed many of the terms in the asserted patent claims. Specifically,
regarding the ‘706 patent, the Court construed two relevant terms found in Claim 12: “set of
eyes formed at several said bends at one of said opposite ends” and “said set of eyes of said
second stent are engaged about said first wire at one of said opposite ends.” Claim 12 of the
’706 patent provides as follows:
A stent assembly comprising:
a first wire formed into a closed zig-zag configuration including;
an endless series of straight sections having opposite ends, said straight sections
being joined by bends at said opposite ends to form a first stent;
and
a second wire formed into a closed zig-zag configuration including;
a second endless series of straight sections having opposite ends, said straight
sections being joined by bends at said opposite ends to form a second stent;
a set of eyes formed at several of said bends at one of said opposite ends;
wherein said first and second stents are resiliently contractable into smaller first
shape for conveyance through a body passageway;
wherein said first and second stents are resiliently expandable into a second shape
in which the straight sections press against the walls of the body passageway; and
wherein said set of eyes of said second stent are engaged about said first wire at
one of said opposite ends of said first wire.
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Dkt. 181-2 at 9 col. 8:35–59. The relevant terms were construed as follows:
Claim Term
set of eyes formed at several said bends at one
of said opposite ends

Court’s Construction
sections of wire each enclosing a loop and
linked to the ends of the straight sections by
cusps or sharp bends at two or more of the
bends at one of the opposite ends of the second
stent
said set of eyes of said second stent are every eye of the second stent encloses a bend
engaged about said first wire at one of said at one of the opposite ends of the first stent
opposite ends
In construing the first term, the dispute focused on the meaning of “several.” The Court
agreed with Cook that “several” meant “two or more.” In construing the second term, the
dispute focused on whether every eye must be engaged to satisfy the claim limitation. The Court
adopted Endologix’s proposed construction, which the Court characterized as meaning “the
entire set of eyes needs to be engaged about the wire.” Dkt. 145 at 23.
II. LEGAL STANDARD
Patent claims are construed as a matter of law. Markman v. Westview Instruments, Inc.,
517 U.S. 370, 372–74 (1996). The Federal Circuit has emphasized that “[i]t 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. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (citation and internal quotations omitted). The words of a claim are generally given their
“ordinary and customary meaning,” as understood by a person of skill in the art at the time the
patent was filed. Id. at 1312-13. “The construction that stays true to the claim language and
most naturally aligns with the patent’s description of the invention will be, in the end, the correct
construction.” Id. at 1316 (citation and internal quotations omitted). The Federal Circuit has
approved of a district court revisiting claim construction to “clarify its original intent” and “to

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more closely align its interpretation with the claim language and specification[s].” Utah Med.
Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1382 (Fed. Cir. 2003).
III. DISCUSSION
Cook requests the Court clarify its construction of the second claim term discussed in the
Background section: “said set of eyes of said second stent are engaged about said first wire at
one of said opposite ends.” Specifically, Cook asks the Court to make the following change to
the term’s construction: “every eye of a set of eyes formed at two or more bends at one of the
opposite ends of the second stent encloses a bend at one of the opposite ends of the first stent.”
Dkt. 341 at 4–5.
To support its request, Cook relies on the fundamental rule of claim drafting which states
that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in
open-ended claims containing the transitional phrase ‘comprising.” Baldwin Graphic Sys., Inc.
v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ Corp. v. Kinetic Concepts,
Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). To escape this rule, a patentee must evince a “clear
intent” to limit “a” or “an” to mean “one.” Id. “The subsequent use of definite articles ‘the’ or
‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but
simply reinvokes that non-singular meaning.” Id. Cook thus argues the phrase “said set of eyes
of said second stent” necessarily refers back to the earlier limitation, “a set of eyes formed at
several said bends.” Therefore, a complete claim construction would also refer back to the
earlier limitation by recognizing that “said” refers to “a set of eyes.” Cook argues the Court’s
reasoning supports this view, when it said “the entire set of eyes needs to be engaged about the
wire to satisfy this claim limitation.” See Dkt. 145 at 23.

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Endologix responds that Cook’s motion, if granted, would “upset the parties’ settled
expectations and the expert reports that have governed this case for the last year by changing its
claim construction on the eve of trial to fit Dr. McLean’s infringement theory.” Dkt. 348 at 2. It
argues the original construction correctly recognized that in the ‘706 patent all of the eyes in the
second stent are connected; therefore, “every eye of the second stent encloses a bend at one of
the opposite ends of the first stent.” See Dkt. 145 at 23. Endologix argues this construction
rejected Cook’s attempt to “divide the set of eyes at the end of the second stent into subsets,
some of which must fulfill the requirements of the remaining claim limitations and some of
which need not.” Dkt. 348 at 6. See Dkt. 145 at 23 (quoting Cook’s proposed construction that
“the wire at the end of the first stent is disposed through at least two loops of the second stent”).
The Court finds merit in both parties’ positions. First, Endologix is correct to point out
that the Court rejected, if not explicitly, Cook’s proposal that “said set of eyes of said second
stent” only required “at least two loops of the second stent” to be connected. Cook’s proposal
implied that not every eye found in a “set of eyes” must be connected to satisfy the claim
limitation. Second, the Court is mindful that changing claim limitation at this late date could
upset the parties’ expectations. However, the Court is persuaded by Cook and firmly believes
that Cook’s requested clarification embodies the Court’s original intent, which is found in its
Entry on Claim Construction (Dkt. 145). Therefore, the parties should not be prejudiced by the
proposed clarification.
Third, Cook is correct that the use of “said” in the second limitation refers back to the
earlier limitation of “a set of eyes.” Furthermore, the Court stated in its reasoning during claim
construction that the “entire set of eyes needs to be engaged.” Dkt. 145 at 23 (emphasis added).
The Court therefore agrees with Cook that an unintentional ambiguity or inconsistency exists in

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the claim construction as it currently stands. The Court now clarifies that the term “said set of
eyes of said second stent are engaged about said first wire at one of said opposite ends” is
construed to mean “every eye of a set of eyes of the second stent encloses a bend at one of the
opposite ends of the first stent.” Contrary to Endologix’s argument, this construction does not
mean that there can be “subsets of eyes.” But keeping in line with the fundamental rule of claim
drafting discussed above, Claim 12 discloses the possibility of there being “one or more” sets of
eyes. See Baldwin, 512 F.3d at 1356 (holding that “an indefinite article ‘a’ or ‘an’ in patent
parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional
phrase ‘comprising”).
Finally, the Court notes that a motion for clarification of claim instruction is not the
proper forum to argue infringement or noninfringement. Both parties devote considerable effort
in their briefs to these issues. The Court will not address the parties’ arguments except to say it
has not considered any element of the Powerlink device in reaching its holding. The Court
makes no judgment on whether the construed claim term is present in the Powerlink device.
That is a question for the jury.
CONCLUSION
For the reasons set forth in this Entry, Cook’s motion for clarification (Dkt. 341) is
GRANTED. The Court adopts the new construction, “every eye of a set of eyes of the second
stent encloses a bend at one of the opposite ends of the first stent” for the ‘706 patent, Claim 12
term “said set of eyes of said second stent are engaged about said first wire at one of said
opposite ends.”
SO ORDERED.

________________________
Hon. Tanya Walton Pratt, Judge
United States District Court
Southern District of Indiana

09/27/2012
Date: ___________
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Distribution:
Bradley G. Lane
BRINKS HOFER GILSON & LIONE
[e-mail]

Daniel K. Burke
HOOVER HULL LLP
[e-mail]

Bryan John Leitenberger
BRINKS HOFER GILSON & LIONE
[e-mail]

Emily K. Sauter
KNOBBE MARTENS OLSON & BEAR,
LLP
[e-mail]

Danielle Anne Phillip
BRINKS HOFER GILSON & LIONE
[e-mail]

Joseph S. Cianfrani
KNOBBE MARTENS OLSON & BEAR,
LLP
[e-mail]

Jason W. Schigelone
BRINKS HOFER GILSON & LIONE
[e-mail]

John David Evered
KNOBBE MARTENS OLSON & BEAR,
LLP.
[e-mail]

Kelly J. Eberspecher
BRINKS HOFER GILSON & LIONE
[e-mail]
Ralph J. Gabric
BRINKS HOFER GILSON & LIONE
[e-mail]

Joshua J. Stowell
KNOBBE MARTENS OLSON & BEAR,
LLP.
[e-mail]

Andrew W. Hull
HOOVER HULL LLP
[e-mail]

John B. Sganga, Jr,
KNOBBE MARTENS OLSON & BEAR,
LLP.
[e-mail]

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