Boston Scientific Corporation et al v. Cook, Inc. et al

Filing 215

Judge Douglas P. Woodlock: MEMORANDUM AND ORDER REGARDING CLAIM CONSTRUCTION entered. The parties are ORDERED to submit on or before May 6, 2016 a joint proposed scheduling order setting forth dates certain for the conclusion of discovery, summary judgment motions and any other dates necessary to be established to bring this case to judgment. (Woodlock, Douglas)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
BOSTON SCIENTIFIC CORPORATION
BOSTON SCIENTIFIC SCIMED, INC.;
BOSTON SCIENTIFIC LIMITED; and
ENDOVASCULAR TECHNOLOGIES, INC.,
Plaintiffs
v.
COOK INCORPORATED; WILSON-COOK
MEDICAL INC.; COOK MEDICAL
INCORPORATED; COOK IRELAND LTD.;
TAEWOONG MEDICAL CO., LTD;
CHEK-MED SYSTEMS, INC. d/b/a GI
SUPPLY; STANDARD SCI-TECH INC.;
ENDOCHOICE, INC.; and SEWOON
MEDICAL CO., LTD.,
Defendants.

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CIVIL ACTION NO.
1:10-cv-11646-DPW

MEMORANDUM AND ORDER
REGARDING CLAIM CONSTRUCTION
April 22, 2016

Table of Contents
I. BACKGROUND.................................................. 4
II. PRINCIPLES OF CLAIM CONSTRUCTION........................... 7
III. CLAIM CONSTRUCTION........................................ 8
A.

The Pulnev Patents ...................................... 8

1.

“thread” and “threads” ................................. 8

2.

“elongate[d] element[s]” and “elongate member” ........ 16

3.

“helix,” “helical,” “opposite senses of helix,” ....... 17

“opposite helical lines,” “common direction of winding,” and
“opposite to the first direction” ......................... 17
4.

“interlaced,” “interlacing pattern,” and “interwoven” . 30

5.

“configured to slide with respect to one another” ..... 35

6.
“a shape and orientation substantially different from
shape and orientation of any of the elongated
elements” 40
7.

“free ends” and “said first and second ends” .......... 48

8.

“mesh structure” ...................................... 50

9.

“merging sections,” “bending points,” “bend(s),” ...... 53

“connection elements,” “curvilinear segment,” and “circle arc
segment” .................................................. 53
B.
1.

The Hankh Patents ...................................... 63
“truncated conical segment” and “truncated conical .... 63

portion” .................................................. 63
2.

“intermediate segment” and “second tubular segment” ... 69

3.

“distal segment” and “third tubular segment” .......... 75

4.

“the steep angle varies along the truncated conical ... 82

segment in the longitudinal direction,” “the steep angle
increases along the truncated conical portion in the proximal
direction,” “the steep angle varies along the second tubular
segment,” and “the steep angle increases in the proximal
direction along the second tubular segment” ............... 82
5.

“strand,” and “a first strand and a second strand” .... 88

6.

“radial force” ........................................ 91

2

7.
“wound helically,” “wound in opposite directions,” and “a
strand wound helically in a direction [different from the
first direction]” ......................................... 94
8.

“interbraided” ........................................ 98

9.

“are selected to facilitate a placement of the tubular 101

wall at a junction of the esophagus with the stomach” .... 101
C.
1.

The Thompson Patent ................................... 105
“circumscribing the stent over substantially the ..... 105

entirety of said axial length” ........................... 105
2.

“open weave construction” ............................ 109

3.

“braided helical strands” ............................ 112

IV. CONCLUSION............................................... 115
V. APPENDIX: CLAIM CONSTRUCTION SUMMARY...................... 116
A.

Pulnev Patents ........................................ 116

B.

Hankh Patents ......................................... 122

C.

Thompson Patent ....................................... 128

3

Plaintiffs Boston Scientific Corporation; Boston Scientific
Scimed, Inc.; Boston Scientific Limited; and Endovascular
Technologies, Inc., bring this suit against Defendants Cook
Incorporated; Wilson-Cook Medical Inc.; Cook Medical
Incorporated; Cook Ireland Ltd.; Taewoong Medical Co,. Ltd.;
Chek-Med Systems, Inc. d/b/a GI Supply; Standard Sci-tech, Inc.;
Endochoice, Inc.; and Sewoon Medical Co., Ltd. for infringement
of ten United States Patents related to medical stents.

Before

me are the parties’ respective briefs1 regarding the construction
of several claim terms in the patents.
I. BACKGROUND
Plaintiffs allege infringement of United States Patent Nos.
6,007,574 (“‘574 Patent”); 6,309,415 (“‘415 Patent”); 7,160,323
(“‘323 Patent”); 7,419,502 (“‘502 Patent”); 7,419,503 (“‘503
Patent”); 7,736,386 (‘386 Patent”); 7,763,068 (“‘068 Patent”);
6,533,810 (“‘810 Patent”); 6,818,015 (“‘015 Patent”); and
5,876,448 (“‘448 Patent”).

Both parties address the patents in

groups characterized by common inventors and similar
specifications, and both address the disputed terms as having
the same meaning when used in any of the patents within a given
group.

The parties label the ‘574 Patent, the ‘415 Patent, the

Plaintiffs briefed the issues jointly, submitting one
preliminary claim construction brief and one reply brief on
behalf of all. Defendants did the same.
4
1

‘323 Patent, the ‘502 Patent, the ‘503 Patent, the ‘386 Patent,
and the ‘068 Patent as the “Pulnev Patents.”

They similarly

label the ‘810 Patent and the ‘015 Patent as the “Hankh
Patents.”
Patent.”

Finally, they label the ‘448 Patent as the “Thompson
In light of this protocol among the parties, I adopt

the same nomenclature and assumptions regarding claim
construction within each group.
The United States Patent and Trademark Office (“PTO”)
issued the Pulnev Patents on various dates between December 28,
1999, and July 27, 2010.

The Abstract of each of the Pulnev

Patents explains that the Patent teaches:
[a] stent shaped as a three-dimensional body which is
formed by interlaced threads (1) arranged in multistart
turns of a helical line. The threads (1) are arranged in
at least two groups (2 and 3) of the helical turns
featuring opposite senses of helix. The stent ends are
established by sections (5) where the turns of one helical
line merge into those of the other helical line, said
sections appearing as a single length of the thread (1).
Abstract, Pulnev Patents.

The numbers in parentheses refer to

labels on a set of five figures incorporated within the
specifications of each of the Pulnev Patents.
The PTO issued the Hankh Patents on March 18, 2003, and
November 16, 2004.

The Abstract of each of the Hankh Patents

explains that the Patent teaches:
[a] stent having a flexible self-expandable braided tubular
wall having a proximal segment having an outer diameter,
and a distal segment having an outer diameter smaller than
the outer diameter of the proximal segment. An
5

intermediate segment is formed between the proximal and
distal segments, which forms a truncated cone of which the
base is forming the proximal end of the intermediate
segment and of which the top is forming the distal end of
the intermediate segment. A covering layer is arranged
within the tubular wall.
Abstract, Hank Patents.

The specifications of the two Hankh

Patents are materially identical.
The PTO issued the Thompson Patent on March 2, 1999.

The

Abstract of the Thompson Patent explains that the Patent
teaches:
A radially self-expanding stent particularly suited for
treating esophageal strictures, includes a medial region
and proximal and distal cuffs having diameters greater than
the medial region diameter when the stent is in the relaxed
state. A silicone coating circumscribes the medial region,
but the cuffs are not coated and retain their open weave
construction.
Abstract, Thompson Patent.

The Abstract also describes a

“deployment device” and a “low durometer sleeve.”

Id.

The

written description explains that “in accordance with the
present invention, a radially self-expanding stent can be
positioned accurately at a desired treatment site within a body
lumen, based on an accurate positioning of the interior tubing
or other stent delivery means.

The stent may be allowed to

radially self-expand over the majority of its axial length, and
yet be retracted if necessary or desired, all while its axial
position with respect to the delivery tool is maintained.”
Thompson Patent at 4:21-28.
6

II. PRINCIPLES OF CLAIM CONSTRUCTION
A patent must include “one or more claims particularly
pointing out and distinctly claiming the subject matter which
the applicant regards as his invention.”

35 U.S.C. § 112(b).

The construction of those claims “is exclusively within the
province of the court.”

Markman v. Westview Instruments, Inc.,

517 U.S. 370, 372 (1996).

“As a general rule, claim terms

should be given their ordinary and customary meaning to persons
of skill in the art as of the effective date of the patent
application.”

Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314,

1320 (Fed. Cir. 2011).
To interpret the terms in a claim, “we look to the words of
the claims themselves, the specification, the prosecution
history, and any relevant extrinsic evidence.”

Retractable

Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296,
1303 (Fed. Cir. 2011).

“[T]he claims themselves provide

substantial guidance as to the meaning of particular claim
terms.”

Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282,

1288 (Fed. Cir. 2009)(quoting Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005)).

“A patent’s specification

provides necessary context for understanding the claims,” and
“sometimes the specification offers practically incontrovertible
directions about claim meaning.”

Id.

The final piece of

“intrinsic evidence,” the prosecution history, “can inform the
7

meaning of the claim language by demonstrating how the inventor
understood the invention and whether the inventor limited the
invention in the course of prosecution, making the claim scope
narrower than it would otherwise be.”

Phillips, 415 F.3d at

1317.
Courts may also consider “extrinsic evidence,” which is
evidence outside of the patent and prosecution history,
including dictionaries, treatises, and expert testimony.
1318.

Id. at

Although “extrinsic evidence can help educate the court

regarding the field of the invention and can help the court
determine what a person of ordinary skill in the art would
understand the claim terms to mean,” id. at 1319, it is “less
reliable than the patent and its prosecution history.”
1318.

Id. at

Thus, extrinsic evidence is “unlikely to result in a

reliable interpretation of patent claim scope unless considered
in the context of the intrinsic evidence.”

Id. at 1319.

III. CLAIM CONSTRUCTION
A.

The Pulnev Patents
1.

“thread” and “threads”

The claims of the ‘574, ‘323, ‘502, ‘503, ‘386, and
068 Patents all refer to “thread” and/or “threads.”

Plaintiffs

contend that “thread” means “portion of wire” and “threads”
means “portions of wire.”

The Defendants contend that “thread”
8

means “length of material that is not a monofilament” and
“threads” means “two or more threads.”
In support of their proposed construction, Defendants offer
definitions culled from several dictionaries.

First, Textile

Terms and Definitions 254 (8th ed. 1988) (“Textile Terms”)
defines “thread” as, inter alia, “[t]he result of twisting
together in one or more operations two or more single, folded,
or cabled yarns.”

Similarly, Random House Webster’s College

Dictionary 1389 (1991) (“Webster’s College Dictionary”) defines
“thread” as, “a fine cord of flax, cotton, or other fibrous
material spun out to a considerable length, esp. when composed
of two or more filaments twisted together.”

Finally, Webster’s

Third New International Dictionary 2381 (1993) (“Webster’s Third
Dictionary”) defines “thread” as, “a filament, a group of
filaments twisted together, or a filamentous length formed by
spinning and twisting short textile fibers into a continuous
strand.”
These definitions refer to the wrong art.

The art relevant

to the patents in this case is that of medical stents, not
textile manufacturing.

It is implausible that Plaintiffs’

patents claim only medical stents made of yarn.

Plaintiffs’

expert, Dr. Charles Taylor, has stated that the textile arts are
an unrelated field and Defendants have offered no compelling
rebuttal.

Taylor Reply Affidavit ¶ 11.
9

The Defendants point

only to other terms related to the textile arts that are used in
the Pulnev Patents, such as “interlaced” and “interwoven,” and
to expert testimony that such braided stents are created using
machines similar to textile braiders.

However, the use of terms

like “interlaced” and “interwoven” does not indicate that the
material that is interlaced or interwoven in stents is the same
material that is interlaced or interwoven in textiles.
Likewise, the fact that a medical professional making a stent
may have used a tool common to the textile industry does not
change the lexicon relevant to this case from a medical one to
one regarding textile manufacturing.

A textile manufacturer

does not have ordinary skill in the art of making medical stents
because the two arts share a common tool.

We would not look to

a construction worker’s understanding of terms in a patent
related to orthopaedic surgery simply because both professions
use drills and saws, and the same is true in this case.
Dr. Taylor has further stated that he is unaware of any
self-expanding stent that is not made of monofilaments and that
he believes that such a stent would be insufficiently elastic
and therefore ineffective.

Taylor Reply Affidavit ¶¶ 4-5.

Defendants do not rebut this assertion.

Defendants have thus

failed to show that a person of skill in the art would believe
that the term “thread” as used in the Pulnev Patents refers to a
“length of material that is not a monofilament.”
10

By contrast, Plaintiffs’ argument that a “thread” is a
“portion of wire” is rooted in the claims, specifications, and
prosecution histories of the Pulnev Patents as well as in
supporting extrinsic evidence in the form of expert opinion and
relevant art.
The specification of the ‘574 Patent teaches that in prior
art the threads of a stent were often joined by “welding,
soldering or other similar means”.

See ‘574 Patent at 3:7-10

(“[I]nstead of joining the threads at both ends of the stent by
welding, soldering or other similar means, [in the present
invention] these ends are connected by curvilinear segments made
of the same piece of thread.”).

Welding, soldering, and similar

means are techniques for joining pieces of metal, such as wire,
not fibrous material, such as yarn.

The specification thus

teaches that “threads” are made of a metallic monofilament.
The specification of the ‘574 Patent also discusses prior
art in which “[t]he thread is made of a material featuring the
SME.”

‘574 Patent at 2:38-39.

a “shape memory effect.”

The specification defines SME as

Id. at 1:53.

Dr. Taylor explains in

his affidavit that shape memory effect “is a term generally
associated with certain metallic alloys.”
Affidavit ¶ 9.

Taylor Reply

Similarly, the specification discusses a

preferred embodiment of the invention in which “the stent is
made of a material possessing a SME or of a superelastic
11

material.”

‘574 Patent at 4:16-18.

Dr. Taylor states that both

SME and superelastic “are terms that are almost always
associated with various metallic alloys.”

He further explains

that metallic alloys “are types of materials that would be used
to form ‘wire.’”

Taylor Reply Affidavit ¶ 9.

The patent prosecution history of at least one of the
Pulnev Patents also supports Plaintiffs’ interpretation.

During

the prosecution of the ‘574 Patent, the patentee argued:
In contrast to [the] Palmaz [prior art], at least some
elongated helical members . . . of the present invention
merge into each other, that is at least some selected
pairs of these elements are made from a single piece of
wire, or a thread, and that elements of each selected
pair are joined together by a connecting portion of the
same thread.
(emphasis added).

Van Eman Decl., pg. 81.

The patentee thus

referred to wire and thread interchangeably.
The Defendants contend that this portion of the prosecution
history of the ‘574 Patent “confirms that the applicants knew
perfectly well the distinction between ‘wire’ and ‘thread.’”
disagree.

I

If the applicants had intended to treat the “single

piece of wire” and the “thread” as separate and distinct
entities, they would have completed the phrase “elements of each
selected pair are joined together by a connecting portion of the
same . . .” with “wire or thread,” not, as they did, only the
single word “thread.”

The applicants used the phrase

“connecting portion of the same thread” to refer back to the
12

previous phrase “a single piece of wire, or a thread.”

The

sentence structure demonstrates that “a single piece of wire, or
a thread” was not used to describe two separate materials, but
instead two alternative labels for the same material.
Defendants argue that the manner in which the specification
of the ‘574 Patent distinguishes prior art stents indicates that
“thread” does not mean “wire.”

The specification states:

One more stent embodiment presents its construction as
a hollow tubular element established by the coils of a
wire or the turns of a strip. The construction of such
a stent is more elastic since the stent is deformable
both radially and axially.
However, with this stent it is not always possible to
provide an optimum value of the pitch of spring coils or
of strip turns because with too a large pitch a uniform
pressure
distribution
over
the
surface
being
prosthesized is affected, which may result in partial
vessel stenosis, whereas in the case of too a small pitch
stent implantation may cause hyperplasia of the intima
of the vascular wall in the organ under reconstruction,
as well as early thrombotic complications.
‘574 Patent at 1:65-2:11.

Defendants argue that the use of the

word “wire” in the specification indicates that the word
“thread” in the claims does not mean “wire.”
To the extent that the Defendants cite to this portion of
the specification in support of the proposition that all wire
stents were disclaimed, it is clear from the specification that
it was not the wire material - the problematic stent embodiment
could also be made of “the turns of a strip” - that the
patentees distinguished but instead the form taken by the wire
13

or strip in that particular embodiment.

To the extent that

Defendants cite to this portion of the specification in order to
argue that the patentees knew the word wire and “[i]f the
patentees wanted to claim a stent made from wire, they could
have done so,” this is not a compelling argument.

If “thread”

and “wire” are used interchangeably in the field, then the
choice to use one synonym does not disclaim the other.
Plaintiffs’ construction, however, does not interpret “a
thread” to mean “a wire” but rather “a portion of wire.”

The

claims indicate that the term should be construed to mean a
“portion” of wire because of the way in which the claims relate
the terms “thread” and “threads.”

Claim 1 of the ‘323 Patent

teaches “a three-dimensional body whose surface is formed by at
least two groups of turns made of interlaced elastic threads,”
‘323 Patent at 6:32-34, and Claim 2, which is dependant on Claim
1, teaches that “the turns of all helical lines are made of a
single segment of the thread,” id. at 6:42-43.

By including the

word “portion,” the Plaintiffs’ construction accommodates the
language of the claims teaching an invention that may
simultaneously be composed of both multiple “threads” and one
“thread” by interpreting the invention to be composed of smaller
“portions of thread” within one larger “portion of thread.”
Plaintiffs bolster the intrinsic evidence with extrinsic
evidence in the form of an affidavit by their expert, Dr.
14

Taylor, who states his opinion that “threads” refers to portions
of wire because self-expanding stents are generally made from
wire.

Taylor Affidavit ¶ 13.

He supports this opinion with

three articles relating to self-expanding metal stent designs,
each of which refers to stents made of “a single thread of . . .
nitinol wire.”

See Ko, G. et al, Obstruction of the Lacrimal

System: Treatment with a Covered, Retrievable, Expandable
Nitinol Stent versus a Lacrimal Polyurethane Stent, 227
Radiology 270, 270 (2003); Song, H. et al., Covered Retrievable
Expandable Nitinol Stents in Patients with Benign Esophogeal
Strictures: Initial Experience, 217 Radiology 551, 551 (2000);
Jung, G. et al., Malignant Gastroduodenal Obstructions:
Treatment by Means of a Covered Expandable Metallic Stent–
Initial Experience, 216 Radiology 758, 758 (2000).
Defendants do not refute Dr. Taylor’s assertion.

Instead,

the Defendants challenge the relevance of Dr. Taylor’s expert
opinion.

The Defendants contend that “Dr. Taylor does not even

attempt to provide the perspective of a person of ordinary skill
in the art in 1993, nor has he demonstrated that he is qualified
to even render an opinion on this point” because he “has not
demonstrated that he himself had any experience with stents, or,
indeed, any medical device as of 1993.”
However, Defendants have not demonstrated that the
understanding in the relevant field of the term “thread” changed
15

between 1993 and the present, nor presented any expert testimony
that the meaning of the term was anything other than the
definition Dr. Taylor advanced.

While Dr. Taylor’s affidavit

would have been even more convincing had he expressly and
directly addressed the meaning of thread in the field as of
1993, his statements regarding the term’s meaning thereafter
remain relevant to its past meaning, and Defendants have not
raised any challenge to undermine that relevance.

I therefore

decline Defendants’ invitation to disregard Dr. Taylor’s
affidavit and his opinions.
In light of the evidence that the Plaintiffs have marshaled
from the claims, specifications, and patent prosecution
histories of the Pulnev Patents, as well as the extrinsic
evidence that they present in support of their interpretation, I
construe “thread(s)” to mean “portion(s) of wire.”
2.

“elongate[d] element[s]” and “elongate member”

Both parties agree that the terms “elongate[d] element[s]”
and “elongate member” should have the same meaning as
“thread(s).”

In large part, I agree, because the elongated

elements are composed of thread.

See ‘574 Patent at 6:28.

However, not every thread in the claimed inventions makes up an
elongated element.
The term “elongate[d] element[s]” is used only to describe
the threads making up the side surface of the stent.
16

The term

“thread,” by contrast, is used to describe all portions of wire
in the stent.

For example, in Claim 1 of the ‘574 Patent, the

“side surface” is described as “being formed by two groups . . .
of elongated elements.”

‘574 Patent at 6:25-27.

The claim also

describes “connecting elements” that are formed as “curvilinear
segment[s].”

These “connecting elements are described as

distinct from the “elongated element[s]” and yet also made of
thread.

‘574 Patent at 6:44-49.

In light of my construction of “thread(s)” and the
necessary distinction between “elongated elements” and
“connecting elements,” I construe “elongate[d] element[s]” and
“elongate member” to mean “portion(s) of wire forming the side
surface.”
3.

“helix,” “helical,” “opposite senses of helix,”
“opposite helical lines,” “common direction of
winding,” and “opposite to the first direction”

The claims in each of the Pulnev Patents incorporate one or
both of the terms “helix” and “helical.”

For example, numerous

claims in the Pulnev Patents teach threads with a “helical
configuration” or threads that are “arranged along helical lines
having opposite senses of helix.”

See, e.g., ‘574 Patent at

6:29; ‘323 Patent at 6:34-35; ‘502 Patent at 6:38-39.
Plaintiffs contend that “helix” should be construed to mean
“spiral form or structure” and that “helical” should be
construed to mean “approximating a helix.”
17

Defendants contend

that both terms should be construed to mean “a smooth,
continuously-spiraling, three dimensional curve that lies on a
cylinder or cone and follows a path having one of either a
consistent left-handed or right-handed screwing motion.”
Plaintiffs argue that language within the claims supports
their construction because many of the asserted claims require
that threads be “arranged along helical lines having opposite
senses of helix.”

See, e.g., ‘323 Patent at 6:34-35.

Plaintiffs contend that “[s]uch language makes clear that a
complete helix extending from one end of the stent to the other
in a ‘continuously spiraling path,’ as alleged by Defendants, is
not required by the claim” because “[a] thread can be ‘arranged
along helical lines’ without continuing along the same line
indefinitely.”

This argument fails because it does not address

the relevant term.

Even if threads can be “arranged along

helical lines” without continuing along the same lines
indefinitely, the modification applies to what it means to be
“arranged,” and how long an “arrangement” must continue, instead
of what it means to be “helical.”

The phrase “arranged along

helical lines” does not illuminate the definition of “helical.”
Defendants’ argument based on the claims is similarly
unavailing.

Defendants contend that the claims support their

construction because many of the asserted claims refer to the
threads in helical configurations as having a “direction of
18

winding,” see, e.g., ‘574 Patent at 6:30 or “having opposite
senses of helix,” see, e.g., ‘323 Patent at 6:36.

Their

contention is also based on similar terms in the specification,
which describe “turns of a helical line and . . . at least two
groups featuring opposite sense of the helix line.”
at 2:65-3:3.

‘574 Patent

Defendants argue that a path would not have a

“sense” or a “direction” unless it is actually wound into a
helix.

This argument is conclusory.

A line need not be

“smooth” and the spiral need not be “continuous” to be
considered a spiral or for the spiral to have a general
“direction.”
Defendants additionally contend that their construction
must be adopted because U.S. Patent No. 4,733,665 (“Palmaz
Patent”), cited in the background section in each of the Pulnev
Patents, see, e.g., ‘574 Patent at 1:34, distinguishes between a
“helical” pattern and a “zig-zag” pattern, see Palmaz Patent at
1:30-52.

This argument fails for two reasons.

First, although

the Pulnev Patents refer to the Palmaz Patent, they do not state
that terms used in the Pulnev Patents must be construed in the
same manner in which they would be construed in the context of
the Palmaz Patent.

Instead, they merely distinguish the prior

art presented in the Palmaz Patent (without referring to helices
at all).

Second, the Palmaz Patent itself does not define

“helical” or explicitly state whether a form “approximating a
19

helix” would be “helical” under the claims of the patent.

A

line could approximate a helix, instead of a zig-zag, without
being “smooth” and “continuous.”

The Palmaz Patent does not, on

its face, require adoption of the construction that Defendants
proposed.
Finally, Defendants contend that because each of the five
figures presented in the Pulnev patents depicts a helix
featuring a continually spiraling path without zig-zags or
hooks, that every “helical” line under the claims must also
feature those characteristics.

However, each of the Pulnev

Patents describes these figures only as “some illustrative
embodiments” of the invention, see, e.g., ‘323 Patent at 4:6566.

They are not described as representing every possible

embodiment.

“[I]t is improper to read a limitation from the

specification into the claims.”

Liebel-Flarsheim Co. v. Medrad,

Inc., 358 F.3d 898, 604 (Fed. Cir. 2004).

“[M]ere inferences

drawn from the description of an embodiment of the invention
cannot serve to limit claim terms,” Johnson Worldwide
Associates, Inc. v. Zebco Corp., 175 F.3d 985, 992 (Fed. Cir.
1999), and I will not use inferences drawn from the diagrammatic
description of particular embodiments to limit the claim terms
of the Pulnev Patents.
While Plaintiffs do not point to particular components of
the claims or the specification in support of their own proposed
20

construction, they do argue that two of the illustrative figures
demonstrate the inaccuracy of Defendants’ proposed definitions.
They contend that, based on these illustrations, the term
“helical” as used in the claims cannot limit a helical
configuration to either a “curve that
lies on a cylinder or cone” or a
“smooth, continuously spiraling”
curve.
First, Plaintiffs argue that
Figure 3 indicates that a “helical”
configuration need not be a “curve
that lies on a cylinder or cone.”
Figure 3 depicts lines that are
arranged as if around a sphere and
not as if around a cylinder or cone:
Plaintiffs contend that Defendants’
definition is therefore too limited.
Defendants respond that the ‘415 Patent distinguishes
between “spherical” and “helical” embodiments.

Claim 1 of the

‘415 Patent teaches a stent defined by a single elongate element
without specifying the shape of the elongate element or of the
body of the stent.

‘415 Patent at 6:26-31.

Claim 2 teaches

“[t]he device of claim 1, wherein said elongate element follows
a helical line.”

Id. at 6:32-33. Claim 9 teaches “[t]he device
21

of claim 1, said body having a first end, a second end and a
plurality of merging sections defining each of said first and
second ends.”

Id. at 6:50-52.

Claim 13 teaches “[t]he device

of claim 9, wherein a central portion of said body has a crosssectional profile that is much larger than a cross-sectional
profile of said ends of said body.”

Id. at 6:60-62.

Claim 14

teaches “[t]he device of claim 13, wherein said ends of said
body are joined to provide the body with a generally spherical
configuration.”

Id. at 63-65.

Defendants argue that the

separate language and embodiments in Claims 2 and 14
differentiate the spherical and helical configurations. I
disagree.
Claim 2 teaches any embodiment of Claim 1 in which the
“elongate element follows a helical line.”

Without conclusorily

accepting Defendants’ definition of “helical,” I must consider
that, among other embodiments, the description in Claim 2 could
include an embodiment of Claim 1 in which the “body” has “a
generally spherical configuration.”

Similarly, Claim 14 teaches

a variety of embodiments of Claim 1 in which the “body” has “a
generally spherical configuration.”

Therefore, I must also

consider that the description in Claim 14 could include an
embodiment of Claim 1 in which the “elongate element follows a
helical line.”

It is possible that the two claims are distinct

but not mutually exclusive - that is, while each is applicable
22

to some embodiments that the other does not describe, certain
embodiments are fairly described by both.

Thus, the claims in

the ‘415 Patent do not refute the Plaintiffs’ contentions that a
“helical line” can lie on a sphere as well as a cylinder or
cone.
By contrast, the claims in the ‘574 Patent do clarify the
relationship between a “helical” line and a spherical body.
Claim 1 of the ‘574 Patent teaches that the side surface of the
stent is formed of elongated elements “extending in a helical
configuration.”

‘574 Patent at 6:29.

‘574 Patent is dependent on Claim 1.

Every other claim in the
Thus, the wires in all

embodiments of the claimed invention extend in a “helical”
configuration, including the wires depicted in Figure 3, which
the specification describes as an “illustrative embodiment[]”,
id. at 4:51-52, and in which body of the stent is spherical.
The specification of the ‘574 Patent clarifies that “helical”
lines can lie on a sphere and therefore cannot be limited to
those that lie “on a cylinder or cone.”
Plaintiffs’ second argument, based on Figure 5, is less
compelling.

The Plaintiffs point to Figure 5, which each of the

Pulnev Patents describes as depicting “a stent embodiment . . .
provided with the additionally interwoven threads 1 on a section
8, which features a higher interlacing density of the threads

23

1.” See, e.g., ‘415 Patent at 5:54-58.

The numbers “1" and “8"

refer to labeled sections of Figure 5:

The Plaintiffs contend that the interwoven threads in Figure 5
include bends along the stent body and that therefore the
threads are not “continuously spiraling” as the Defendants’
proposed definition requires.
Defendants contend that the “additionally interwoven
threads” do not need to follow a helical path and therefore
their configuration is irrelevant to the definition of
“helical.”

I disagree.

Claim 5 of the ‘574 Patent, utilizing

the same identifying label “8” as the diagram, teaches “[t]he
stent as set forth in claim 1, wherein a portion (8) of the side
surface is provided with third and fourth groups of the
elongated elements, the elongated elements of the third and the
fourth groups being formed by an elastic thread and extending in
a helical configuration along a longitudinal axis of the

24

body . . . .”

‘574 Patent at 6:58-63 (emphasis added).

Thus

the elongated elements making up the “additionally interwoven
threads” as described in Claim 5 must indeed extend “in a
helical configuration.”
However, a close look at Figure 5 indicates that
Plaintiffs’ argument is nonetheless misleading.

Plaintiffs

point to the bends at the ends of the helical lines, which
connect two lines spiraling in opposite directions.

Plaintiffs

present no reason to believe that these connecting elements are
considered to be part of the “helical configuration.”
do not extend “along a longitudinal axis of the body.”
6:62-63.

The bends
Id. at

Claim 21 of the ‘502 Patent describes a stent with

additionally interwoven elements in which “free ends of the
elements are joined to the elements that form the bending points
and/or to one another,” ‘502 Patent at 7:40-42, indicating that
the bends at the end of the additionally interwoven elements are
not considered to be a part of the elements themselves but
instead are connectors.

Plaintiffs’ argument based on Figure 5

is therefore unconvincing.
In addition to the intrinsic evidence above, both parties
present dictionary definitions in support of their respective
proposed constructions.

Plaintiffs point out that The American

Heritage College Dictionary 642-43 (4th ed. 2002) (“American
Heritage Dictionary”) defines “helical” as “[h]aving a shape
25

approximating that of a helix,” and defines “helix” as “a spiral
form or structure.”

Defendants point out that the same

dictionary provides an alternate definition of helical as “[o]f
or having the shape of a helix, spiral” and an alternate
definition of “helix” as “[a] three-dimensional curve that lies
on a cylinder or cone, so that its angle to a plane
perpendicular to the axis is constant.”

Defendants gather

similar definitions from Webster’s Third Dictionary 1050
(defining “helical” as “relating to, or having the form of, a
helix” and “something helical in form (as in a coil extension
spring)” and defining “helix” as “something spiral in form,” “a
coil formed by winding wire around a uniform tube,” and “a curve
traced on a cylinder by the rotation of a point crossing its
right sections at a constant oblique angle”) and Webster’s
College Dictionary 621-22 (defining “helical” as “pertaining to
or having the form of a helix; spiral” and defining “helix” as,
inter alia, “a spiral” and “the curve formed by a straight line
drawn on a plane when that plane is wrapped around a cylindrical
surface of any kind, esp. a right circular cylinder, as the
curve of a screw”).
Given the lack of uniformity among the definitions, and the
lack of reasoning regarding why any one of these definitions
ought to be preferred over another, I cannot draw any
conclusions from these dictionary entries.
26

The Federal Circuit

has noted a common difficulty with the use of general
dictionaries in construing technical terms: “it focuses the
inquiry on the abstract meaning of words rather than on the
meaning of claim terms within the context of the patent.”
Phillips, 415 F.3d at 1321.

That is precisely the trouble here.

None of the dictionaries indicates which meaning is appropriate
in the context of medical stents as discussed in the Pulnev
Patents.
Plaintiffs offer the opinion of their expert, Dr. Taylor,
to address the issue.

Dr. Taylor states in his affidavit that

“[i]n the stent field, we do not use the term ‘helical’ to mean
that the wire forming the stent must continue in a single
direction along the entire length of the stent.

Rather,

‘helical’ could refer to a variety of configurations.”
Reply Affidavit ¶ 12.

Taylor

Dr. Taylor’s affidavit supports a broader

construction of the terms “helix” and “helical” than that
provided by Defendants.
Defendants contend that Dr. Taylor’s statements should be
discounted in light of his affidavit submitted in support of
Plaintiffs in a separate matter before Judge Stearns.

In

Orbunsneich Medical Co. Ltd., BVI, v. Boston Scientific
Corporation, No. 1:09-cv-10962, Dkt. No. 110, Dr. Taylor
submitted an affidavit stating:

27

For a “helical segment” to be a natural constituent of
the stent, one of ordinary skill in the art at the time
the patents-in-suit were filed would recognize that such
a segment would have the mechanical properties of a
helix. I do not believe that a person of ordinary skill
in the art at the time of filing would understand the
phrase “helical segments” as it is used in the asserted
patents to mean any arbitrary line drawn around the stent
in a helical direction. In fact, it was well known in
the art at the time that such artificial paths having a
helical direction could be drawn on nearly every stent
ever designed.
Ex. EE, Taylor Affidavit ¶ 8.

In its brief in the case before

Judge Stearns, Boston Scientific argued that the “mechanical
properties” of a helix must characterize a segment in order to
make a segment helical, because otherwise a shape approximating
a helix could be drawn atop the wires of almost any stent.
Boston Scientific provided diagrams demonstrating how such
patterns could be drawn.2
Dr. Taylor’s affidavit in Orbunsneich may undermine the
extremely loose definition proposed by Plaintiffs in this case
(defining “helical” as merely “approximating a helix” (emphasis
added)), but it does not contradict the affidavit that Dr.
Taylor has submitted here.

Dr. Taylor did not state in the

Orbunsneich affidavit that a “helical” wire must continue in a
single direction along the entire length of the stent.

Even in

Judge Stearns did not construe the terms in that case. On May
4, 2012 Judge Stearns cancelled the Markman hearing pending the
PTO’s reexamination of the five patents in suit. The case was
terminated on June 4, 2012 pending the outcome of the patent
reexamination.
28
2

its brief in Orbunsneich, Boston Scientific did not contend that
the “mechanical properties” of a helix required a helical line
to advance smoothly, continuously spiral, lie on a cylinder or
cone, or follow a path having a consistent left-handed or righthanded screwing motion.

Boston Scientific cited to the

prosecution of a related European Patent in which Orbusneich had
claimed a “substantially continuous winding . . . advancing
substantially helically along a longitudinal axis of [a] tubular
body.”

Ex. EE, p. 8.

Boston Scientific did not quibble with

the requirement of “substantiality.”
Dr. Taylor’s opinion that continuous winding in one
direction is not a part of the understanding of “helical” in the
field of medical stents is due some deference, particularly in
light of the briefing submitted and prosecution histories
discussed in Orbunsneich.

While Dr. Taylor’s affidavit in

Orbunsneich undermines the term “approximating” as employed in
Plaintiffs’ proposed definition, it does not undermine the
general proposition that he expresses, namely, that in the field
of medical stents, “‘helical’ could refer to a variety of
configurations” and is not limited to the narrow definition
proposed by Defendants.
Although the evidence in the record regarding the meaning
of “helix” and “helical” is notably thin, I construe “helix” to
mean “a spiral form” and “helical” to mean “substantially in the
29

form of a spiral.”

Defendants have not shown that the

particular requirements that they have incorporated into their
definition are justified by the intrinsic or extrinsic evidence.
The term “substantially” remedies the difficulty that Defendants
have raised regarding Plaintiffs’ proposed definition without
contradicting the only expert opinion presented.
In light of these constructions, I also reject Defendants’
proposed definitions for “opposite senses of helix,” “opposite
helical lines,” “common [first/second] direction of winding,”
and “opposite to the first direction.”

Each of these proposed

definitions incorporates the idea that a helical line must
smoothly and continuously curve in a consistent screwing motion.
Instead, I construe the terms as the Plaintiffs have proposed.
I construe “opposite senses of helix” and “opposite helical
lines” to mean “one helical direction and the other helical
direction.”

I construe “common [first/second] direction of

winding” to mean “common [first/second] direction of winding.”
I construe “opposite to the first direction” to mean “in the
other helical direction.”

In light of the definition of

“helical” as I have construed it, these terms do not require
further construction.
4.

“interlaced,” “interlacing pattern,” and “interwoven”

The claims in each of the Pulnev Patents incorporate one or
more of the terms “interlaced,” “interlacing pattern,” and
30

“interwoven.”

Plaintiffs suggest that “interlaced” should mean

“interwoven,” “interlacing pattern” should mean “interwoven
pattern,” and “interwoven” should mean “woven.”

Defendants

suggest that all three terms mean “arrangement in which a length
of thread continuing in a direction passes alternatively over
and under each successively encountered length of thread.”
The parties support their proposed definitions of
“interlaced” and “interlacing” with citations to various
dictionaries.

Plaintiffs note that The American Heritage

Dictionary 723 defines “interlace” as “[t]o connect by or as if
by lacing together; interweave.”

Defendants cite to three

dictionaries, (1) Webster’s College Dictionary 703 defining
“interlace” as “to unite or arrange . . . so as to intercross
one another, passing alternatively over and under; intertwine”;
(2) Webster’s Third Dictionary 1179 defining “interlace” as “to
unite by or as if by lacing together,” “to vary or diversify by
alternation, interpolation, or intermixture,” and “to cross one
another as if woven together”; and (3) Textile Terms 255
defining “thread interlacing” as “[t]he arrangement of the warp
and weft threads over and under one another,” providing a note
with an example in which the warp is “passing over three, under
two, over one, and under two weft threads” and defines “weave,
plain” as “[t]he simplest of all weave interlacings in which the
odd warp threads operate over one and under one weft thread
31

throughout the fabric with the even warp threads reversing this
order to under one, over one, throughout.”
These definitions – even those offered by Defendants support Plaintiffs’ proposed definitions and refute Defendants’.
As discussed above, see supra Section III(A)(1), textile
dictionaries refer to an unrelated art, and are therefore
unhelpful in construing the meaning of terms in a patent for
medical stents.

Furthermore, Defendants’ cited definition in

Textile Terms only includes the “one over, one under” pattern as
“the simplest of all weave interlacings.”

The other dictionary

definitions do not limit interlaced patterns to that particular
pattern.

And none of the definitions includes Defendants’

requirement that the length of thread must continue in one
direction.
Nor do the intrinsic records of the Pulnev Patents support
the specific pattern advocated by Defendants.

Neither the

claims nor the specifications require that the “thread passes
alternatively over and under each successively encountered
length of thread.”

Defendants argue that if the lines did not

alternately pass over and under each other, the resulting
arrangement would not be interlaced or interwoven helical lines
but instead one set of helical lines set on top of another.
Defendants overlook the multiplicity of potential patterns that

32

might be described as interwoven or interlaced patterns, many of
which do not follow the “one over, one under” pattern.3
Plaintiffs’ expert Dr. Taylor further illuminates the
meaning of “interlace,” “interweave,” or “weave” in the field of
medical stents.

In his affidavit, he explains that “[s]tents

are known to have a variety of different weave patterns, and
such patterns do not uniformly require ‘thread(s)’ forming the
stents to continue in one direction without hooks,” but instead
“can include combinations of hooks, loops, and crossing
portions.”

Taylor Reply Affidavit ¶ 15.

He states that stents

are “made using a variety of techniques, such as weaving,
braiding, knitting, laser cutting[, and] stamping” and that
“[t]he term ‘interwoven,’ as used in stent technology,
identifies the method by which the stent was made, but does not

Plaintiffs argue that the specification indicates that the
pattern suggested by Defendants is not required because the
embodiment depicted in Figure 5 is manifestly not an over/under
pattern - some of the threads in the figure form a bend along
the stent body instead of going over or under an encountered
thread. However, the bends in Figure 5 are at the ends of the
interwoven strands, connecting two strands. Plaintiffs point to
no part of the specification that indicates that the ends of the
interwoven strands must also be interwoven. Indeed, Claim 21 of
the ‘502 Patent describes a stent with additionally interwoven
elements in which “free ends of the elements are joined to the
elements that form the bending points and/or to one another.”
‘502 Patent at 7:40-42. The bends shown in Figure 5 are those
formed by the “free ends” of the interwoven elements, and are
not “interwoven” themselves. While I ultimately agree with
Plaintiffs’ construction, their argument based on Figure 5 is
unconvincing.
3

33

imply any specific weaving pattern.”

Id. at ¶ 16.

Dr. Taylor

provides as an example a stent sold by Defendant TaeWoong that
is described as including “D weaving technology.”

The pattern

in this stent includes wires hooking onto one another and does
not conform to Defendants’ proposed definition of
“interweaving.”

Id. at ¶ 18.

In light of the dictionary definitions, Dr. Taylor’s
affidavit, and Defendants’ failure to tether the limitations
that they seek to impose to any part of the intrinsic or
extrinsic evidence, I construe “interlacing” and “interlaced” as
“interwoven.”

Although Defendants protest that this definition

“do[es] not clarify the actual meaning of the disputed term[],”
they have not raised any intrinsic or extrinsic evidence to
justify any limitations on the phrase “interlacing pattern.”
Where no limitations are justified by the evidence, I will not
import them in order to clarify a term that Defendants have not
shown is in any need of clarification.
I will not, however, adopt Plaintiffs’ proposed definition
of “interwoven” as simply “woven.”

Plaintiffs have noted that

the specifications of the Pulnev Patents use “interlacing” and
“interwoven” interchangeably.

See, e.g., ‘574 Patent at 5:52-58

(describing Figure 5 as presenting a stent embodiment “provided
with additionally interwoven threads . . . on a section . . .,
which features a higher interlacing density of the threads . . .
34

.”).

Defendants similarly define “interlacing” and “interwoven”

identically.

Where “interlacing” and “interlaced” are defined

as “interwoven,” it is a puzzle to me why Plaintiffs would seek
to define “interwoven” as “woven,” so that the terms are no
longer synonymous.

Neither party has demonstrated that the term

“interwoven” requires construction.

I therefore decline to

construe it.
5.

“configured to slide with respect to one another”

Several of the Pulnev Patents teach that the crossing
portions of the threads or elongate elements are “configured to
slide with respect to one another.”
6:43-45.

See, e.g., ‘502 Patent at

Plaintiffs contend that the phrase means “not fixedly

secured with respect to one another.”

Defendants contend that

it means “configured to move along the length with respect to
one another.”

The primary point of disagreement between the

parties’ proposals is whether threads “configured to slide with
respect to one another” would include threads that merely rotate
or pivot with respect to one another.
The specifications of the Pulnev Patents indicate that
Defendants’ construction is unduly narrow.

Each specification

states:
In the case of longitudinal stent deformation the
threads slide with respect to one another, with the
result that the angle of their mutual arrangement
changes, the stent diameter decreases and becomes equal
35

in length. Hence the stent diameter is much reduced,
whereas its length changes but rather inconsiderably.
See, e.g., ‘574 Patent at 3:29-35.

The specifications describe

one situation in which “the threads slide with respect to one
another,” explaining that when the stent lengthens, the angles
between the threads change so that the stent’s diameter is
minimized.

Sliding is therefore not necessarily characterized

by or limited to movement along the length of the threads.
Pivoting or rotating, as the threads do when the angles between
them change during longitudinal stent deformation, is sufficient
to satisfy the “configuration to slide” limitation.

Defendants’

limitation of “along the length” is unwarranted in light of the
words of the Pulnev Patents’ specifications.
While this is the only part of the specifications
addressing the term, both parties draw from prosecution history
- in particular, the prosecution of the ‘415 Patent – in
attempts to bolster their proposed definitions.

During

prosecution, the applicants added the phrase “wherein portions
of said elongate element cross to define said interlacing
pattern, and crossing portions being configured to slide with
respect to one another” in order to resolve the patent
examiner’s objection that the claims were anticipated by the
Palmaz Patent.

Plaintiffs note that the Palmaz Patent states

that “it is preferable that the plurality of elongate members .
36

. . are fixedly secured to one another where the elongate
members . . . intersect with one another.”
6:36-40.

Palmaz Patent at

Plaintiffs thus argue that because “configured to

slide with respect to one another” must have been added to
distinguish the Palmaz Patent with regard to that
characteristic, the phrase must mean “not fixedly secured with
respect to one another.”
Plaintiffs disregard a basic rule of claim construction.
“The problem with [their] argument is that there is no principle
of patent law that the scope of a surrender of subject matter
during prosecution is limited to what is absolutely necessary to
avoid a prior art reference that was the basis for an examiner’s
rejection,” Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361
(Fed. Cir. 2005), such as surrendering only stents in which the
elongated elements are “not fixedly secured with respect to one
another” here.

“To the contrary, it frequently happens that

patentees surrender more through amendment than may have been
absolutely necessary to avoid particular prior art.

In such

cases, we have held the patentees to the scope of what they
ultimately claim.”

Id. at 1361-62.

The question here is not merely what was distinguished
during the prosecution of the ‘415 Patent, but rather instead
what the phrase “configured to slide with respect to one
another” means in the context of the Pulnev Patents.
37

While the

phrase must be construed to exclude stents in which the
elongated elements are fixedly secured to one another in order
to avoid the characteristic that was disclaimed, it need not be
construed to exclude only these types of stents.

The

prosecution history of the ‘415 Patent shows that Plaintiffs’
proposal is a necessary component of the phrase’s construction
but does not show that it is sufficient.
Defendants for their part attempt to support their
definition with a misinterpretation of the ‘415 patent
prosecution history.

Defendants point to diagrams contained

within the specification of the Palmaz Patent labeled Figures 1A
and 1B.

The figures show elongated elements that pivot with

respect to one another:

The Defendants contend that based on this, the applicants could
only distinguish Palmaz by claiming that the elements move
38

lengthwise with respect to one another; mere pivoting or
rotating is insufficient.
It is unclear from Figure 1A and 1B whether the depicted
elongated elements are fixedly secured to one another.
Defendants point out that the specification only states that “it
is preferable” that a plurality of the elongate members are
fixedly secured to one another, Palmaz Patent at 6:36-40, which,
of course, does not specifically exclude embodiments in which
the elongate members are not fixedly secured.

However, no part

of the Palmaz Patent specifically includes the limitation that
the elongate members must not be fixedly secured to one another.
Thus, if Plaintiffs’ construction is adopted, and the phrase is
interpreted to mean only “not fixedly secured with respect to
one another,” it would have resolved the anticipation objection
posed by the patent examiner.
Defendants also attempt to support their more limited
construction of the phrase by reference to a dictionary.

They

cite Webster’s Third Dictionary 2142, which defines “to slide”
as “to go with a smooth continuous motion: glide.”

However,

this definition does not require that the smooth movement be
linear.

Nothing in the definition excludes a smooth continuous

rotation or pivot.

Moreover, even if the definition did limit

“sliding” in that way, it would exclude the more general use of
“configured to slide” in the description of longitudinal stent
39

deformation included within the specification of each of the
Pulnev Patents (described above).

The dictionary definition

cannot be used to exclude something impliedly included by the
specifications.

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

1576, 1584 (Fed. Cir. 1996)(extrinsic evidence may not
“contradict the import of other parts of the specification.”).
In light of the specifications, which indicate that
rotating and pivoting are included among the ways that a thread
may slide with respect to another thread; in light of the
prosecution history of the ‘415 Patent, which indicates that
elements configured to slide with respect to one another may not
be fixedly secured to one another; and in light of the general
definition of “to slide,” which requires a smooth continuous
motion, my construction is a combination of the parties’
proposals.

I construe “configured to slide with respect to one

another” to mean “configured to move in a smooth continuous
motion with respect to one another without being fixedly secured
to one another.”
6.

“a shape and orientation substantially different from
shape and orientation of any of the elongated
elements”4

Claim 1 of the ‘574 Patent teaches that the elements

The full phrase that the parties address is: “curvilinear
segment . . . having . . . a shape and orientation substantially
different from shape and orientation of any of the elongated
elements,” but Defendants’ objections are directed at the latter
40
4

connecting the helical elongated elements are each formed as a
curvilinear segment having “a shape and orientation
substantially different from shape and orientation of any of the
elongated elements.”

‘574 Patent at 6:44-49.

Plaintiffs

contend that this phrase means a “a shape and orientation
substantially different than that of any portions of wire along
the body.”

Defendants contend that the phrase cannot be

construed and, thus, should be invalid for indefiniteness.
Patent law has always required a patentee to describe his
invention under 35 U.S.C. § 112 in terms that are “precise
enough to afford clear notice of what is claimed,” and definite
enough to clearly spell out the design and use of the patented
product.

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct.

2120, 2129 (2014).

In the past, the § 112 definiteness inquiry

would uphold a patent “so long as the claim is ‘amenable to
construction,’ and the claim, as construed, is not ‘insolubly
ambiguous.’”

Id. at 2124 (citing Biosig Instruments, Inc. v.

Nautilus, Inc., 715 F.3d 891, 898-99 (Fed. Cir. 2013), rev’d,
134 S.Ct. 2120 (2014)).

In Nautilus, the Supreme Court

reconfigured this standard to provide a better fit for the

part, as quoted in the title of this Section. The parties
address the term “curvilinear segment” separately. See infra
Section III(A)(9). Thus, in this Section, I construe only the
phrase beginning “a shape and orientation . . . .”
41

wording and intention of § 112.

The new standard holds “that a

patent is invalid for indefiniteness if its claims, read in
light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty,
those skilled in the art about the scope of the invention.”
Nautilus, 134 S.Ct. at 2124.
Although the new Nautilus standard may invalidate some
particularly ambiguous patents that may have survived the
previous test, the relevant inquiry remains the same: whether or
not “a skilled artisan at the time of the patent application”
would construe the patent’s claims with sufficient definiteness
to understand the “scope of the invention with reasonable
certainty.”

Id., 134 S.Ct. at 2129-30.

The defendants urge a

reading of Nautilus that heavily discounts the input of any
extrinsic evidence (such as expert testimony), and must rely on
what is contained within the four corners of the patent
application and its prosecution history.

However, “claim

construction calls for ‘the necessarily sophisticated analysis
of the whole document,’ and may turn on evaluations of expert
testimony.”

Id. (quoting Markman, 517 U.S. at 389).

To

understand whether a “skilled artisan” working in the relevant
field would understand the scope of a given patent, expert
testimony should not be considered extrinsic evidence with
little value; to the contrary, it is essential to understand
42

what meaning such a person would take from the wording of the
patent’s claims and specifications.
The Defendants have argued that three phrases should be
found indefinite under the new Nautilus standard: the phrase
construed in this section, the phrase “radial force” in Section
III(B)(6), and the phrase “diameters are selected to facilitate
a placement of the tubular wall at a junction of the esophagus
with the stomach”, analyzed in Section III(B)(9).

Each phrase

requires renewed analysis under the new standard.

But the new

standard does not change the end result with regard to any of
the phrases in question.

I will take up each argument in turn

in its relevant section.
As to the phrase at issue here, first, Defendants argue
that the word “orientation” is ambiguous and cannot be
construed.

Defendants state that the word “orientation” is a

relative term, citing its definition in Webster’s College
Dictionary 954 as “position in relation to true north, to points
on the compass, or to a specific place or object.”

Defendants

contend that, by contrast to the term’s definition, the claim
language “requires ‘orientation’ to be a measure of a specific
characteristic (other than ‘shape’) of the curvilinear segment
independent of the elongate elements rather than a relative
comparison between the curvilinear segment and the elongated
elements.”

The argument appears to be that because the ‘574
43

Patent does not designate the specific orientations of any of
these elements, the meaning of “orientation” cannot be
construed.

I do not find it to be so ambiguous.

The claim requires the segment to have an orientation
“substantially different” from that of any of the elongated
elements.

The claim does not state that the curvilinear or the

elongated elements must be oriented in a specific way.

It only

requires that the orientation of the curvilinear segment must be
substantially different from the orientations of the elongated
elements.

This is a relative definition and relative

definitions are not now invalid under the relevant standard.

In

the wake of Nautilus, the Federal Circuit clarified that it does
not hold that “terms of degree are inherently indefinite.

Claim

language employing terms of degree has long been found definite
where it provided enough certainty to one of skill in the art
when read in the context of the invention.”

Interval Licensing

LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014) (citation
omitted).

A reading of the phrase in question here would lead

one skilled in the relevant field to understand the intended
relative position of the elements in question.

Defendants’

characterization otherwise contorts the language beyond
recognition.
Second, Defendants contend that the word “any” is ambiguous
because “[t]he intrinsic evidence nowhere clarifies whether this
44

means that the curvilinear segment must merely be different than
any one particular helical elongated element or, rather,
different from any (i.e., all) helical elongated elements.”
This contention also seeks to introduce unnecessary confusion
into the claim language.

The American Heritage Dictionary 64

defines “any” as “[o]ne, some, every or all without
specification.”

“Any” does not refer to a particular element.

Defendants provide no rationale for any other meaning.

If “any”

is read to mean that the curvilinear segments must have a
different shape and orientation than one elongated element, the
claim would not make sense.

However, if “any” is read to mean

that the curvilinear segments must have a different shape and
orientation than all of the elongated elements, the meaning is
clear.

The fact that “any” can somehow be rendered to suggest

two alternative definitions, one coherent and one nonsensical,
does not justify a declaration that the term is indefinite, as
Defendants suggest.

Rather, it logically leads to the

conclusion that the definition leading to a coherent reading
must be the correct one.

It is therefore unambiguous that the

phrase refers to a curvilinear segment with a shape and
orientation substantially different from that of any (i.e., all)
of the elongated elements.
Third, Defendants contend that because the intrinsic record
does not teach how to measure the orientation of any of the
45

elements, the term cannot be construed.

However, Defendants do

not present expert testimony or any other evidence showing
different ways to measure orientation or that choosing between
different measurement methods would create a material difference
in determining whether or not the orientations of the elongated
elements differ from the curvilinear segments.

In the absence

of any evidence that it matters how the orientation is measured,
I will not find the term ambiguous on these grounds.
Fourth, Defendants contend (in a footnote and without
further analysis), that “[w]hether the claimed orientations are
‘substantially different’ is its own entirely subjective
analysis that the intrinsic record fails to teach or explain.”
If true, this could render the term could indefinite, but
Defendants have presented no evidence that “a person of ordinary
skill in the art cannot translate the definition into [a]
meaningfully precise claim scope.”

Halliburton Energy Services,

Inc., v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008).
Finally, Defendants argue broadly that a person of ordinary
skill in the art at the relevant time would not have understood
the meaning of the term “orientation.”
provide any further explanation.

Defendants do not

The untenable suggestion

appears to be that the term orientation is always ambiguous
absent an express definition.
affidavit or other evidence.

They do not provide an expert
Nor can they contend that the case
46

law requires the specification to define every term contained
within the claims.

Without further explanation as to the basis

of this argument, I cannot find that the term “orientation” is
either generally ambiguous or that it is ambiguous in the
context of the ‘574 Patent.
Unlike Defendants, Plaintiffs contend that the phrase can
be construed.

They offer only a slight modification of the

original as their proposed definition, interpreting “from shape
and orientation of any of the elongated elements” to mean “than
that of any portions of wire along the body.”
interpretation seems unnecessary.
to the “shape and orientation.”

This

The phrase “that of” refers
Using a demonstrative pronoun

does not clarify the meaning of the terms or resolve any dispute
between the parties.

Similarly, I have already construed the

term “elongated elements” to mean “portions of wire forming the
side surface.”

The plaintiffs have not shown that the term

should be construed any differently in this claim.
I therefore reject Defendants’ contention that the phrase
“a shape and orientation substantially different from shape and
orientation of any of the elongated elements” cannot be
construed, and I construe it to mean what it says: “a shape and
orientation substantially different from shape and orientation
of any of the elongated elements” where “elongated elements”
means “portions of wire forming the side surface.”
47

7.

“free ends” and “said first and second ends”

Six of the seven Pulnev Patents include one or both of the
phrases “free ends” and “said first and second ends.”
Plaintiffs contend that neither phrase requires construction.
Defendants contend that both terms should be construed to mean
“the portion of the thread / elongate member that extends
between that thread’s / elongate member’s last cross of an
oppositely directed thread / elongate member and its tip.”
Defendants base their contention on Figure 1, the first of
the five diagrams included within the specification in each of
the Pulnev Patents.

Claims 6 and 16 of the ‘574 Patent refer to

the “free ends (4)” of the threads being interlaced with another
free end and/or with an elongated element.
7:5-9, 8:16-19.

See ‘574 Patent at

The number “4,” in context, refers to a label

on Figures 1 and 2 indicating an area of interlacing threads
spanning three thread-intersection points:

48

Defendants overlook that
the “free end” or “free ends”
that are interlaced in Figures 1
and 2 extend further than from
the last cross of an oppositely
directed thread to the tip.

In

the figures, the “free end” or
“free ends” extend from either the
penultimate or the third-to-last
cross of an oppositely directed
thread to the tip, including the final cross at which the
interlaced section ends.

Defendants’ construction contradicts

the information conveyed in Figure 1 of the ‘574 Patent and is
therefore unduly limited.
Defendants state that the common definition of “free,” as
stated in the Webster’s Third Dictionary 905, is “not
supported.”

They argue that the “loose” portion of the threads

is the portion at the end of a thread that is not supported or
constrained.

They have not justified, however, why this meaning

would limit “free ends” to a particular length.
Defendants contend that by rejecting their definition and
insisting that the terms “free end(s)” and “said first and
second end(s)” require no construction, “Plaintiffs do not
provide any meaningful construction for the disputed term ‘free
49

ends.’”

However, Defendants do not go on to explain why the

term “free” is ambiguous or needs further construction.

The

same is true for the phrase “said first and second ends”:
Defendants have not shown how the phrase might be ambiguous or
in need of construction.

Indeed, they acknowledge the

applicability of the general meaning of the term “free” in this
context, namely “unsupported” or “unconstrained” and offer no
justification at all for limiting the lengths of these “ends” in
order to construe the claims that include either phrase.

For

these reasons, I hold that neither the phrase “free ends” nor
the phrase “said first and second ends” requires construction.
8.

“mesh structure”

The ‘368 Patent and the ‘068 Patent both include claims
that teach that the elongated elements form a “mesh structure.”
See ‘368 Patent at 6:39, 6:43, 7:28, 7:32, 8:26-42; ‘068 Patent
at 6:41, 6:46, 7:40, 7:47, 8:34-52.

Plaintiffs contend that the

phrase should be construed as a “structure forming a net or
network.”

Defendants contend that the phrase should be

construed as “a pattern of openings made by an arrangement of
interlaced helical threads.”

There are three functional

differences between the two definitions: unlike Plaintiffs,
Defendants have included the requirements that the mesh be made
of (1) threads that are (2) interlaced and (3) helical.

50

Defendants purport to derive these three differences from
the description of Figure 2 in the Pulnev Patents’
specifications, which states:
The number of turns of the thread 1 and their pitch are
preset proceeding from the required interlacing density,
which is so selected that the area S of meshes
established by the intersecting helical turns provides
the required rigidity, whereas the meshes should be
large enough not to cause hyperplasia . . . or earlier
thrombosis complications.
See, e.g., ‘386 Patent at 5:34-41.
However, the description does not define “mesh” for the
purposes of the rest of the patent.

Instead, it describes the

mesh in that particular embodiment.

See, e.g., ‘386 Patent at

4:63-64 (explaining that the figures and descriptions are
“illustrative embodiments.”).

A party may “narrow a claim

term’s ordinary meaning, but he cannot do so simply by pointing
to the preferred embodiment or other structures or steps
disclosed in the specification . . . .”

CCS Fitness, Inc. v.

Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
Defendants offer no reason to find that the characteristics of
the mesh in Figure 2 characterize all mesh under the claims of
the Pulnev Patents.

Indeed, if “mesh” were construed to be a

structure formed by interlacing helices, the statement that the
mesh was “established by the intersecting helical turns” would
be redundant.

51

The doctrine of claim differentiation dictates that it
would be inappropriate to import the specification’s limitations
that the threads making up a mesh be (1) helical and (2)
interlacing.

Claim 21 of the ‘386 Patent teaches a “mesh

structure” composed of elongate elements.
7:23-31.

See ‘386 Patent at

Claim 23 teaches “[t]he device of claim 21, wherein

said mesh structure comprises at least one portion where said
elongate elements cross to define an interlacing pattern.”
id. at 7:37-39.

See

Claim 33 teaches “[t]he device of claim 21,

wherein the elongate elements are arranged along helical lines
having opposite senses of helix.”

See id. at 8:8-10.

Claim 23

would be redundant if all meshes were made up of interlacing
patterns.

The statement in Claim 33 that the elongate elements

in the mesh “are arranged along helical lines” would be
redundant if all meshes were made up of helical lines.

“[T]he

presence of a dependent claim that adds a particular limitation
raises a presumption that the limitation in question is not
found in the independent claim,” Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 910 (Fed. Cir. 2004), and here Defendants
raise no intrinsic evidence to rebut that presumption.
As for Defendants’ proposed limitation that the mesh must
be made of threads, this limitation adds nothing to any of the
relevant claims.

Each of the claims incorporating the phrase

“mesh structure” or the word “mesh” also describes the mesh
52

structure as made of threads.

See ‘386 Patent at Claims 1, 2,

21, 22, and 42; ‘068 Patent at Claims 1, 2, 22, 23, and 42.
While accurate, the addition of such a limitation is unnecessary
given the text of the claims.
Plaintiffs, by contrast, propose a construction based on
the definition of mesh in the American Heritage Dictionary 870
as “an openwork fabric or structure; a net or network . . . .”
However, Plaintiffs’ proposal of “a structure forming a net or
network” does nothing to clarify the claim term.

In fact, the

definition “a structure forming a net or network” is broader and
more ambiguous than the term it seeks to construe.

For these

reasons, “mesh structure” is not in any need of further
construction at this stage.
9.

“merging sections,” “bending points,” “bend(s),”
“connection elements,” “curvilinear segment,” and “circle
arc segment”
One or more of the six terms “merging sections,” “bending

points,” “bend(s),” “connecting elements,” “curvilinear
segment,” and “circle arc segment” are contained within the
claims of each of the Pulnev Patents.

Plaintiffs suggest that

“merging sections” means “sections of the portion of wire at the
body ends”; “bending points” means “locations of bending”;
“bend(s)” means “shape(s) resulting from having been bent”;
“connecting elements” means “connecting (v.) portions of wire”;
“curvilinear segment” should be construed to mean “curved
53

portion of wire”; and “circle arc segment” should be construed
to mean “portion of wire having the shape of a part of a
circle.”

Defendants suggest that all of these terms mean “a

section that connects oppositely wound thread segments in a
smooth, continuous, non-angular fashion, so as to have a circle
arc, loop or U-shape.”
Defendants present four arguments in support of their
proposition that a single definition can encompass all of these
disparate terms.
First, Defendants argue that “[t]he terms of this group all
relate to the same structural portion of the stent.”

However,

this does not imply that the terms all have the same meaning.
Instead, “[t]here is an inference . . . that two different terms
used in a patent have different meanings.”

Comaper Corp. v.

Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
While the inference is not always conclusive, id., the
language of the claims supports it in this case.

For instance,

in the ‘415 Patent, Claim 9 describes merging sections, see ‘415
Patent at 6:50-52, Claim 10 describes “[t]he device of claim 9,
wherein each of said merging sections embody a bend,” see id. at
6:54-53, and Claim 11 describes “[t]he device of claim 10,
wherein each of said bends are shaped as a circle arc,” see id.
at 6:55-56.

Claim 10 would be redundant if the term “merging

sections” in Claim 9 implied a “bend,” and Claim 11 would be
54

redundant if either the term “merging sections” in Claim 9 or
the term “bend” in Claim 10 implied a circle arc.
Similarly, in several of the Pulnev Patents, independent
claims teaching a “bending point” are referenced in two
dependent claims which respectively add the sole limitations
that “the bending points have a circle arc segment” and that
“the bending points have a curvilinear segment.”

See ‘502

Patent at Claims 1, 13, and 14; ‘502 Patent at Claims 16, 25,
and 26; ‘502 Patent at Claims 28, 29, and 30; ‘503 Patent at
Claims 1, 13, and 14; ‘503 Patent at Claims 17, 26, and 27; ‘503
Patent at Claims 30, 31, and 32; ‘386 Patent at

Claims 1, 16,

and 17; ‘386 Patent at Claims 21, 25, and 26; ‘068 Patent at
Claims 1, 16, and 17; and ‘068 Patent at Claims 22, 26, and 27.
Under the doctrine of claim differentiation, there is a
“presumption that each claim in a patent has a different scope,”
Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374,
1380 (Fed. Cir. 2006), and therefore that each of these terms
has a distinct meaning.

Defendants have not rebutted the

presumption as it applies to these terms in the Pulnev Patents.
Second, Defendants argue that the Pulnev Patent
specifications describe the shape of the bend as having an
increased radius of curvature, supporting a definition of the
term “bend” as requiring a particular type of shape.

However,

the section in the specifications to which Defendants cite
55

states only that “[i]t is expedient that on the sections of
merging, the turns of one helical line merge into those of the
helical line with the opposite sense of helix.

In this case,

the radius of curvature of the merging section is increased, and
such sections become more resilient.”
4:1-5 (emphasis added).

See, e.g., ‘574 Patent at

The specifications refer to a

preferred, or expedient, embodiment, and do not define the term
“bend” for the purposes of all possible embodiments.
Third, Defendants argue that the disclosed shapes must be
circle arc, loop, or U-shapes, not angular V-shapes because the
specifications state that the V-shape is undesirable.

In

support of this proposition they cite three statements in the
specifications.

The specifications state that “[a] bent or

curvilinear segment connecting two helical elements made from
the same thread can have various shapes, e.g. of a circular arc,
a loop or an U-shaped.”

See, e.g., ‘574 Patent at 4:6-8.

This

statement does not limit the shape of the bent or curvilinear
segment to only these three options.

It provides examples but

does not state that they constitute an exclusive list of
possibilities.

However, the common element in all of the

examples is that the curvilinear segment is, in fact, curved
rather than angular.

The specifications state that in one

particular case, “the radius of curvature of the merging section
is increased . . . . ”

See, e.g., id. at 4:3-4.
56

This

statement, discussed above, addresses only one preferred
embodiment and not all possible embodiments.

The specification

that “instead of joining the threads at both ends of the stent
by welding, soldering or other similar means, these ends are
connected by curvilinear segments made of the same piece of
thread.”

See, e.g., id. at 3:8-11.

Therefore, the curvilinear

segment may take many forms not limited to the examples
provided, but must exclude angular V-shapes, which do not fall
within the meaning of curvilinear and are fundamentally
different than all of the potential examples provided.
Fourth and finally, Defendants’ prosecution history
argument supports only the exclusion of V-shapes, and does not
justify the other suggested limitations.

During the prosecution

of the ‘574 Patent, the applicants distinguished the Palmaz
Patent by noting:
It is clearly seen in Figures 1A and 1B of Palmaz that
these elongated members meet each other at their ends
precisely at the same sharp angle and in the same manner
as in their intersections points. Because the elongated
members possess substantial elasticity, it is evidently
impossible to bend a single elastic wire into such a
sharp angle.
It follows, that each elongated element
disclosed in Palmaz is made from a separate wire, and,
instead of merging into each other (as suggested in claim
12), the wires are simply secured to one another at their
ends in precisely the same manner as they are at their
intersection points, that is either by welding,
soldering, or gluing.
In contrast to Palmaz, at least some of the elongated
helical members of the present invention merge into each
other, that is at least some selected pairs of these
57

elements are made from a single piece of wire, or a
thread, and that elements of each selected pair are
joined together by a connecting portion of the same
thread.
The connecting portion is formed as a
curvilinear segment . . . .
(internal citations and references omitted)(emphasis added).
This does not necessarily require that the turning radius be
“smooth” or “continuous” as Defendants suggest in their proposed
construction.

This particular argument only serves to reject

angles so sharp that they must have been composed by securing
two separate wires at their end points instead of by
incorporating a connecting segment.
In short, Defendants’ proposed definition incorporates a
variety of elements that are not required by the evidence and
inappropriately conflate the definitions of a list of distinct
terms with distinct meanings.

Defendants are correct, however,

that the claim and specification languages forecloses the
possibility of V-shaped or purely angular “curvilinear
segments,” as such a definition would be self-contradictory.

As

discussed further below, I therefore do not adopt Defendants’
construction except insofar as it requires the “curvilinear
segments” to be curved rather than angular.
Plaintiffs, by contrast, have provided six separate
definitions, one for each of the six terms.
First, Plaintiffs contend that “merging sections” should be
construed as “sections of the portions of wire at the body
58

ends.”

In support of this construction they cite the section of

each of the Pulnev Patents describing Figure 3, which refers to
“merging sections 5 at the stent ends.”
at 5:35-36.

See, e.g., ‘574 Patent

However, this description does not imply that a

merging section is, by definition, at the end of a stent.
Instead, it indicates that a “merging section” means something
distinct from “sections of the portions of wire at the body
ends” in order to avoid redundancy.

Moreover, Plaintiffs do not

explain why their definition excludes the limitation that these
sections are “merging,” which is inherent in the claim language.
In short, neither Defendants nor Plaintiffs have shown that the
term “merging sections” is ambiguous or requires limitation.

I

therefore decline to construe it.
Second, Plaintiffs contend that “bending points” should be
construed to mean “locations of bending” and that “bend(s)”
refers to “shape(s) resulting from having been bent.”

The

specifications indicate that the “bending point” refers to the
location of the bend.

See ‘574 Patent at 4:55-58 (describing

the “bending points” as “situated transverse planes relative to
the longitudinal axis”).

Accordingly, I adopt Plaintiffs’

proposed definition and construe “bending points” to mean
“locations of bending.”
Third, the specifications indicate that the term “bend” is
indeed used as a noun, to indicate a bent shape.
59

See id. at

3:5-7 (describing the sections where the helical lines merge as
“appearing as a bend of a single thread segment”); id. at 3:1423 (describing the stent ends as “formed by all the aforesaid
sections of the thread bend” and stating that “due to their
elastic properties” the “section of the thread bend tend to
restore their original shape after having undergone
deformation”); id. at 4:6-15 (stating that a “bend or
curvilinear segment . . . can have various shapes, e.g. of a
circular arc, a loop or an U-shaped”); id. at 5:5-16 (describing
the sections merging the turns of two threads to as “appear[ing]
as a bend of the single segment of the thread”).

Accordingly, I

adopt Plaintiffs’ proposed definition and construe “bend(s)” to
mean “shape(s) resulting from having been bent.”
Fourth, Claim 1 of the ‘574 Patent teaches that “each
portion of the thread for connecting elements made of the same
thread is formed as a curvilinear segment . . . .”
at 6:44-45 (emphasis added).

‘574 Patent

Defendants have proposed that “for

connecting” should be construed as “that connects,” while
Plaintiffs have proposed that it should be construed as
“connecting (v.).”

I am not aware of, nor have the parties

raised, any difference in the meaning or import of these two
interpretations.

Defendants’ interpretation is clearer, as it

conveys the same message without resorting to a grammatical
label.

In keeping with the parties’ agreement that “element”
60

should be interpreted in the same way as “thread,” I hold that
“elements” means “portions of wire.”

Therefore, I construe "for

connecting elements" to mean “that connects portions of wire.”
Fifth, Plaintiffs contend that “curvilinear segment” should
be construed to mean “curved portion of wire.”

Plaintiffs

contend that this definition should be adopted because the
Pulnev Patent specifications refer to “curvilinear segments made
of the same piece of thread.”
11.

See, e.g., ‘574 Patent at 3:10-

However, this statement does not imply that every segment

must be made of thread or wire or that the word “segment” as
used in the patent automatically implies “portion of wire.”
Claim 2 of the ‘323 Patent demonstrates that including such
a requirement within the definition of “segment” would read
redundancies into the claims.

Claim 1 describes a body formed

by interlaced threads, and Claim 2 teaches “[a] stent as set
forth in claim 1, wherein the turns of all helical lines are
made of a single segment of the thread.”
43.

‘323 Patent at 6:42-

If Plaintiffs’ definition of “segment” were adopted, Claim

2 would teach that all of the turns “are made of a single
portion of wire of the portion of wire.”

Because I already

construed “wire” to be a part of the definition of “thread,” it
would be redundant to include it within the definition of
“segment” as well.

Plaintiffs have not shown that “segment”

should be construed to require that the segment be made of wire.
61

Accordingly, neither Plaintiffs nor the Defendants have shown
that the term “segment” requires further definition.
Plaintiffs’ construction of the term “curvilinear” as
“curved,” is consistent with Defendants’ proposed construction
that the curvilinear segment connects other threads in a
“smooth, continuous, non-angular fashion.”

Although I have

rejected the particular limitations that the Defendants have
placed on the term, both parties appear to agree that
“curvilinear,” at a minimum, means “curved.”

This accords with

the general definition of the term curvilinear.

See The New

Shorter Oxford English Dictionary 576 (1993) (“New Oxford
Dictionary”) (defining curvilinear as “[c]onsisting of or
contained by a curved line or lines; of the form of a curved
line”).

Accordingly, I construe “curvilinear segment” to mean

“curved segment.”
Sixth and finally, Plaintiffs construe “circle arc segment”
to mean “portion of wire having the shape of part of a circle.”
In keeping with my construction of “segment” in the phrase
“curvilinear segment,” above, I will not construe the term
“segment” to mean “portion of wire.”

Plaintiffs’ construction

of “circle arc,” however, is in keeping with the ordinary
definition of “arc,” see New Oxford Dictionary 107 (defining
“arc” as “[p]art of the circumference of a circle or other
curve”), and Defendants do not dispute this meaning.
62

Accordingly, I construe “circle arc segment” to mean “segment
having the shape of a part of a circle.”
B.

The Hankh Patents
1.

“truncated conical segment” and “truncated conical
portion”

The claims of the ‘015 Patent incorporate the phrase
“truncated conical segment.”

The claims of the ‘810 Patent

incorporate both the phrase “truncated conical segment” and the
phrase “truncated conical portion.”

Plaintiffs contend that

both phrases should be construed to mean “truncated segment
having an incline or taper (as differentiated from an abrupt,
stepped transition).”

Defendants contend that both phrases

should be construed to mean “[a] segment having a gradual, nonabrupt incline or taper consistent with a solid formed by
rotating a right triangle about one of its sides, with the apex
cut off by a plane parallel to the base of the segment, where
the segment extends a non-trivial length that spans at least two
axially aligned mesh openings.”
The dispute over Defendants’ definition falls into three
parts: The first part: “gradual, non-abrupt incline or taper,”
the second part beginning “consistent with a solid formed by
rotating a right triangle about one of its sides . . .” and the
third, and final part: “extends a non-trivial length that spans

63

at least two axially aligned mesh openings.”

I address each

part in turn.
First, Plaintiffs do not object to the first part, and I
agree that “a gradual, non-abrupt incline or taper” is an
appropriate expression of limitation grounded in the claim
language and prosecution history.

In distinguishing the prior

art, the applicants clearly limited their invention to stents in
which the relevant segment featured a non-abrupt taper or
incline.
Second, the disagreement regarding the second part of
Defendants’ definition centers on the proper interpretation of
the prosecution history.

During the prosecution of the ‘810

Patent, the applicants stated:
In the present specification, the feature of the
truncated segment is shown in several embodiments [in
the diagrams]. In these cases, the ‘truncated conical
segment’ has the characteristic incline or taper. This
is consistent with the standard definition of a cone, as
the solid formed by rotating a right triangle about one
of its sides. Further, the proximal and distal edges
are consistent with the standard definition of
‘truncated,’ in that an apex of a cone is replaced by
plane section, particularly one parallel to the base of
the cone.
The applicants went on to distinguish prior art because “there
[was] no disclosure of a taper or incline characteristic of a
truncated cone.”
Defendants are correct that the definitions recited in the
prosecution history for the term “cone” (“the solid formed by
64

rotating a right triangle about one of its sides”) and the term
“truncated” (“an apex of a cone is replaced by plane section,
particularly one parallel to the base of the cone”) should
inform interpretation of the claim terms.

“[T]he prosecution

history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention,”
Phillips, 415 F.3d at 1317, and “[i]t is well settled that a
patentee may define a claim term either in the written
description of the patent or, as in the present case, in the
prosecution history.”

Honeywell Inc. v. Victor Co. of Japan,

Ltd., 298 F.3d 1317, 1324 (Fed. Cir. 2002).
Plaintiffs contend that any disclaimer of claim scope in
the prosecution history must be clear and unmistakable.
Plaintiffs appear to misunderstand the argument - the statements
regarding the “standard definition[s]” of the terms provided by
the applicants were not disclaimers. They are definitions, and
clearly labeled so.

“Although the inventor’s definition does

not have a narrowing effect, it is nonetheless relevant in
indicating the meaning that the inventor ascribed to the term.”
Id. at 1324.

Plaintiffs provide no reason to believe that the

meaning the inventor ascribed to the term was incorrect or nonstandard.
Indeed, Plaintiffs’ proposed construction lacks any
definition of the term “conical,” and, in fact fails to mention
65

the term at all.

While Plaintiffs have disclaimed stents with

abrupt transitions that do not feature an incline or taper, as
is appropriate in light of the prosecution history, their
suggested construction insupportably removes the term “conical”
itself.

The requirement that the segment have a non-abrupt

incline or taper cannot replace the claim term “conical.”

As

Defendants point out, an incline or taper could characterize
shapes that are not “conical,” such as pyramids.

Plaintiffs,

for their part, provide no explanation for their removal of the
term “conical” from the claims, and I therefore reject their
proposed construction.
In light of the claims, which clearly call for a segment
that is both “conical” and “truncated,” and in light of the
prosecution history which explicitly defines these terms, I
adopt the second part of Defendants’ definition: “consistent
with a solid formed by rotating a right triangle about one of
its sides, with the apex cut off by a plane parallel to the base
of the segment.”
Third, and finally, I do not adopt Defendants’ proposed
limitation that the segment “extends a non-trivial length that
spans at least two axially aligned mesh openings,” because the
claims include no such limitation.

Defendants offer three

arguments in support of this portion of their proposed
definition.

Each is unconvincing:
66

First, Defendants argue that each of the figures within the
specification includes a conical section that spans at least two
axially aligned mesh openings.

Plaintiffs dispute this

characterization of the figures, but I need not resolve the
dispute.

It is sufficient to note that the specification in

each of the Hankh Patents states that the figures “show,
diagrammatically and by way of example only, preferred but still
illustrative embodiments of the invention.”
Patent at 5:40-42 (emphasis added).

See, e.g., ‘810

The figures represent

preferred embodiments only and their inclusion within the
specification does not imply that every embodiment must echo
these characteristics.

See Johnson Worldwide Associates, Inc.,

175 F.3d at 992 (“[M]ere inferences drawn from the description
of an embodiment of the invention cannot serve to limit claim
terms . . . .”).
Second, Defendants argue that (1) in the parent
application, the applicants claimed that the intermediate
segment had to be longer than the proximal segment, and (2) the
proximal segment is depicted in the Hankh Patents to be two or
more axially-aligned segments in length.

Like Defendants’ first

argument, this assumes that the figures included in the
specification are representative of all embodiments and limiting
on the claims.

As discussed above, this is incorrect.

67

Third, Defendants state that the specifications of the
Hankh Patents assert that the function of the “truncated conical
segment” is to “raise flexibility and/or radial force,” and to
“limit[] any flattening deformation tendency,” see, e.g, ‘810
Patent at 2:56-62, and that during the prosecution of the ‘810
Patent the applicants stated that “there is no teaching [in the
prior art] of an additional segment to provide a transition in
radial force between the tubular body and the locking ring.”
Defendants contend that in order to serve these purposes, the
segment must be a non-trivial length.

They then extrapolate

based on the figures in the specification that this length must
be at least two axially aligned mesh openings, because they
believe that no shorter length appears in the figures.

This

argument fails for two reasons: (1) The descriptions of purpose
included within the Hankh Patents and during the prosecution of
the ‘810 Patent are not specifically directed at the definition
of a “truncated conical segment” but instead describe the
purposes of the “intermediate segment” more generally.

It is

only after the phrases quoted by Defendants that the
specifications go on to address “[w]here the third intermediate
segment is a truncated cone . . . .”
3:12-13.

See, e.g., ‘810 Patent at

Similarly, the claim being described in the

prosecution history cited by Defendants does not include a
requirement of a “truncated conical segment” and the discussion
68

quoted does not refer to such a segment.

(2) More

fundamentally, this argument violates a primary tenet of claim
construction: Defendants are reading limitations into the
claims, specifications and prosecution history that are not
there.

While the specifications and prosecution history recite

the general reasons for the claimed structure, they do not set
any lower limit on the length of the intermediate segment.

They

do not state that a “non-trivial” length is necessary or
indicate what a “non-trivial” length might be.
I will not incorporate the third part of Defendants’
proposed definition requiring a minimum length.

Therefore, the

proper construction of “truncated conical segment” is “[a]
segment having a gradual, non-abrupt incline or taper consistent
with a solid formed by rotating a right triangle about one of
its sides, with the apex cut off by a plane parallel to the base
of the segment.”
2.

“intermediate segment” and “second tubular segment”

The claims of the ‘810 Patent refer to an “intermediate
segment,” and the claims of the ‘015 Patent refer to a “second
tubular segment.”

Plaintiffs contend that neither of these

terms requires construction.

Defendants contend that both terms

should be construed to mean “a segment having one or more
gradual, non-abrupt inclines or tapers consistent with a solid
formed by rotating a right triangle about one of its sides, with
69

the apex of each incline or taper cut off by a plane parallel to
the base of the segment, wherein the segment extends a nontrivial length that spans at least two axially aligned mesh
openings.”
In support of their interpretation, Defendants first turn
to the written description.

They cite the Hankh specifications’

description of Figure 1, which states:
Between segments 7 and 11 is formed an intermediate
segment 15 having a proximal end connected to the
distal end of proximal segment 7 and a distal end 17
connected to the proximal end 12 of distal segment 11.
As shown in FIG 1., the intermediate segment 15 forms
a truncated cone of which the base is forming the
proximal end 16 of the intermediate segment and of
which the top is forming the distal end 17 of the
intermediate segment. Other shapes are available to
form the intermediate segment 15.
See, e.g., ‘810 Patent at 6:15-23.

Defendants cite this section

of the specifications in support of the proposition that an
intermediate segment must form a truncated cone, but the Hankh
specifications only indicate that the segment may form a
truncated cone, as it does in the embodiment in Figure 1.

In

other embodiments, “[o]ther shapes are available to form the
intermediate segment . . . .”
Defendants contend that the “[o]ther shapes” must all
include at least one truncated cone because the “[o]ther shapes”
that are described in the specification each include at least
one truncated cone.

Defendants cite the description included
70

within each Hankh specification of Figures 5 and 6, see, e.g.,
‘810 Patent at 7:50-57, 7:64-8:3, as well as the diagrams
labeled Figures 1, 5, 6, and 7, which illustrate various stent
embodiments.

They also cite the description of Figures 3A and

4A, which depict mandrels which may be used to manufacture the
stent, and the Figures themselves, which illustrate embodiments
of possible methods of manufacturing the stent.

Defendants

argue that each of these stent embodiments includes a truncated
conical segment, and that each of the mandrel embodiments would
create a stent including a truncated conical segment.
This argument is unconvincing.

The descriptions and

diagrams are mere illustrative embodiments, and nothing in the
claim language requires the conical shape Defendants insist
upon.

See ‘810 Patent at 5:40-42 (describing the Figures as

“embodiments” and “by way of example only.”).

Furthermore, the

descriptions and diagrams do not limit the claim terms.

See

Johnson Worldwide Associates, Inc., 175 F.3d at 992
(illustrative embodiments “cannot serve to limit claim terms.”)5

Honeywell International, Inc. v. ITT Industries, Inc., 452 F.3d
1312 (Fed. Cir. 2006) does not contradict this general premise.
In Honeywell, specific language in the written description
indicated that a characteristic was not merely a part of a
preferred embodiment but instead a mandatory part of the
invention. See Honeywell, 452 F.3d at 1318-19. By contrast,
here the language cited by Defendants stating that the
intermediate segment includes a truncated conical segment either
(1) describes a particular embodiment but not every embodiment
of the invention; (2) is permissive but not mandatory (e.g.,
71
5

Defendants also point to the language in the Abstracts of
the Hankh Patents that describes the intermediate segment as
“form[ing] a truncated cone of which the base is forming the
proximal end of the intermediate segment and of which the top is
forming the distal end of the intermediate segment.”
Hankh Patents.

Abstracts,

“While a statement in the Abstract may operate

as a clear expression of manifest exclusion, for several
reasons, this statement does not.”
F.3d at 1121.
the patent.

Innova/Pure Water, Inc., 381

“To begin, this statement is in the Abstract of
This section of a patent speaks generally to the

invention and, much like the syllabus of an opinion, sets forth
general information about the document’s content, which is
described in more detail in the remainder of the document.”

Id.

Here, the language in the Abstract does not set forth
general information that describes all possible embodiments, but
instead provides a description of a particular embodiment.
While not identified as such, this is evident from a comparison
of the Abstracts with the rest of the Hankh Patents.

The quoted

language limits the intermediate segment to that which forms a
single “truncated cone” from the beginning to the end of the

“the third intermediate segment may be a truncated cone . . . .”
‘810 Patent at 4:45-46 (emphasis added)); or (3) is located in
Abstracts that contradict the written descriptions and the
claims.
72

segment.

This is inconsistent with both Defendants’

construction (allowing any shape that merely includes a
truncated cone) and the plain language of the written
descriptions (allowing “other shapes” beyond a truncated cone,
see, e.g., ‘810 Patent at 6:22-23).

Moreover, the language in

the Abstracts is not fully consistent with the language in the
claims.

Claim 25 of the ‘810 Patent teaches that “the

intermediate segment incorporates at least one truncated conical
portion disposed about the longitudinal axis,” ‘810 Patent at
10:32-35, which includes intermediate segments incorporating
more than one truncated conical portion.

In light of the

dissonance between the Abstracts and the remainder of the Hankh
Patents, I will not import limitations into the claims from the
Abstracts.
Defendants attempt to bolster their argument by pointing to
the portion of the specifications stating that the intermediate
segment provides a “varying steep [braid] angle” that “raises
flexibility and/or radial force” and “strongly limits any
flattening deformation tendency.”
2:56-63.

See, e.g., ‘810 Patent at

Defendants contend that the only structure that Hankh

discloses that is allegedly capable of providing these features
is an intermediate segment with one or more truncated cones.
“Perhaps the most straightforward answer to [Defendants’]
argument is that the law does not require the court, where an
73

applicant describes only a single embodiment, to construe the
claims as limited to that one embodiment.”

Innova/Pure Water,

Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111,
1121-22 (Fed. Cir. 2004).

This is especially true where, as

here, the specifications explicitly notes that “[o]ther shapes
are available to form the intermediate segment.”

See, e.g.,

‘810 Patent at 6:22-23 (internal references omitted).6
Finally, Defendants contend that “second tubular segment”
should be construed identically as “intermediate segment”
because “in the context of the claim it is clear that the first
tubular segment refers to the ‘proximal segment,’ and the second
tubular segment refers to the ‘intermediate segment.’”
disagree.

I

Claim 1 of the ‘015 Patent describes a first and a

second tubular segment.

It does not require any third segment.

See ‘015 Patent at 8:22-35.

By contrast, dependant Claim 4

includes a “third tubular segment.”

See ‘015 Patent at 8:43-46.

In the context of a claim such as Claim 1, which might include

In the alternative, Defendants contend that these statements
in the specifications require the “intermediate segment” to be
non-abrupt and extend a non-trivial length independently of any
requirement that they include “truncated conical segments,”
because only with these characteristics can the intermediate
segment achieve its stated purposes. I reject these arguments
at this point for the same reasons that I reject them above.
See supra Section III(B)(1).
6

74

only two segments, it makes little sense to construe “second
tubular segment” to mean “intermediate segment.”
Nor will I adopt the definition that Defendants propose for
“intermediate segment” as the definition for “second tubular
segment.”

The proposed construction fails for the reasons

listed above regarding the “intermediate segment.”

Defendants

point to nothing in the Hankh specifications requiring that the
“second tubular segment” incorporate one or more truncated
conical segments.
In light of my rejection of Defendants’ proposed
limitations, I do not find that construction of “intermediate
segment” or “second tubular segment” is necessary.

As

Plaintiffs contend, there is no ambiguity in these terms
requiring resolution.
3.

“distal segment” and “third tubular segment”

The claims of the ‘810 Patent refer to a “distal segment,”
and the claims of the ‘015 Patent refer to a “third tubular
segment.”

Defendants propose construing both terms to mean “a

segment at the distal end of the stent.”
that neither term needs construction.

Plaintiffs contend

However, Plaintiffs do

provide some clarification in their briefing, stating that they
believe the term “distal” in “distal segment” to mean only that
the segment is “distal” to the intermediate segment.

75

Defendants state that the Hankh Patents consistently locate
the “distal segment” at the distal end of the stent, opposite
the proximal segment at the proximal end of the stent.

They

note that Figures 1, 5, and 6 each label the segment at the
distal end of the stent as the “distal segment.”

They similarly

note that in Figures 3A, 3C, 4A, and 4D, the distal segment is
the segment located at the distal end of the mandrel, opposite
the proximal segment at the proximal end of the mandrel.

They

argue that every distal segment described in the Hankh Patents
is on the distal end and that therefore “distal segment” must
mean “a segment at the distal end of the stent.”
This argument, based on illustrative embodiments instead of
on language indicating that every distal segment must be at the
distal end of the stent, is unconvincing.

“Although the

specification may aid the court in interpreting the meaning of
disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into
the claims.”

Comark Communications, Inc. v. Harris Corp., 156

F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)).
Moreover, the distal segment in each of these Figures is also
the segment distal to the intermediate segment.

The Figures are

thus consistent with the definitions proposed by both parties.

76

Defendants’ argument based on the prosecution history is no
more convincing.

Defendants state that the applicants

distinguished U.S. Patent No. 5,575,818 (“Pinchuk Patent”)
during the ‘810 prosecution on the basis that the Pinchuk Patent
fails “to disclose a stent with cylindrical proximal and distal
segments, in which the distal segment diameter is smaller than
the proximal segment diameter.”

They contend that by arguing

that the distal segment diameter in the Pinchuk Patent was not
smaller than the proximal segment diameter, the applicants made
clear that the distal segment refers to the segment at the end
of the stent.

However, this again fails to distinguish between

the definitions proposed by the parties.

If “distal segment”

means a segment that is distal to the intermediate segment, as
Plaintiffs propose, then the same segment within the threesegment Pinchuk apparatus would be identified.

Only one segment

is distal of the intermediate segment, and it is also at the
distal end of the apparatus.
Plaintiffs’ arguments are no more convincing.

Plaintiffs

contend that the claims themselves define the “distal segment,”
such as the definition in Claim 24 of the ‘810 Patent that a
distal segment is a segment “having a distal segment diameter
less than the proximal segment diameter.”

The description in

Claim 24, however, is a limitation of and not a definition for
“distal segment.”

Claim 24 describes a stent including “a
77

distal segment having a distal segment diameter less than the
proximal segment diameter.”

‘810 Patent at 10:16-17.

While it

limits the types of distal segments that would infringe on the
claim to those with diameters of a particular relative size, it
does not define what “distal segment” means.
Next, Plaintiffs argue that “distal segment” cannot mean
the segment at the distal end of the stent, because the Hankh
specifications disclose that the “distal end of the distal
segment may be flared up,” see, e.g., ‘810 Patent at 8:11-12,
and therefore the specification contemplates a possible
additional flared section at the end of the stent, distal to the
distal section.

However, the specification describes the flared

end as a part of the distal segment.

The end of the distal

segment itself flares up, not that of a new segment.

Thus, the

specification does not contemplate that the flared end
constitutes a separate segment. It is true that the balance of
the claim and specification language divides the segments based
on diameter (assigning dividing lines to the points where the
diameter begins to change).

Therefore, this specification -

describing a single “segment” as having a portion with
consistent diameter and a flared portion with changing diameter
- appears anomalous.

However anomalous it may be, the

specification does not appear to contemplate a new segment
distal to the distal segment.
78

Finally, Plaintiffs argue that because the specifications
do not expressly limit the stents to those with three segments,
there is no reason to believe that there may not be additional
segments that are distal to the distal segment.

Plaintiffs cite

Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed.
Cir. 2005) in support of their contention that the lack of a
constraint on the number of segments means that proximal,
intermediate, and distal segment may be supplemented by
additional segments distal to the distal segment.
is inapposite.

Gillette Co.

In Gillette Co., the question was whether

additional blades would be permitted where the patent described
“a group of first, second, and third blades.”
F.3d at 1371.

Gillette Co., 405

Here, the question is not whether additional

segments are possible but instead whether the “distal segment”
must be the segment at the distal end of the stent.
There is a reason the parties struggle to construe this
term: its definition poses a difficult question.

Although the

claims and the specification are not entirely clear, I find that
“distal segment” should be construed to mean “a segment at the
distal end of the stent.”

This finding is supported by the

usage of the term in the claims of the ‘810 Patent and in both
of the Hankh specifications.
Claims 5 and 18 of the ‘810 Patent describe “a distal
segment disposed about the longitudinal axis distally of the
79

truncated conical segment.”

‘810 Patent at 8:48-50, 9:32-33.

If “distal segment” is construed to mean a segment distal to the
intermediate segment, the phrasing is redundant.

If “distal

segment” is construed to mean “a segment at the distal end of
the stent,” the phrase can be construed to mean that the segment
is both at the distal end of the stent and located immediately
distal to the truncated conical segment.
Further, dependent Claim 18 of the ‘810 Patent teaches that
the covering is extended along at least a portion of the distal
segment, see ‘810 Patent at 9:34-36, in contrast to Claim 15, on
which it is dependent, which teaches that the truncated conical
segment may be covered, see ‘810 Patent at 9:21-23, without
describing a partial cover.

The specifications similarly note

that “[a] distal portion of the second distal segment may not be
covered by the covering layer.”
60.

See, e.g., ‘810 Patent at 4:58-

The specifications explain that “a distal portion of

the . . . distal segment may be uncovered by the covering layer
to assure when required a better gripping of the stent to the
body cavity in that area, because of the stronger
interpenetration between braiding and vessel wall.”
‘810 Patent at 3:33-37.

See, e.g.,

Thus, the claims allow a partial

covering of the distal segment to promote better adhesion to the
body cavity.

Adherence to the body cavity is only necessary for

the segments at the ends of the stent.
80

The ‘810 Patent also teaches an embodiment in which “the
distal segment is cylindrical and has a distal segment diameter
substantially equal to the distal end diameter.”
8:51-52.

‘810 Patent at

The Hankh specifications explain that “[w]here

the . . . proximal and . . .

distal segments are cylindrical,

the . . . proximal segment may firmly anchor the vessel . . .
whereas the . . . distal segment may smoothly bear against the
vessel wall, even in strongly narrowed areas.”
Patent at 3:5-11.

See, e.g., ‘810

Thus, the purpose of the cylindrical distal

segment is to allow the segment to “bear against the vessel
wall,” a purpose that only a segment at an end of the stent may
serve.
The Hankh specifications also teach that “[t]he distal end
of the . . . distal segment may be flared up.”
Patent at 4:64-65.

See, e.g., ‘810

The specifications explain that this

“provide[s] a further safety anchor of the stent in the body
passageway . . . .”

See, e.g., ‘810 Patent at 3:51-52.

Segments located in the intermediate portion of the stent do not
need a “safety anchor.”

The distal segment only benefits from

such an anchor because it is at the end of the stent and needs
to adhere to the body passageway.
All of these uses of the term “distal segment” in the
claims of the ‘810 Patent and in the Hankh specifications lead

81

to my finding that the term should be construed to mean “a
segment at the distal end of the stent.”
By contrast, I do not find that “third tubular segment” as
used in the ‘015 Patent means “a segment at the distal end of
the stent.”

While the third tubular segment may be only

partially covered, see ‘015 Patent at 9:42-46, nothing else
indicates that the “third tubular segment” is the “distal”
segment.

The applicants chose to use the term “third tubular

segment” instead of “distal segment,” which they used elsewhere
in the patent.

See ‘015 Patent at 10:52-55.

Because the

applicants did not choose to label the segment as “distal,”
neither will I.

I do not find that the term “third tubular

segment” requires construction.
4.

“the steep angle varies along the truncated conical
segment in the longitudinal direction,” “the steep
angle increases along the truncated conical portion in
the proximal direction,” “the steep angle varies along
the second tubular segment,” and “the steep angle
increases in the proximal direction along the second
tubular segment”

The Hankh Patents teach strands making up a tubular wall
that form a steep angle.

Claim 12 of the ‘810 Patent teaches

that “the steep angle varies along the truncated conical section
in the longitudinal direction.”

‘810 Patent at 9:11-14.

Claim

29 of the ‘810 Patent teaches that “the steep angle increases
along the truncated conical portion in the proximal direction.”
Id. at 10:49-51.

Claim 12 of the ‘015 Patent teaches that “the
82

steep angle varies along the second tubular segment.”
Patent at 9:14-15.

‘015

Claim 13 of the ‘015 Patent is dependent on

Claim 12 and teaches that “the steep angle increases in the
proximal direction along said second tubular segment.”
9:17-18.

Id. at

Plaintiffs contend that these phrases require no

construction.

Defendants contend that all of the phrases mean

“the strands cross within the truncated conical segment /
portion to form at least three angles that are oriented in the
same axial direction and bisected by the same line, and the
angles change/become greater from one to the next.”
It is unclear from the text of the claim what “steep angle”
measures.

While Plaintiffs contend that claim construction need

not address this question, I must determine what “steep angle”
means in order “to give meaning to the limitations actually
contained in the claims.”

Am. Piledriving Equipment, Inc. V.

Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011).

Without a

definition for the term “steep angle,” one designing in this
area might not know whether a product potentially infringes the
Hankh Patents.
Defendants contend that the “steep angle” is the angle
formed by crossing elements that are oriented in the same axial
direction and bisected by the same line as the other angle(s)
being measured.
history.

This contention is supported by the prosecution

During the patent prosecution, the applicants added of
83

Figure 7 to the specification, in which the “varying steep
angle” was identified:
The applicants stated:
The symbols α, θ, θ’, and Δ have been added to point
out, with particularity, the varying steep angle over
the longitudinal axis of the tubular wall. As shown .
. . the angle α of the crosshatching in the distal
way-making segment is constant over its length; the
angle θ of the cross-hatching in the intermediate
segment increases from θ to θ’ over its length; and
the angle Δ if the proximal anchor segment is constant
over its length.

The description of the angles as formed by “the cross-hatching”
supports the Defendants’ contentions that the steep angles are
formed by the crossing of two strands.
Moreover, the logic of the claim supports Defendants’
contention that the angles measured must be oriented in the same
axial direction.

If the angle of the crosshatching is constant

and does not vary or increase, there could still be variation if
one were to compare an angle that opens towards the distal end
at one point along the longitudinal axis with an angle that
84

opens perpendicularly to the ends at another point along the
longitudinal axis.

Plaintiffs do not explain how a comparison

may be made between two angles without choosing which angles may
be compared.

Nor do they suggest any other mechanism for

determining which angles should be compared.
Defendants’ limitation that the angles must be “bisected by
the same line,” however, is unsupported.

Defendants argue that

this construction makes it clear that “strand crossings that are
not axially aligned do not reflect angles varying ‘in the
longitudinal direction.’

However, even the axially aligned

angles actually depicted in Figure 7 are not bisected by the
same line.

Moreover, the concept that the angles must be

“axially aligned” is already a component of Defendants’
definition, which describes “angles that are oriented in the
same axial direction.”

The phrase “bisected by the same line”

is therefore redundant, without basis in the claim language, and
inconsistent with the specification.

I will not adopt that

component of Defendants’ proposed definition.
Finally, Defendants contend that at least three angles must
be compared.

In support of the proposition that the phrases

“varies along the truncated conical section / second tubular
segment” and “increases along the truncated conical portion /
second tubular segment” imply a trend in the angle instead of a
singular or abrupt change.

Defendants cite Webster’s Third
85

Dictionary 2535, which defines “vary,” inter alia, to mean “to
bring about differences in,” “to insure variety in,” and “to
exhibit differing qualities or attributes in alternation or
succession with something else.”

None of these definitions uses

the term “vary” in the manner in which it is used in the claims.
The first two refer to a force causing variation in something
else (as opposed to something exhibiting variation) and the last
refers to the phrase “varies with.”

More fundamentally, none of

these definitions states that at least three different
measurements or characteristics must be exhibited in order to
achieve variance.
Defendants also cite Athletic Alternatives, Inc. v. Prince
Manufacturing, Inc., 73 F.3d 1573 (Fed. Cir. 1996) in support of
the proposition that variance requires at least three differing
values of comparison.

However, in Athletic Alternatives, the

Federal Circuit first examined the claims, the specification,
and the prosecution history in order to determine the meaning of
this ambiguous term.

Only when it found no evidence in favor of

one interpretation (requiring at least three differing values)
or the other (requiring some change without designating how many
changes), did the Federal Circuit conclude that “there [was] an
equal choice between a broader and a narrower meaning of a
claim,” and that, because the narrower claim was enabled, they
would “consider the notice function of the claim to be best
86

served by adopting the narrower meaning.”

Athletic

Alternatives, Inc., 73 F.3d at 1582.
Here, by contrast, the specification and prosecution
history indicate that three measurements are not necessary to
determine whether an angle increases or varies.

When the

applicants added Figure 7, they explained that the Figure
“show[ed]” that “the intermediate segment increases . . . over
its length.”

Figure 7, however, exhibits only two angle

measurements, labeled as θ and θ’, on the intermediate segment.
If it were necessary to measure three angles in order to “show”
an increase over the length of a segment, Figure 7 would have
shown three angles.

Defendants’ attempt to create a limitation

excluding increases or variances with fewer than three different
angle measurements is therefore inconsistent with the Hankh
specifications.
I therefore construe “the steep angle varies / increases
[in the proximal direction] along the truncated conical segment
/ truncated conical portion / second tubular segment [in the
longitudinal / proximal direction]” to mean “the angles formed
by crossing strands and oriented in the same axial direction
vary / increase [in the proximal direction] along the truncated
conical segment / truncated conical portion / second tubular
segment [in the longitudinal / proximal direction].”

87

5.

“strand,” and “a first strand and a second strand”

Claims within both of the Hankh Patents describe the
structure as made of “strands” and refer to “a first strand . .
. and a second strand . . . .”

Plaintiffs contend that “strand”

means “wire or portion of wire” and that “a first strand . . .
and a second strand” refers to “a first portion of wire . . .
and a second portion of wire.”

Defendants contend that “strand”

means “strand or filament” and that “a first strand . . . and a
second strand” refers to “two separate strands or two separate
filaments.”
Defendants argue that “strand” should be construed to mean
“strand or filament” because the specifications of the Hankh
Patents mention “strands” when referring to a stent described by
U.S. Patent No. 5,064,435 (“Porter Patent”), see, e.g., ‘810
Patent at 1:60-64, and the Porter Patent uses the terms “strand”
and “filament” interchangeably.

However, Defendants do not

point to any use by the applicants of the term “filament” or any
adoption by the applicants of that term as a synonym for
“strand.”

Nor do Defendants explain how adding “or filament”

clarifies any ambiguity or resolves any dispute, especially
considering that Defendants have not defined the term
“filament.”

Defining “strand” to mean “strand or filament”

merely adds a second term, both of which by definition lacking
in clarity.

Absent further explanation in support of adopting
88

the definition “strand or filament,” I do not find Defendants’
argument compelling.
Yet Plaintiffs’ argument in support of the construction
“wire or portion of wire” is no more compelling.

Plaintiffs

state that because the specifications note that, in one
preferred embodiment, “the tubular wall is composed of a first
plurality of parallel spring stainless steel wires,” ‘810 Patent
at 5:63-64; ‘015 Patent at 5:65-66, and because claims in both
of the Hankh Patents describe a stent wherein the tubular wall
is “formed of at least one strand of a resilient material,” ‘810
Patent at 10:37-38; ‘015 Patent at 9:2-3, therefore a “strand”
means a “portion of wire.”

However, the Federal Circuit has

“cautioned against limiting the claimed invention to preferred
embodiments,” Teleflex, Inc. v. Ficosa North America Corp., 299
F.3d 1313, 1328 (Fed. Cir. 2002) (quoting Comark, 156 F.3d at
1186), and I will not do so here.
The parties dispute the import of Claim 27 of the ‘810
Patent for the construction of the term “strand.”

Claim 26

describes a self-expandable tubular wall as “formed of at least
one strand of a resilient material.”

‘810 Patent at 10:37-38,

and dependent Claim 27 teaches:
The stent of claim 26 wherein: the at least [sic] one
strand of a resilient material comprises at least a
first strand wound helically in a first direction, and
a second strand wound helically in a second direction
different from the first direction.
89

Id. at 10:39-42.

Plaintiffs contend that “at least one strand”

necessarily includes the possibility of one strand, and that
therefore Claim 27 contemplates a situation in which one strand
is itself composed of multiple strands.

They conclude that

“strand” should be construed to mean “portion of wire,” because
one portion of wire can be composed of several smaller portions.
Defendants, by contrast, argue that “at least one strand” must
mean “one or more strands,” and argue that Claim 27 describes a
situation where there is more than one strand.
Both parties present plausible readings of Claim 27.
Neither party points to any other claims, prosecution history,
or extrinsic evidence to interpret this ambiguous claim.

In

light of the “equal choice between a broader and a narrower
meaning of the claim,” the Federal Circuit has advised that “the
notice function of the claim [is] best served by adopting the
narrower meaning.”

Athletic Alternatives, 73 F.3d at 1581.

Thus, absent any other evidence in support of either
interpretation, I will not adopt Plaintiffs’ proposed definition
that “strand” be construed as a “portion” of something and
instead clarify as Defendants do that two strands means two
separate strands.
In light of the above reasoning, I find that “strand” does
not need construction, and that “first strand . . . and a second
90

strand” means “two separate strands, a first strand . . . and a
second strand.”
6.

“radial force”

The claims of both of the Hankh Patents refer to the
“radial force” of the stent and make comparisons regarding the
“radial force” at different points of the stent.

Plaintiffs

contend that “radial force” should be construed to mean the
“outward force in a radial direction upon compression.”
Defendants contend that the phrase cannot be construed.
Defendants rely on (1) the affidavit of their expert, Dr.
David Ku, a professor of mechanical engineering and surgery who
has invented various medical devices; (2) the deposition
testimony Plaintiff’s expert, Dr. Claude Clerc, a Senior
Research and Development Fellow at Boston Scientific; and (3)
the deposition testimony of Plaintiffs’ Rule 30(b)(6) witness,
Mr. Gary Jordan, Director of Research and Development at Boston
Scientific.
Dr. Ku states that the term “radial force” is ambiguous
because radial force is (in this context) exerted in response to
other forces, and here the magnitude and nature of the forces
being applied to the stent are unknown.

He states that the

magnitude of radial force depends on how the force is measured.
For instance, one could compare distributed forces at equal
strains, distributed forces at equal compressed diameters, or
91

distributed forces at equal compression diameters.

The relative

measurements of force may differ depending on how the comparison
is made.

Finally, he states that “radial force” is ambiguous

because Hankh does not describe a specific method for
determining or comparing radial force.
However, one of Plaintiffs’ experts, Dr. Taylor, states
that Dr. Ku’s affidavit describes radial force only as
understood generally in the engineering arts rather than as it
would be understood by a person of ordinary skill in the
specific art relevant to this action: stent design and
construction.

Dr. Taylor states that the Hankh invention deals

only with an increase in radial force over particular portions
of the stent, which does not require a measurement of a
particular magnitude at a particular place and time, but instead
requires only comparative measurement.

He explains that

“[s]tent designers and physicians . . . understand that stents
are evaluated, characterized, and understood based on what
happens in a vessel of uniform diameter.”

There is [no] a

uniform test used to compare relative radial forces, because
“[t]o characterize a stent in the innumerable conditions in
which it could be deployed would be impractical and is not
generally expected.”
Dr. Taylor explains that “[i]n the context of a stent
having a differential geometry, such as the Hankh stent, one
92

would understand that ‘radial force’ would be characterized by
the effect of placing it in a uniform vessel that is smaller
than the diameter of the smallest segment.”

Similarly, when

comparing “two stents with different mechanical properties,”
stent designers “would use a uniform vessel” in order “to show a
relative difference.”

When “such an understanding of how to

measure the claimed” forces is “within the scope of knowledge
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).

In support of his

affidavit, Dr. Taylor submitted three documents from Defendants’
own websites or papers, each of which used the term “radial
force” without including all of the limiting explanatory factors
that Dr. Ku claims would be necessary to render the term
comprehensible.
Defendants and Dr. Ku do not refute Dr. Taylor’s assertions
regarding the ways in which comparative radial force is
determined in the field of medical stents.

They merely counter

by submitting excerpts from testimony by Dr. Clerc and Mr.
Jordan — omitting the various objections that Plaintiffs’
counsel raised - in which they agree that there is no
engineering standard to measure radial force and that different
methods of measurement might result in different results.
93

Even

assuming that this testimony is admissible over Plaintiffs’
objections - which Defendants do not address - this argument
merely repeats Defendants’ earlier error, referring only to
“radial force” generically, as an engineering term, rather than
in the way in which a person of ordinary skill in the art of
medical stents would understand it.
Hankh Patents address.

It is this field that the

Therefore, I do not find the phrase

“radial force” to be indefinite.

Instead, in light of Dr.

Taylor’s affidavit, I construe the phrase to mean “outward force
in a radial direction upon compression, where comparison of that
force in the segments of a stent with differential geometry is
conducted by observing the relative radial forces of the
segments when placed in a uniform vessel that is smaller than
the diameter of the smallest segment.”

This construction

clarifies the ambiguities that concern Defendants sufficiently
that a factfinder may understand how the term would be
understood by one of ordinary skill in the relevant art.
7.

“wound helically,” “wound in opposite directions,” and
“a strand wound helically in a direction [different
from the first direction]”

Claims in both of the Hankh Patents describe strands making
up the stent walls that are “wound.”

Plaintiffs construe “wound

helically” to mean “wound to approximate a helix (i.e. to
approximate a spiral form or structure)”; Defendants construe
the phrase to mean “wound in a smooth, continuously-spiraling,
94

three-dimensional curve that lies on a cylinder or cone and
follows a path having one of either a consistent left-handed or
right-handed screwing motion.”

Plaintiffs construe “wound in

opposite directions” to mean “wound in one helical direction and
in the other helical direction, respectively”; Defendants
construe the phrase to mean “wound helically in opposite-handed
screwing motions.”

The Plaintiffs construe “a . . . strand

wound helically in a . . . direction [different from the first
direction]” to mean “a first wire or first portion of wire wound
helically in a first direction and a second wire or second
portion of wire wound helically in a second direction different
[than/from] the first direction”; Defendants construe the phrase
to mean “a . . . strand wound helically in a . . . direction
[that is the opposite handed screwing motion from the first
direction].”
This is essentially the same dispute the Parties had
regarding “helical” and related terms in the Pulnev Patents, see
supra Section III(A)(3).

Both parties raise the same dictionary

definitions that they raise with respect to the Pulnev Patents,
again without any articulation why one definition should be
superior to another in the context of medical stents.
Defendants contend that the examples depict only smooth,
continuous helical windings, ignoring the principle of claim
construction prohibiting the importation of limitations into the
95

claims based on particular embodiments described in a
specification.

They contend that the use of words such as

“wound” and “direction” indicates that their definition is
correct, although even a line that substantially follows a
helical line is wound in a particular direction as well.

They

further contend that the distinction between a zig-zag and a
helix supports their definition, although a line following a
substantially helical path may still be differentiated from a
zig-zag.
For their part, Plaintiffs point to the use of “helical” in
the specifications and state that it is “consistent” with their
definitions, apparently ignoring the fact that it is equally
“consistent” Defendants’s proposed definitions.
In short, the intrinsic evidence is inconclusive.

Just as

I rely on Dr. Taylor’s affidavit to construe the term in the
context of the Pulnev Patents, so too I rely on it here.

He

states that “helical” is used in the stent art to refer to a
variety of configurations and does not imply the limitations
that Defendants propose.

I construe “wound helically” to mean

“wound substantially in the form of a spiral.”
In light of this construction, I will also reject
Defendants’ proposed definitions of the related phrases, which
incorporate the idea that a strand wound helically must smoothly
and continuously curve in a consistent screwing motion.
96

Instead, I will construe the terms as Plaintiffs have proposed,
with a few exceptions.

I have rejected Plaintiffs’ construction

of “strand” (meaning “wire or first portion of wire”) and will
not incorporate that construction into the definitions of the
phrases at issue.

Nor will I adopt Plaintiffs’ conclusion that

the difference between “opposite” and “different” helical
directions should be maintained.

Under the doctrine of claim

differentiation, the terms should be construed to differ,
because Claim 10 of the ‘810 Patent describes strands would
helically in “different” directions, ‘810 Patent at 9:1-5, and
dependent Claim 11 states that “the first and second strand are
wound in opposite directions.”

Id. at 9:6-8.

However, I am

aware of only two helical directions (what could be called,
roughly, clockwise and counter-clockwise), and neither
Plaintiffs nor their expert have explained what any other
“different” helical direction might be or how the understanding
of these terms might differ in the helical arts from the common
understanding.7

Indeed, Plaintiffs’ proposed definition of “wound in opposite
directions,” is “wound in one helical direction and in the other
helical direction, respectively.” (emphasis added). The use of
the definite article “the” rather than an indefinite article
such as “an” necessarily suggests that Plaintiffs understood
only two helical directions rather than three or more
possibilities. With this construction, Plaintiffs’ suggested
construction belies their argument and implies that “different”
and “opposite” should be construed as synonymous.
7

97

For these reasons, I construe “wound in opposite
directions” to mean “wound in one helical direction and in the
other helical direction, respectively”; and “a . . . strand
wound helically in a . . . direction different [than/from] the
first direction” to mean “a . . . strand wound helically in the
opposite helical direction [than/from] the first direction.”
8.

“interbraided”

Claim 11 of the ‘015 Patent describes a stent in which the
tubular wall is made of strands wherein “the first and second
strands are wound in opposite directions and interbraided with
one another.”

‘015 Patent at 9:10-11.

“interbraided” means “braided.”

Plaintiffs contend that

Defendants contend that the

term means “arrangement in which a strand continuing in a
direction passes alternately over and under each successively
encountered strand.”
As with the immediately preceding dispute regarding “wound
helically,” this dispute over “interbraided” as used in the
Hankh Patents substantially tracks the disputes over the
analogous language in the Pulnev Patents.

As before,

Defendants’ proposed limitations are not rooted in the intrinsic
evidence.

See supra Section III(A)(3)-(4).

Defendants assert

that because the Hankh Patents describe Figure 2 as disclosing a
“braided structure” involving a set of wires wound helically in
“a first direction” and a set of wires wound helically “in a
98

second direction,” see, e.g., ‘810 Patent at 5:60-6:7, therefore
all “interbraided” strands must continue in a given direction.
Similarly, they contend that the arrangement apparent in Figure
2 whereby a strand passes alternately over and under each
successively encountered strand supports their proposed
limitation regarding the pattern of the “interbraided”
arrangement.

This logic inappropriately imposes the

characteristics of a particular embodiment as limitations on the
claims.

See Acumed LLC v. Stryker Corp., 483 F.3d 800, 805

(Fed. Cir. 2007)(“That assertion is flawed: it is an attempt to
import a feature from a preferred embodiment into the claims.”).
Neither the claims nor the specifications require any
particular pattern of “interbraiding.”

Instead, the

specifications explicitly state that Figure 2 represents only
one particular embodiment.

They explain:

The braided structure [in Figure 2] assures contraction
of the stent in the radial direction when the two ends
4 and 5 of the stent are pulled away from one another .
. . and self-expansion of the stent in the radial
direction when the pull according to arrows is released
. . . . Of course, other known braidings or patterns
providing the same effect may be used.
See, e.g., ‘810 Patent at 5:67-6:7.

The specifications of the

Hankh Patents are clear that more than one pattern may
constitute “braiding” and that Defendants’ proposed limitations
are unwarranted.

99

Plaintiffs’ construction, while not inaccurate, would be
misleading to a layperson.

Plaintiffs note that the Hankh

specifications use the phrases “braided tubular wall” and
“braided structure.”

In particular, the specifications state

that “[t]his invention relates to a stent for use in a body
passageway, comprising a flexible self-expandable braided
tubular wall.”

See, e.g., ‘810 at 1:9-11.

The Plaintiffs

therefore propose that “interbraided” be construed as “braided.”
The difficulty is that, in the common parlance, “braid” means
“to form (three or more strands) into a cord or ribbon by
repeated crossing left and then a right strand over a central
strand and under an opposite strand.”

Webster’s Third 266.

Plaintiffs’ proposed construction only replaces one term with
another term that similarly requires construction in order for a
layperson to understand it in the same manner as it would be
understood by a person of ordinary skill in the art.
In light of the difficulties plaguing both proposed
definitions, I adopt the only definition available from the
specifications, which I have quoted above.

I construe

“interbraided” to mean “interbraided in any number of braidings
or patterns providing the effect that the stent contracts in the
radial direction when the ends of the stent are pulled away from
each other and the stent self-expands in the radial direction
when the pull is released.”

This construction retains the term
100

“interbraided,” clarifies that no particular pattern is
required, and includes the one limitation stated in the
specifications.
9.

“are selected to facilitate a placement of the tubular
wall at a junction of the esophagus with the stomach”

Claims 7 and 31 of the ‘810 Patent teach a stent in which
the diameters of the proximal and distal segments “are selected
to facilitate a placement of the tubular wall at a junction of
the esophagus with the stomach.”
59.

‘810 Patent at 8:59-61, 10:57-

Plaintiffs contend that the phrase requires no

construction.

Defendants contend that the phrase is indefinite

and cannot be construed.
Defendants argue that the term is indefinite because
neither the claims nor the specification of the ‘810 Patent
explain how to select diameters that facilitate a placement of
the tubular wall at the junction of the esophagus and the
stomach.

They note that the ‘810 Patent does not describe the

characteristics of the junction of the esophagus and the stomach
or how one might use this knowledge to select the correct
diameters.

They contend that without this information, it is

impossible to determine whether a stent design meets this
limitation.
This argument ignores again one of the most basic
principals of patent law: that the relevant inquiry is not
101

whether a layperson would understand the claims, but rather
whether “one skilled in the art would understand the bounds of
the claim when read in light of the specification . . . .”
Exxon Research & Engineering Co. v. United States, 265 F.3d
1371, 1375 (Fed. Cir. 2001).

Plaintiffs’ expert, Dr. Taylor,

states in his affidavit that stent designers “understand the
range of stent diameters that would be appropriate for the
particular anatomy in which a stent is to be deployed,” and that
“the normal sizes for the relevant human anatomies fall within a
known spectrum, and a stent designer would choose stent
diameters accordingly.”

Defendants present no evidence to

counter this seemingly obvious proposition, that persons having
ordinary skill in designing medical stents would have a
background in and understanding of the particular anatomies for
which the stents are designed, in this case: the juncture of the
esophagus and the stomach.
In the alternative, Defendants argue that “to the extent
this phrase requires a selection of diameters to facilitate
placement at a particular ‘junction of the esophagus with the
stomach’ (i.e., in a particular patient),” the phrase would be
indefinite under the holding of IPXL Holdings, L.L.C., v.
Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005).

In IPXL, the

Federal Circuit held that a claim is indefinite if it “attempts
to claim both a system and a method for using that system.”
102

IPXL Holdings, 430 F.3d at 1383-84.

“The conclusion of IPXL

Holdings was based on the lack of clarity as to when the mixed
subject matter claim would be infringed.”

Microprocessor

Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367,
1374 (Fed. Cir. 2008).

Because the claim in IPXL included both

a system and a method for using the system, it was not clear
whether the claim would be infringed at the time of manufacture
and sale or at the time of use.
indefinite.

The claim was therefore held

IPXL Holdings, 430 F.3d at 1383-84.

In IPXL, the “method” language inserted in the “system”
claim was problematic because it was “directed to user actions,
not system capabilities.”

In re Katz Interactive Call

Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011).
The question in the instant case is therefore whether “are
selected” refers to (1) selection by the stent designer and
manufacturer, who know the range of stent diameters appropriate
for the junction of the stomach and the esophagus - thus
relating the selection to “system capabilities”; or (2)
selection by an individual doctor, who picks the stent for
implantation in a particular patient - thus relating the
selection to “user actions.”

On close examination of the

language of the claim, it is apparent the selection described is
performed by the designer or manufacturer.

103

The claim describes diameters that “are selected to
facilitate a placement of the tubular wall at a junction of the
esophagus with the stomach.”

The definite article used to

describe the organs involved (“the esophagus”, “the stomach”)
describes the specific classes of organs, instead of the organs
of a particular patient, because no individual patient is
identified.

The Claim does not use an indefinite article, which

would indicate that the stomach and esophagus involved could be
any stomach or esophagus being treated by the physician (“an
esophagus,” “a stomach”).

In light of this choice of phrasing,

the claim relates to general compatibility with the junction of
the esophagus with the stomach and not the user actions of a
treating physician.
capabilities.”

The claim is therefore “directed to system

In re Katz Interactive Call Processing Patent

Litig., 639 F.3d at 1318.

No component of the claim establishes

a “method” and the claim is not indefinite within the holding of
IPXL Holdings.
Given the careful grammatical parsing necessary to
determine whether the claim is indefinite, I will construe the
phrase to make its grammatical import clear.

I construe it to

mean “selected by the designer or manufacturer to facilitate a
placement of the tubular wall at a junction of the esophagus
with the stomach.”

104

C.

The Thompson Patent
1.

“circumscribing the stent over substantially the
entirety of said axial length”

Claims 1, 19, and 23 of the Thompson Patent describe a
continuous film as “circumscribing the stent over substantially
the entirety of said axial length.”
47, 12:38-40, 13:6-7.

Thompson Patent at 10:46-

Plaintiffs contend that this phrase

should be construed to mean “completely covering the stent over
a substantial amount of the entire axial length of the film.”
Defendants contend that it should be construed to mean
“completely covering the stent with an outer diameter that is
continuously equal to or greater than the outer diameter of the
stent, over a substantial amount of the entire axial length of
the film.”

The parties’ dispute is solely related to whether

“circumscribing” implies that the film has “an outer diameter
that is continuously equal to or greater than the outer diameter
of the stent.”
The Thompson specification states that “[t]he continuous
film substantially prevents growth of tissue through the stent
along the barrier region.”

Thompson Patent at 3:22-23.

Defendants argue that the only way a film can prevent tissue
growth through the stent is if its outer diameter is equal to or
greater than that of the stent.

However, they provide no expert

opinion to that effect, and Plaintiffs’ expert Dr. Taylor states
105

that if the film were disposed on the interior side of the stent
wall, it would still be considered to block the openings so that
the tissue could not grow through the stent.
Affidavit ¶ 42.

Taylor Reply

Dr. Taylor’s statement is consistent with the

specification, which only states that the film “substantially”
prevents the tissue growth rather than that it completely
prevents tissue growth from encroaching through the stent in any
way.

Thompson Patent at 3:22.

A film circumscribing the stent

around the outside of the stent walls would completely prevent
the tissue from reaching the stent along the barrier region, but
the specification does not require such complete prevention.
Defendants additionally argue that their proposed
definition is consistent with the ordinary meaning of
“circumscribe.”

They point to the definition in Webster’s

College Dictionary 247 of “circumscribe” as “to draw a line
around; encircle” and they point to an illustration on the
website emathzone.com of a circle “circumscribing a polygon” in
which the circle is around the exterior of the polygon.
However, this offer of an “ordinary meaning” of “circumscribe”
is narrower than the meaning of the term as it is used in the
Thompson Patent.8

It is even narrower than Defendants’ proposed definition, which
describes only the “outer diameter” of the film, leaving vague
whether the “inner diameter” might be less than the diameter of
the stent. This careful wording was presumably adopted in order
106
8

The Thompson specification explains that the medial region
of the stent can be circumscribed with film “by dip coating of
[the] stent . . . .”

Thompson Patent at 8:47.

The

specification provides some detail regarding the dip-coating
process, explaining that the film must be removed from the cuff
after dipping, and describing how many dip coatings are
necessary to achieve the preferred film thickness.
54.

Id. at 8:48-

However, the specification does not suggest that the

dipping must be conducted in a particular way to ensure that the
coating is only around the outside of the stent.

Dr. Taylor

states in his affidavit that depending on the dip-coating
process, a film can be disposed on the stent exterior, interior,
or both.

Taylor Reply Affidavit at ¶ 44.

Because dip coating is an appropriate means of
circumscription, which is clear from the Thompson specification,
“circumscription” does not require the film to be disposed
solely on the exterior of the stent.

The “ordinary meanings” of

“circumscribe” demonstrated by the dictionary definition and the
emathzone.com diagram therefore do not apply in the context of
the Thompson Patent.

Indeed, given Defendants’ proposed

definition, citing only to the “outer diameter” of the film,

to avoid contradicting the specification in the same manner as
the proffered “ordinary meaning” does.
107

which does not adopt the “ordinary meaning,” it appears that
they too agree that the “ordinary meaning” is too narrow.
Finally, Defendants contend that their construction is
supported by the claim language.

Claim 1 states that the film

is “formed axially along the stent and ha[s] an axial length.”
Id.

Defendants state that “[t]his feature refers to a film

covering the stent over a length of the stent.”

They argue that

“[i]f the word ‘circumscribes’ simply meant ‘covering,’ . . .
there would be no need to add this limitation, because the
preceding claim language already called for a film covering the
stent.”

However, the “preceding claim language” did not “call[]

for a film covering the stent.”

It stated that the film is

“formed axially along the stent and ha[s] an axial length.”
Defendants baselessly interpret one part of a claim to state
something far broader than it does and then argue that the
second part of the claim must be construed in light of this
overly broad interpretation.

Defendants have put forth no

compelling argument to construe “formed axially along the stent
and ha[s] an axial length” to mean “covering.”

Thus, this line

of reasoning fails.9

Defendants apparently also argue - though it is by no means
clear - that because the film circumscribes the stent over
substantially the entirety of the axial length of the film, this
“reinforces the notion that ‘circumscribing’ should be given the
meaning proposed by Defendants.” There does not appear to be
any relationship between whether the film may only circumscribe
108
9

Defendants have not demonstrated that the claim language
should be construed to include the proposed limitation regarding
the outer diameter of the film, where the limitation is not
included within the claims nor implied by intrinsic or extrinsic
evidence.

I therefore adopt Plaintiffs’ definition and construe

“circumscribing the stent over substantially the entirety of
said axial length” to mean “completely covering the stent over a
substantial amount of the entire axial length of the film.”
2.

“open weave construction”

Claims 1, 19, and 23 of the Thompson Patent describe “a
tubular stent of open weave construction . . . .”
Patent at 10:39, 12:30, 12:63.

Thompson

Plaintiffs contend that “open

weave construction” requires no further definition.

Defendants

contend that the phrase should be construed to mean “constructed
of two or more separate strands woven together.”
The parties’ dispute is directed to whether “open weave
construction” implies a requirement of multiple separate
strands.

Defendants offer three arguments in favor of such an

implication.

the stent over a partial length of the film and whether
circumscription can occur along the internal wall of the stent.
Nor have Defendants explained what that relationship might be.
This argument is vague and incomplete and, therefore,
unavailing.
109

First, Defendants contend that “[t]he specification
contemplates only one way to make an open weave construction by weaving two or more separate strands together.”

They state

that the specification describes such a construction as the
preferable embodiment of the stent.

I am forced to repeat, once

again, that a party may “narrow a claim term’s ordinary meaning,
but he cannot do so simply by pointing to the preferred
embodiment . . . .”

CCS Fitness, Inc., 288 F.3d at 1366.

Second, Defendants contend that “open weave construction”
must imply that two or more strands are woven together because
the specification provides that the “stent is preferably of open
weave or mesh construction, formed of multiple helically wound
strands or filaments of a flexible material such as a body
compatible stainless steel.”

Thompson Patent at 5:67-7:3.

However, it is clear from the sentence that the specification is
describing a particular type of open weave construction, not
defining the phrase.

As a general matter, it is implausible to

argue that every embodiment of open weave or mesh construction
must be made of helices and of a flexible material.
An application of the doctrine of claim differentiation to
the Thompson Patent demonstrates that such an argument is no
more plausible in the context of this particular patent.

Claim

1 teaches a stent of “open weave construction,” id. at 10:53,
while Claim 7, which is dependent on Claim 1, teaches that “the
110

stent comprises a mesh formed of braided helical strands,” id.
at 11:13-14.

If the description of the open weave or mesh

construction in the specification were intended as a definition,
instead of an illustration of one particular type of that
construction, then Claim 7 would be redundant.

Defendants have

“not shown any reason sufficient to rebut the presumption that
claim 1 should not be . . . limited in order to preserve the
distinction” of Claim 7.

Comark, 156 F.3d at 1187.

Third and finally, Defendants contend that the prosecution
history supports their construction because the applicants
described the stent segments in U.S. Patent No. 5,064,435
(“Porter Patent”) as “unequivocally open weave” and the Porter
Patent itself describes a “[s]tent . . . [that] has an open mesh
or weave construction, formed of helically wound and braided
strands or filaments . . . of a resilient material.”
Patent at 5:7-10.

Porter

However, Defendants do not demonstrate that

the applicants purported to adopt every definition applied in
the Porter Patents to the claims in the Thompson Patent.
Moreover, Defendants do not demonstrate that the description in
the Porter Patent of the “open mesh or weave construction” was
anything other than an illustration of a particular embodiment.
Plaintiffs’ expert, Dr. Taylor, has stated that he (as a
person of ordinary skill in the art) would not understand the
term to place a limitation on the number of strands that may be
111

used in general or to exclude stents woven from a single strand
in particular.

Taylor Reply Affidavit ¶ 46.

Defendants have

not shown that “open weave” should be construed to imply that
more than one strand must be woven together.

Nor have they

shown that any other aspect of the phrase “open weave
construction” is ambiguous or misleading.

The phrase does not

need construction.
3.

“braided helical strands”

Claims 7 and 10 of the Thompson Patent teach a stent that
is “formed of braided helical strands.”
11:8-9, 11:25.

Thompson Patent at

Plaintiffs contend that “braided helical

strands” should be construed to mean “braided helical (i.e.,
approximating a spiral form or structure) strands.”

Defendants

contend that the phrase should be construed to mean “two or more
separate strands braided together to form braided helices.”

The

parties’ dispute concerns (1) whether “helical” should be
construed broadly, to mean approximating a helix, or narrowly,
to mean forming a helix, and (2) whether the braids must have
multiple, separate strands.
Defendants base their proposed construction of “helical” on
a dictionary definition.

They cite the same definition from

Webster’s Third Dictionary that they cite to construe “helical”
in the context of both the Pulnev and the Hankh Patents.

Once

again, Plaintiffs base their definition on the statements of Dr.
112

Taylor, their expert witness.

Dr. Taylor explains that in the

context of stent construction, “helical” is used in a general
way to encompass many different configurations, reflecting what
he calls “its meaning in the lay context” of “approximating a
spiral form or structure.”

For the same reasons that I discuss

above with reference to the term “helical” as used in the Pulnev
and the Hankh Patents, I find that “helical” here means
“substantially in the form of a spiral.”

See supra Sections

III(A)(3); III(B)(7).
Defendants contend that the specification’s descriptions
of one embodiment as “comprised of multiple braided and
helically wound strands,” Thompson Patent at 8:30-32, and of
another embodiment as containing “points or edges at the
opposite ends of the stent,” id. at 8:26-28, serve to define the
term “braided strands.”

This argument once again improperly

imports the characteristic of an illustrative embodiment into
the claims.
However, the language in the specification does offer
relevant guidance.

I disagree with Plaintiffs’ assertion that

there is no intrinsic evidence suggesting that the braided
helical strands are formed by two or more separate helical
strands.

The specification describes braided helical strands by

using different phrases interchangeably, indicating that those
phrases are synonymous for the purposes of the Patent.
113

The

choice of interchangeable language demonstrates that the
applicants intended “braided helical strands” to be composed of
multiple separate helical strands.
The specification describes “[t]he preferred stent” as
“compris[ing] a mesh formed of braided helical strands.”
Thompson Patent at 3:30-31.

It explains regarding the

embodiment labeled “66” that “[t]he stent preferably is of open
weave or mesh construction, formed of multiple helically wound
strands or filaments . . . .”

Id. at 5:67-6:2.

The

specification then describes another stent, labeled “90,”
stating that “[l]ike 66, stent 90 is of mesh or open weave
construction, comprised of multiple braided and helically wound
strands.”

Thompson Patent at 8:30-32.

Finally, the

specification describes “a mandrel . . . particularly well suit
for forming stent 90.”

Id. at 9:49-50.

It states that, using

this mandrel, “[t]o form the stent, the individual filaments or
strands are wound in helical fashion to form an open weave
cylinder.”

Id. at 9:52-54 (emphasis added).

The specification uses “braided helical strands,” “multiple
helically wound strands,” “multiple braided and helically wound
strands,” and “individual filaments or strands that are wound in
helical fashion” interchangeably to describe the preferred
embodiment of the open weave or mesh structure.

This indicates

that the braided helical strands are (1) made of multiple
114

strands and (2) made of discrete (“individual”) strands.

The

choice of language in the specification thus implies that the
phrase “braided helical strands,” as used in the Thompson
Patent, involves multiple separate strands.
In light of the reasoning above, neither Plaintiffs’ nor
Defendants’ proposed definition of “braided helical strands” is
entirely convincing.

Instead, I construe “braided helical

strands” to mean “braids of two or more separate strands where
each strand is substantially in the form of a spiral.”
IV. CONCLUSION
For the reasons set out at length above, I CONSTRUE the
terms of the various claims as set forth in this Memorandum, and
as summarized in the Appendix, see infra Section V.
It is FURTHER ORDERED:
That the parties submit on or before May 6, 2016 a joint
proposed scheduling order setting forth dates certain for the
conclusion of discovery, summary judgment motions and any other
dates necessary to be established to bring this case to
judgment.

/s/ Douglas P. Woodlock______
DOUGLAS P. WOODLOCK
UNITED STATES DISTRICT JUDGE

115

V. APPENDIX: CLAIM CONSTRUCTION SUMMARY

A.

Pulnev Patents

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction

Court’s Construction

thread(s)
portion(s) of wire
thread: length of material that is not a
monofilament threads: two or more threads
portion(s) of wire

elongate(d) element(s) elongate member
portion(s) of wire
elongate(d) element or elongate member:
elongated length of material that is not a
monofilament
elongate(d) elements: two or more elongated
elements / members
portion(s) of wire forming the side surface

116

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction

Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction

Court’s Construction

helical
helix
helix: spiral form or structure
helical: approximating a helix
a smooth, continuously- spiraling, threedimensional curve that lies on a cylinder or
cone and follows a path having one of either
a consistent left-handed or right-handed
screwing motion
helix: a spiral form
helical: substantially in the form of a
spiral

opposite senses of helix opposite helical
lines
one helical direction and the other helical
direction
opposite handed screwing motion of the path
of one helical line relative to that of
another helical line
one helical direction and the other helical
direction

117

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

common
common
common
common

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction

opposite to the first direction
in the other helical direction
opposite handed screwing motion of the path
of one helical line relative to that of
another helical line
in the other helical direction

Court’s Construction

Phrase(s) in Patent

Plaintiffs’ Construction

Defendants’ Construction

Court’s Construction

[first/second] direction of winding
[first / second] direction of winding
one direction along a helical path
[first / second] direction of winding

interlaced
interlacing pattern
interwoven
interlaced: interwoven
interlacing pattern: interwoven pattern
interwoven: woven
arrangement in which a length of thread
passes alternatively over and under each
successively encountered length of thread
interlaced: interwoven
interlacing pattern: interwoven pattern
interwoven: interwoven

118

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

Phrase(s) in Patent

Plaintiffs’ Construction

Defendants’ Construction
Court’s Construction

configured to slide with respect to one
another
not fixedly secured with respect to one
another
configured to move along the length with
respect to one another
configured to move in a smooth continuous
motion with respect to one another without
being fixedly secured to one another

a shape and orientation substantially
different from shape and orientation of any
of the elongated elements
a shape and orientation substantially
different than that of any portions of wire
along the body
term cannot be construed
a shape and orientation substantially
different from shape and orientation of any
of the portions of wire forming the side
surface

119

Phrase(s) in Patent
Plaintiffs’ Construction

Defendants’ Construction

Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

free ends
said first and second ends
free ends: free ends
said first and second ends: said first and
second ends
the portion of the thread / elongate member
that extends between that thread’s /
elongate member’s last cross of an
oppositely directed thread / elongate member
and its tip
free ends: free ends
said first and second ends:
said first and second ends

mesh structure
structure forming a net or network
a pattern of openings made by an arrangement
or interlaced helical threads
mesh structure

120

Phrase(s) in Patent

merging sections
bending points
bend(s)
connecting elements
curvilinear segment
circle arc segment

Plaintiffs’ Construction

merging sections: sections of the portion of
wire at the body ends
bending points: locations of bending
bend(s): shape(s) resulting from having been
bent
connecting elements: connecting (v.)
portions of wire
curvilinear segment: curved portion of wire
circle arc segment: portion of wire having
the shape of a part of a circle
a section that connects oppositely wound
thread segments in a smooth, continuous,
non-angular fashion, so as to have a circle
arc, loop or U-shape
merging sections: merging sections
bending points: locations of bending
bend(s): shape(s) resulting from having been
bent
connecting elements: that connects portions
of wire
curvilinear segment: curved segment
circle arc segment: segment having the shape
of a part of a circle

Defendants’ Construction

Court’s Construction

121

B.

Hankh Patents

Phrase(s) in Patent
Plaintiffs’ Construction

Defendants’ Construction

Court’s Construction

truncated conical segment
truncated conical portion
truncated segment having an incline or taper
(as differentiated from an abrupt, stepped
transition)
a segment having a gradual, non-abrupt
incline or taper consistent with a solid
formed by rotating a right triangle about
one of its sides, with the apex cut off by a
plane parallel to the base of the segment,
where the segment extends a non-trivial
length that spans at least two axially
aligned mesh openings
segment having a gradual, non-abrupt incline
or taper consistent with a solid formed by
rotating a right triangle about one of its
sides, with the apex cut off by a plane
parallel to the base of the segment

122

Phrase(s) in Patent
Plaintiffs’ Construction

Defendants’ Construction

Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

intermediate segment
second tubular segment
intermediate segment: intermediate segment
second tubular segment: second tubular
segment
a segment having one or more gradual, nonabrupt inclines or tapers consistent with a
solid formed by rotating a right triangle
about one of its sides, with the apex of
each incline or taper cut off by a plane
parallel to the base of the segment, wherein
the segment extends a non-trivial length
that spans at least two axially aligned mesh
openings
intermediate segment: intermediate segment
second tubular segment: second tubular
segment

distal segment
third tubular segment
distal segment: distal segment
third tubular segment: third tubular segment
a segment at the distal end of the stent
distal segment: a segment at the distal end
of the stent
third tubular segment: third tubular segment

123

Phrase(s) in Patent

Plaintiffs’ Construction

Defendants’ Construction

Court’s Construction

the steep angle varies / increases [in the
proximal direction] along the truncated
conical segment / truncated conical portion
/ second tubular segment [in the
longitudinal / proximal direction]
the steep angle varies / increases along the
truncated conical segment / truncated
conical portion / second tubular segment in
the longitudinal direction
the strands cross within the truncated
conical segment / truncated conical portion
to form at least three angles that are
oriented in the same axial direction and
bisected by the same line, and the angles
change / become greater from one to the next
the angles formed by crossing strands and
oriented in the same axial direction vary /
increase [in the proximal direction] along
the truncated conical segment / truncated
conical portion / second tubular segment [in
the longitudinal / proximal direction].

124

Phrase(s) in Patent

strand
a first strand . . . and a second strand

Plaintiffs’ Construction

strand: wire or portion of wire
a first strand . . . and a second strand: a
first wire or first portion of wire . . .
and a second wire or second portion of wire
strand: strand or filament
a first strand . . . and a second strand:
two separate strands or two separate
filaments
strand: strand
a first strand . . . and a second strand:
two separate strands, a first strand . . .
and a second strand

Defendants’ Construction

Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

radial force
outward force in a radial direction upon
compression
term cannot be construed
outward force in a radial direction upon
compression, where comparison of that force
in the segments of a stent with differential
geometry is conducted by observing the
relative radial forces of the segments when
placed in a uniform vessel that is smaller
than the diameter of the smallest segment

125

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction

Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

wound helically
wound to approximate a helix (i.e., to
approximate a spiral form or structure)
wound in a smooth, continuously-spiraling,
three-dimensional curve that lies on a
cylinder or cone and follows a path having
one of either a consistent left-handed or
right-handed screwing motion
wound substantially in the form of a spiral

wound in opposite directions
wound in one helical direction and the other
helical direction, respectively
wound helically in opposite handed screwing
motions
wound in one helical direction and in the
other helical direction, respectively

126

Phrase(s) in Patent

Plaintiffs’ Construction

Defendants’ Construction

Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction

Court’s Construction

a . . . strand wound helically in a . . .
direction different than / from the first
direction
a first wire or first portion of wire wound
helically in a first direction and a second
wire or second portion of wire wound
helically in a second direction different
than / from the first direction
a . . . strand wound helically in a . . .
direction that is the opposite handed
screwing motion from the first direction
a . . . strand wound helically in the
opposite helical direction [than/from] the
first direction

interbraided
braided
arrangement in which a strand continuing in
a direction passes alternately over and
under each successively encountered strand
interbraided in any number of braidings or
patterns providing the effect that the stent
contracts in the radial direction when the
ends of the stent are pulled away from each
other and the stent self-expands in the
radial direction when the pull is released

127

Phrase(s) in Patent

Plaintiffs’ Construction

Defendants’ Construction
Court’s Construction

C.

are selected to facilitate a placement of
the tubular wall at a junction of the
esophagus with the stomach
are selected to facilitate a placement of
the tubular wall at a junction of the
esophagus with the stomach
term cannot be construed
selected by the designer or manufacturer to
facilitate a placement of the tubular wall
at a junction of the esophagus with the
stomach

Thompson Patent

Phrase(s) in Patent
Plaintiffs’ Construction

Defendants’ Construction

Court’s Construction

circumscribing the stent over substantially
the entirety of said axial length
completely covering the stent over a
substantial amount of the entire axial
length of the film
completely covering the stent with an outer
diameter that is continuously equal to or
greater than the outer diameter of the
stent, over a substantial amount of the
entire axial length of the film
completely covering the stent over a
substantial amount of the entire axial
length of the film

128

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

Phrase(s) in Patent
Plaintiffs’ Construction
Defendants’ Construction
Court’s Construction

open weave construction
open weave construction
constructed of two or more separate strands
woven together
open weave construction

braided helical strands
braided helical (i.e., approximating a
spiral form or structure) strands
two or more separate strands braided
together to form braided helices
braids of two or more separate strands where
each strand is substantially in the form of
a spiral

129