Stryker Corporation et al v. Zimmer Inc. et al
Filing
106
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER ; signed by Judge Robert J. Jonker (Judge Robert J. Jonker, mil)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
STRYKER CORP., et al.,
Plaintiffs/Counter-Defendants,
CASE NO. 1:10-cv-1223
v.
HON. ROBERT J. JONKER
ZIMMER, INC., et al.,
Defendants/Counter-Plaintiffs.
_____________________________________/
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
INTRODUCTION
This is a patent infringement case. Stryker Corporation, Stryker Puerto Rico, Ltd., and
Stryker Sales Corporation (collectively, “Stryker”) allege that Zimmer Inc. and Zimmer Orthopaedic
Surgical Products (collectively, “Zimmer”) are infringing one or more of three Stryker patents,
including U.S. Patent Nos. 6,022,329 (the “‘329 patent”), 6,179,807 (the “‘807 patent”), and
7,144,383 (the “‘383 patent”). (Compl., docket #1, ¶¶ 11-13.) Both companies work in the medical
technology field, developing and marketing products relating to various medical specialities. (Id.
¶¶ 6-10.) The patents at issue in this case pertain to pulsed lavage irrigation systems, which are
commonly used in orthopedic surgeries and wound management to remove blood and other debris
from surgical sites. (Stryker’s Br., docket # 66, at 5.)
At the Court’s invitation, the parties have identified terms for which they believe construction
is most important to advance the case, and they have proposed competing constructions of most of
these terms. (Jt. State., docket # 61.) The Court heard oral argument on the parties’ proposed
1
constructions on January 18, 2012. This Claim Construction Memorandum contains the Court’s
construction of these disputed terms.
CLAIM CONSTRUCTION PRINCIPLES
When the meaning of a claim’s language is disputed, the court must construe the claim as
a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
banc), aff’d 517 U.S. 370, 116 S. Ct. 1384 (1996). Proper claim construction begins with the
language of the claims themselves. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996). “‘In construing claims, the analytical focus must begin and remain centered on the
language of the claims themselves, for it is that language that the patentee chose to use to particularly
point[] out and distinctly claim[] the subject matter which the patentee regards as his invention. 35
U.S.C. § 112, ¶ 2.’” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir.
2003) (quoting Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir.
2001) (internal quotations omitted)). The Court must give claim terms the ordinary and customary
meaning ascribed to them by “a person of ordinary skill in the art in question at the time of the
invention, i.e, as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
When interpreting a claim as understood by a person of ordinary skill in the art, the court first
examines the intrinsic evidence before it, which includes not only the claim language, but also the
written description and the prosecution history of the patent. Phillips, 415 F.3d at 1319. Terms that
have a plain and ordinary meaning typically do not need to be construed, as their meaning is clear
from the term itself. See Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir.
2010). A court considers the written description “because it is relevant not only to aid in the claim
2
construction analysis, but also to determine if the presumption of ordinary and customary meaning
is rebutted.” Brookhill-Wilk 1, LLC, 334 F.3d at 1298. In fact, the specification is usually “the
single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. The prosecution
history may also be considered to “inform the 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.
A court may also consider extrinsic evidence, such as dictionaries, treatises, and expert or
inventor testimony, in construing patent claims. See id. Technical dictionaries may help a court
understand “the meaning of particular terminology to those of skill in the art of the invention.” Id.
at 1318. Likewise, expert testimony may be useful for explaining the technology at issue and how
the particular invention works, to ensure that the court’s understanding of the technical aspects of
the patent is consistent with that of a person of ordinary skill in the art, or to establish that a
particular claim in the patent or in prior art has a particular meaning in the pertinent field. See id.
While a court may consider both intrinsic and extrinsic evidence, intrinsic evidence is
generally more reliable and thus generally entitled to greater weight when construing a claim term.
See id. at 1320-21. What ultimately controls, however, is the language of the claims themselves:
“[T]he court’s focus [must] remain[] on understanding how a person of ordinary skill in the art
would understand the claim terms.” Id. at 1323. Thus, “‘[t]he construction that stays true to the
claim language and most naturally aligns with the patent’s description of the invention will be, in
the end, the correct construction.’” Id. at 1316 (quoting Renishaw PLC v. Marposs Societa’ per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1995)).
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CLAIM ANALYSIS
1.
‘329 Patent, Claim 2: “trigger”
The parties propose the following constructions of the term “trigger” as it appears in claim
2 of the ‘329 patent:
Claim Term
‘329, col.22, l.3:
an elongate trigger
movably mounted on
said housing;
Stryker’s Proposed
Claim Construction
A lever pulled by a finger or
fingers to activate a device or
mechanism
(Jt. State., docket # 61.)
Zimmer’s Proposed
Claim Construction
Resilient lever designed to be
pulled in a single direction
(Jt. State., docket # 61.)
The parties agree that a trigger in claim 2 is a lever pulled by a user. (Zimmer’s Br., docket # 76,
at 9.) The parties also agree that the purpose of the trigger is “to activate a device or mechanism,”
although Zimmer argues that the inclusion of this stated purpose “is an unnecessary addition to the
definition.” (Id. at 9 n.4.(citing Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288
(Fed. Cir. 2008) (holding that claim language stating a “purpose or intended use,” often found in the
preamble, is typically not limiting))). The issue is whether the trigger in claim 2 must “inherently
return[] to its initial, resting position once the pulling force has been removed.” (Id.)
Zimmer argues that “unidirectional pulling and resiliency are characteristics inherent to a
trigger.” (Id. at 10.) Zimmer’s bases this argument largely on the ‘329 patent specification, which
describes a “trigger lever 242 . . . bendable . . . in a resilient manner,” and that “[u]pon release of the
trigger by the user, the natural resilience of the trigger lever 242 unbends it back to its . . . forward
position . . . without need for a separate return spring.” (‘329 patent, docket # 77-1, at 13:39-56.)
Stryker counters that a person of ordinary skill in the art would understand the “trigger” to describe
any lever that could be pulled to operate a device or mechanism without necessarily returning to its
4
resting position after being pulled by a user, and that Zimmer’s construction is improperly limited
to “the precise embodiment described in the specification.” (docket #66, at 12.)
The starting point is the language of claim 2 itself. See Phillips, 415 F.3d at 1317. Nothing
in the language of claim 2 requires the trigger to be resilient. (docket # 77-1, at 22:3.) The only
word directly modifying “trigger” is “elongate,” which in no way requires or implies resilience. To
the extent the specification describes resilience as one feature of the trigger on the preferred
embodiment, the absence of any resilience requirement in the claim itself suggests that Stryker in
no way meant to limit the trigger in claim 2 to resilient, elongate triggers, as opposed to all elongate
triggers. The Federal Circuit has made clear that “one of the cardinal sins of patent law . . . [is]
reading a limitation from the written description into the claims.” Phillips, 415 F.3d at 1319-20; see
also Agfa Corp. v. Creo Prods. Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006) (“As noted, this court has
repeatedly rejected the contention that depiction of a single embodiment in a patent necessarily limits
the claims to that depicted scope.”). While the trigger lever 242 described in the specification is
made of a resilient plastic material that allows it to return to its original resting position after being
released by a user, it is the function of the trigger—to engage the motor and allow for “power
pulsing” of the wound site—that defines it and sets it apart from other types of levers (resilient or
otherwise). Contrary to Zimmer’s position, the inclusion of the trigger’s function is a necessary and
appropriate component of its definition, and the addition of the word “resilient” is not.
The extrinsic evidence also supports Stryker’s proposed construction. For example, the
dictionary definition discussed in both parties’ briefs defines “trigger” as “1. The lever pressed by
the finger to discharge a firearm. 2. Any similar device used to release or activate a mechanism.”
AMERICAN HERITAGE ILLUSTRATED ENCYCLOPEDIC DICTIONARY 1758 (1987). Although the firearm
5
provides a helpful illustration of a trigger, the definition of trigger is obviously not limited to firearm
applications. Rather, the term is used to describe any similar lever that releases or activates a
mechanism. See also CHAMBERS CONCISE DICTIONARY 1141 (1991) (defining “trigger” as “a lever
that releases a catch so as to fire a gun or set a mechanism going; anything that starts a train of
actions”); WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY 1261 (1991) (defining a “trigger” as
a “movable part by which a mechanism is actuated”). The prior art is full of examples of the term
“trigger” being used in a variety of applications that do not necessarily incorporate inherent
resilience into the definition. (docket ## 87-91, Exs. O-AA.)1 Therefore, the Court is persuaded that
a person of ordinary skill in the art would construe “trigger” consistent with Stryker’s proposed
definition, and not the narrower definition Zimmer advocates. The Court therefore adopts Stryker’s
proposed construction of the term.
2.
‘329 Patent, Claim 2: “handle”
The parties propose the following constructions of the term “handle” as it appears in claim
2 of the ‘329 patent:
Claim Term
‘329, col.22, l.2:
a hollow housing
comprising a handle;
Stryker’s Proposed
Claim Construction
Zimmer’s Proposed
Claim Construction
A portion of a device designed
to be held by a hand or hands.
(Jt. State., docket # 61.)
Plain and ordinary meaning; no
construction necessary
(Jt. State., docket # 61.)
The first question is whether to construe the term at all. Zimmer argues that no construction is
1
Indeed, as Stryker notes in its Reply Brief, Zimmer’s own engineering and marketing
materials relating to the allegedly infringing device appear to treat its device’s rocker switch as a
type of trigger even though it is not resilient. (docket # 86, at 6.) This is obviously not
dispositive, though it provides further confirmation of the Court’s construction in this case.
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required because the term “has a well-understood meaning that is clear to persons of ordinary skill
in the art,” and that “fact and expert witnesses are capable of proffering testimony regarding whether
an accused product satisfies the term handle, so the jury can decide the fact inquiry.” (docket # 76,
at 11.) Consequently, Zimmer does not propose a claim construction. Stryker argues a construction
is necessary, given the parties’ inability to agree on the term’s meaning in this case. (docket # 66,
at 13.)
“When the parties raise an actual dispute regarding the proper scope of . . . [a] claim[], the
court, not the jury, must resolve the dispute.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351, 1360 (Fed. Cir. 2008). “In some cases, the ordinary meaning of claim language . .
. may be readily apparent even to lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of commonly understood words.” Id.
(citing Phillips, 415 F.3d at 1312-13). It is true in this case that Stryker to some extent relies on
plain and ordinary meaning even though it advocates construction of the term. But construction is
still appropriate because Zimmer argues the plain and ordinary meaning of the term necessarily
excludes something Stryker claims for it. Because the parties disagree, claim construction is
required.
At issue is claim 2 of the ‘329 patent, which provides that the claimed “pulsed irrigation
surgical handpiece” includes “a hollow housing comprising a handle; . . . an irrigation liquid tube
extending along said handle; [and] an electric motor spaced between the top and bottom of said
handle and located in said handle . . . .” (docket # 77-1, at 22:1-8.) Stryker argues the claim
language and specification “supports a broad construction of ‘handle’ according to its plain and
ordinary meaning.” (docket # 66, at 13.) Specifically, Stryker constructs “handle” to mean “a portion
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of a device designed to be held by a hand or hands.” (Id.) Zimmer objects to Stryker’s construction
because it would impermissibly construe “handle” to “read not only on the handle but also on what
one of ordinary skill in the art would understand to be the barrel of a pistol-shaped device.” (docket
# 76, at 12.)
The Court adopts Stryker’s proposed claim construction. According to the specification,
“[t]o use the apparatus for irrigation of a surgical site, the user grips the handpiece, either by the
handle 12, in a pistol-like manner, or where the barrel 13 joins the handle 12, in a wand like
manner.” (docket # 77-1, at 20:48-51.) A person of ordinary skill in the art would interpret the
specification consistent with Stryker’s position—that the irrigation device’s handle is the portion of
the device designed to be held by a hand. The ‘329 claim language also supports this interpretation,
as claim 2 does not necessarily require the inclusion of a barrel, which is a feature of the preferred
embodiment that appears to be captured in dependent claim 4. (Id. at 22:1-42.) Moreover, despite
Zimmer’s concerns, Stryker’s construction would not necessarily include the definition “barrel 13”
within the definition of “handle 12.” Rather, it would depend on whether the barrel 13 of an
allegedly infringing product was “designed to be held by a hand”—a question that the Court leaves
for subsequent motion practice and, as necessary, trial.2 Finally, the Stryker construction is also
consistent with the extrinsic evidence. See, e.g., WEBSTER’S UNABRIDGED DICTIONARY 642 (1989)
2
The Court does not rely on Stryker’s argument based on Figure 4 of the ‘329 patent.
(docket # 66, at 13.) In Figure 4, the term “housing handle” is identified with specification
reference numerals 11, 12, and 15, which Stryker argues is persuasive intrinsic evidence in
support of its position. (Id.) The use of “handle” in these discrete instances appears to be a
typographical error. Indeed, other than the instances cited in Stryker’s brief, reference numeral
11 is consistently defined as the “housing” throughout the ‘329 specification, and numerals 12
and 15 are used to describe the left- and right-hand sides of the housing, and not component parts
of the “handle.” (See, e.g., docket # 67-2, ‘329 patent, at 3:28-39.)
8
(defining “handle” to mean “a part of a thing made specifically to be grasped or held by the hand”);
WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY 550 (1991) (defining “handle” to mean “a part
that is designed especially to be grasped by the hand.”)
3.
‘329 Patent, Claim 2: “adjacent”
The parties propose the following constructions of the term “adjacent” as it appears in
claim 2 of the ‘329 patent:
Claim Term
‘329, col.22, l.5-7:
an electric motor spaced
between the top and
bottom of said handle
and located in said
handle adjacent said
irrigation tube;
Stryker’s Proposed
Claim Construction
Close to or lying near
(Jt. State., docket # 61.)
Zimmer’s Proposed
Claim Construction
Plain and ordinary meaning; no
construction necessary
(Jt. State., docket # 61.)
Once again, the parties dispute whether this term requires construction. Zimmer argues that
construction is not necessary because Stryker’s definition simply “replaces one commonly word with
several.” (docket # 76, at 17.) Stryker counters that its proposed definition is consistent with the
term’s plain meaning and the evidence of record, and that because Zimmer refuses to adopt the
construction, a dispute exists as to the term’s definition, which creates a question that the Court must
address as a matter of law. (docket # 66, at 15-16.) Because a claim construction dispute exists, and
for the reasons discussed above in the context of the Court’s “handle” analysis, the Court engages
in a claim construction analysis of “adjacent.” See O2 Micro Int’l Ltd., 521 F.3d at 1360.
Here, Stryker’s proposed construction of “adjacent” as “close to or lying near” is consistent
with the claim language and the specification. The preferred embodiment in the specification
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describes a “DC energizable electric motor 36” that “is snugly housed in the space between the left
and right . . . shell parts 30 and 31” that surround the motor 36, and a liquid hose 160 that is located
between the shell parts 30 and 31 and the housing 11. (docket # 77-2, at fig. 4, 4:1-8, 9:40-58.) The
claim language describes an electric motor that is located within the handpiece’s handle “adjacent
said irrigation tube.” (Id. at 22:5-7.) Nothing in the intrinsic—or extrinsic evidence for that
matter—reveals any reason to deviate from the meaning of the word routinely used in other
constructions. Courts routinely construct terms such as “adjacent,” often providing definitions
similar to what has been advocated here. See, e.g., Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423
F.3d 1343, 1348-49 (Fed. Cir. 2005) (construing “adjacent” as “not distant”); Totes Isotoner Corp.
v. Panther Vision, LLC, No. 09-cv-1064, 2010 WL 55673, at *10 (N.D. Ill. Jan. 4, 2010) (construing
“adjacent” as “closely proximate”); Aero Indus., Inc. v. Quick Draw Tarpaulin Sys., Inc., No. 1:05cv-0439, 2009 WL 838684, at *11 (S.D. Ind. Mar. 27, 2009) (construing “adjacent” to mean “close
to, next to, or lying near”); Bridgelux, Inc. v. Cree, Inc., No. 9:06-cv-240, 2008 WL 2325623, at *10*11 (E.D. Tex. June 3, 2008) (construing “adjacent” to mean “near or next to”). The parties are then
required to provide competent testimony as to how a person of ordinary skill in the art interprets
“adjacent,” “close to,” or “lying near” in the technology at issue—in this case, pulsed lavage
irrigation systems.
Zimmer asserts that because the irrigation handpiece at issue is by its nature compact and
self-contained, adopting Stryker’s definition “would effectively read the [adjacent] limitation[] out
of the claim,” and that “Stryker could argue that virtually all the parts are close to or near to one
another.” (docket # 76, at 17.) Zimmer’s concern is without merit. As the Federal Circuit has
repeatedly emphasized, claim construction must be consistent with the understanding of “a person
10
of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312. In
other words, the term “adjacent” is not interpreted in a vacuum, but rather is informed by the field
of technology, what is considered common knowledge in the field, and the invention itself. See id.
For example, what constitutes “close” in horseshoes is markedly different than when dealing with
hand grenades. Context makes all the difference.
Accordingly, the Court adopts Stryker’s proposed construction of the claim term.
4.
‘807 Patent, Claim 45: “lock assembly”
Claim Term
Stryker’s Proposed
Claim Construction
Zimmer’s Proposed
Claim Construction
‘807, col.27, l.35-37:
a lock assembly mounted
to the front end of said
body for releasably
securing the discharge
tube and the suction tube
to said body;
Components that work together
to secure or fasten the tip to the
hand piece
(Jt. State., docket # 61.)
Subject to 35 U.S.C. § 112 ¶ 6.
Function: releasably securing
the discharge tube and the
suction tube to said body
Structure: a tip lock, a spring
plate, a biasing bar, and a
flange on a tip assembly
(Jt. State., docket # 61.)
Claim 45 of the ‘807 patent provides for “a lock assembly mounted to the front end of said
body for releasably securing the discharge tube and the suction tube of said body.” (‘807 patent,
docket # 77-2, at 27:35-37.) The basic dispute here is whether the “lock assembly” of claim 45 is
subject to a means-plus-function analysis under 35 U.S.C. § 112 ¶ 6. Zimmer argues that a person
of ordinary skill in the art would not understand “lock assembly” to connote structure, and that as
a result, the claimed structure must be limited to the embodiment disclosed in the specification—a
tip lock, spring plate, biasing bar, and flange that work together to secure the tip assembly to the
body of the irrigation handpiece. (docket # 61.) Stryker counters that a person of ordinary skill
11
would understand “lock assembly” as a structural term, and that section 112 ¶ 6 does not apply.
Instead, Stryker broad construes “lock assembly” as “components that work together to secure or
fasten the tip to the hand piece.” (Id.)
The Court first considers whether the “lock assembly” in claim 45 is indeed structural under
section 112 ¶ 6, which provides that:
[a]n element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 112 ¶ 6. This type of claim analysis applies to “purely functional limitations that do not
provide the structure that performs the recited function,” Phillips, 415 F.3d 1311, which generally
includes the hallmark “means” language that creates a rebuttable presumption that section 112 ¶ 6
applies. See Personalized Media Commc’n, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed.
Cir. 1998). “By contrast, a claim term that does not use ‘means’ will trigger the rebuttable
presumption that section 112 ¶ 6 does not apply.” Apex Inc. v. Raritan Computer, Inc., 325 F.3d
1364, 1371-72 (Fed. Cir. 2003) (citations omitted). “When a claim terms lacks the word ‘means,’
the presumption can be overcome if the challenger demonstrates that ‘the claim term fails to recite
sufficiently definite structure or else recites function without reciting sufficient structure for
performing that function.” Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1356 (Fed. Cir.
2011). “[T]he presumption flowing from the absence of the term ‘means’ is a strong one that is not
readily overcome.” Id.; see also Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354,
1362 (Fed. Cir. 2004) (“[W]e have seldom held that a limitation not using the term ‘means’ must be
considered to be in means-plus-function form. In fact, we have identified only one published
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opinion since [Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996)] in which
we have done so.”) Given the absence of any “means” language with respect to the “lock assembly”
term in claim 45, Zimmer bears the burden of overcoming the presumption against applying section
112 ¶ 6—a burden it fails to carry in this case.
Zimmer argues that the Court must engage in a mean-plus-function analysis because “lock
assembly” is simply too indefinite if not limited to the structure explicitly disclosed in the ‘807
patent specification. (docket # 76, as 19.) This argument is unavailing. As the Federal Circuit
explained in Lighting World, Inc. v. Birchwood Lighting, Inc.,
In considering whether a claim term recites sufficient structure to avoid application
of section 112 ¶ 6, we have not required the claim term to denote a specific structure.
Instead, we have held that it is sufficient if the claim term is used in common
parlance or by persons of skill in the pertinent art to designate structure, even if the
term covers a broad class of structures and even if the term identifies structures by
their function.
382 F.3d at 1360 (citations omitted). In Lighting World, the Court recognized the possibility that
applying these principles may result in a broad construction of a particular claim term that “renders
a claim more vulnerable to attack for invalidity, but that the risk is one that the “claim drafter
assumes by choosing broad structural terms rather than choosing to claim in means-plus-function
format.” Id. at 1362.
Applying these rules of construction to the “lock assembly” in claim 45, the Court concludes
that a person of ordinary skill would understand “lock assembly” to connote structure, and section
112 ¶ 6 therefore does not apply. Claim 45 provides for “a lock assembly mounted to the front of
said body for releasably securing the discharge tube and the suction tube to said body.” (docket #
77-2, at 27:35-37.) A person of ordinary skill in the art would understand this claim term as
13
describing a structure that locks the tip assembly 30 to the handpiece 22 of the irrigation system. (Id.
at 10:12-13.) While Zimmer correctly notes that the term would cover a broad range of structures
if not subject to section 112 ¶ 6, the term is structural nonetheless. Consequently, the Court declines
to apply the section 112 ¶ 6 analytical framework to “lock assembly” or otherwise limit its scope to
the embodiment disclosed in the specification.
Zimmer’s reliance on Toro Co. v. Deere & Co., 355 F.3d 1313 (Fed. Cir. 2004), is
unavailing. In Toro, the Federal Circuit held that the term “control mechanism” as used in the patent
at issue did not provide sufficient structural description for a person of ordinary skill in the art to
understand its meaning to connote structure. Id. at 1325. Zimmer attempts to analogize Toro to the
present case, arguing that the “lock assembly” in claim 45 similarly lacks structure. This analogy
fails to persuade the Court for two reasons. First, unlike the “lock assembly” in the ‘807 patent, the
patentee in Toro used the terms “control means” and “control mechanism” interchangeably in the
claim language, leading the court to conclude section 112 ¶ 6 applies. Id. at 1323, 1325. In other
words, the intrinsic evidence provided a clear indication that “control mechanism” was not a
structural term, but was rather a functional limitation synonymous with “control means.” Here,
Stryker gave no such indication in the ‘807 claim language, as it did not use “lock assembly”
interchangeably with “locking means” anywhere in the ‘807 patent. Second, when construing
“assembly” in a variety of mechanical and electrical applications, courts have consistently held that
“assembly” connotes sufficient structure to avoid section 112 ¶ 6. See, e.g., Kegel & Co. v. AMF
Bowling, Inc., 127 F.3d 1420, 1427 (Fed. Cir. 1997); Alto-Shaam, Inc. v. Cleveland Range, LLC, No.
7:09-cv-018, 2010 WL 2382249, at *16-*18 (N.D. Tex. June 7, 2010); Fitness Quest Inc. v. Monti,
No. 5:06-cv-2691, 2007 WL 2359821, at *8 (N.D. Ohio Aug. 16, 2007). Indeed, in Lighting World
14
(which was decided after Toro), the Federal Circuit held “connector assembly” was structural, and
that the term should not be limited to the structure disclosed in the specification. 382 F.3d at 1363.
While not dispositive, these other constructions further support the Court’s conclusion, as do
dictionary definitions, which define “assembly” as a noun connoting structure. See, e.g., AMERICAN
HERITAGE ILLUSTRATED ENCYCLOPEDIC DICTIONARY 42 (1987).
Although section 112 ¶ 6 does not apply, the Court must still provide a claim construction
of the term. The ‘807 specification explains that a common problem with prior surgical irrigation
handpieces was their tendency to leak during use. (docket # 77-2, at 1:59-2:6.) According to the
specification, leakage was particularly common when the handpiece’s tip assembly was subject to
side loading. (Id.) To address this problem, the ‘807 patent provides for a lock assembly that
secures the tip assembly 30 to the handpiece 22. (Id. at 10:13-14.) The preferred embodiment
teaches a tip assembly 30 that is pushed towards the handpiece 22 until the flange 186 of the
discharge tube 32 passes through the opening 154 of the lock assembly. (Id. at 10:17-19.) “As the
discharge tube 32 passes through the opening 154, [the] tapered surface 188 of [the] flange 186 abuts
the complementary beveled surface 155 around [the] opening 154. Further insertion of the discharge
tube 32 thus serves to displace the tip lock 152 upwardly. Once [the] flange 186 passes beyond [the]
tip lock 152, [the] spring plate 160 forces the tip lock 152 to return to its initial position,” thereby
mechanically locking the tip assembly 30 to the handpiece 22. (Id. at 10:19-31.)
While only providing a single embodiment of the lock assembly, the specification makes
clear that “there is no requirement that all versions of the invention employ the described tip lock.
Other versions of the invention may employ other tip locks and even other tip assemblies.” (Id. at
21:40-43.) Stryker argues that a person of ordinary skill in the art would understand “lock assembly”
15
to mean “components that work together to secure or fasten the tip to the hand piece.” The Court
agrees, as this definition is consistent with not only the claim itself, but also the preferred
embodiment in the specification, which teaches a design that uses several components to secure the
tip assembly 30 to the handpiece 22. Extrinsic dictionary evidence provide further confirmation of
the Court’s construction, as “lock” is defined as “a device used to provide restraint,” and “assembly”
is defined as “the putting together of manufactured parts to make a completed product.” AMERICAN
HERITAGE ILLUSTRATED ENCYCLOPEDIC DICTIONARY 991 (1987).
Accordingly, the Court construes “lock assembly” to mean “components that work together
to secure or fasten the tip to the hand piece.”
5.
‘383 Patent, Claim 1: “motor operable at variable speeds”
The parties propose the following constructions for “motor operable at variable speeds” in
claim 1 of the ‘383 patent:
Claim Term
‘383, cl.1, col.21, l.5861: a single electric
motor disposed in said
housing and connected to
said pump for actuating
said pump, said motor
operable at variable
speeds to control the
pumping rate of said
pump;
Stryker’s Proposed
Claim Construction
A motor that can operate at
more than one speed
(Jt. State., docket # 61.)
Zimmer’s Proposed
Claim Construction
Motor with continuously
varying speed
(Jt. State., docket # 61.)
The parties disagree on the meaning of the phrase “operable at variable speeds.” Stryker argues that
“motor operable at variable speeds” includes any motor that can operate “at more than one speed.”
(Jt. State., docket # 61.) In contrast, Zimmer submits that the claim term is limited to only those
16
motors that can run at “continuously varying speed[s].” (Id.)
The Court adopts Stryker’s proposed construction because it is consistent with the intrinsic
evidence of record, and Zimmer’s is not. Claim 1 of the ‘383 patent provides for “a single electric
motor,” with the “motor operable at variable speeds to control the pumping rate of said pump.”
(docket # 77-3, at 21:58-61.) A person of ordinary skill in the art would understand the use of the
term “variable” that modifies “speed” to mean a motor operating at more than one speed. However,
there is nothing in the plain language of claim 1 that inherently requires a continuous spectrum of
speed. In fact, Zimmer’s proposed construction tacitly recognizes this by using the core claim
language in its proposed construction and simply adding the modifier “continously” to it. The claim
language, in contrast, does not include the limiting modifier, or anything like it.
The specification of the ‘383 patent reinforces the point. It describes the preferred
embodiment of the medical irrigator. The specification describes a motor 36 that a user can turn on
using a trigger lever 242 that is made of bendable, resilient plastic. (Id. at 14:54-64.) The rest
position of the trigger lever 242 allows the motor 36 to remain in the “off” position. (Id.) When a
user exerts a “light pull on the trigger lever 242,” the motor 36 turns on, and “electric current is fed
to the motor 36 only from half the battery collection,” causing the motor 36 to run “at only a
preselected fraction of its full speed and the pump unit 100 outputs irrigation liquid pulses at a
desired frequency and amplitude, which are less than the maximum available” (“lower power
pulsing”). (Id. at 14:64-15:10.) “Further pulling in of the trigger lever 242 by the user . . .
establishes electrical contact . . . [that] appl[ies] the full series of voltage . . . to the motor 36 to
operate the latter at its full speed and thereby drive the pump unit 100 at its full output” (“high power
pulsing”).
(Id. at 15:11-15:25.) In sum, the preferred embodiment teaches a motor with three
17
discrete predetermined speed settings: “off,” lower power pulsing (which engages half of the battery
pack power source), and high power pulsing (which engages all of the battery pack power source).
(Id. at 21:1-2.) It does not include a continuous spectrum of varying speeds.
The problem with Zimmer’s proposed construction is that it unduly limits the claim term to
“continuously variable speed” motors, excluding the preferred embodiment just discussed.
Zimmer’s construction would require the irrigator to operate on a continuous speed spectrum,
excluding motors that only operate at predetermined, discrete speed settings. The Federal Circuit
has repeatedly held, “[a] claim construction that excludes the preferred embodiment is rarely, if ever,
correct.” Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir.
2010). Zimmer’s proposed construction runs afoul of this fundamental principle, as it would exclude
the preferred embodiment disclosed in the specification, and nothing in the intrinsic or extrinsic
evidence supports that.
At oral argument, Zimmer relied almost exclusively on the prosecution history to support its
narrower definition of the term, but the reliance is misplaced. The record before the Court provides
no reason to infer that Stryker’s amendment during prosecution—which cancelled virtually all of its
original claims and substituted new ones—was intended to narrow the type of motor the allowed
claims cover. “Unless altering claim language to escape examiner rejection, a patent applicant only
limits claims during prosecution by clearly disavowing claim coverage.” See IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1439 (Fed. Cir. 2000). The record does not provide any evidence
that indicates Stryker amended its claims to disavow any portion of the claim language’s plain
18
meaning.3 Consequently, the Court declines to narrow its construction on this basis, instead adopting
Stryker’s construction of “motor operable at variable speeds” to mean “a motor that can operate at
more than one speed.”
6-7.
‘383 Patent, Claim 10, 38: “variable speed electric motor”
‘383 Patent, Claim 20: “motor operating at variable speeds”
The parties also disagree as to the construction of “variable speed electric motor” in claims
10 and 38 of the ‘383 patent, and “motor operating at variable speeds” in claim 20, as illustrated
below:
Claim Term
Stryker’s Proposed
Claim Construction
‘383, cl. 10, col.22, l.5355:
a single, variable speed
electric motor in said
housing that is connected
to said pump that
actuates said pump so as
to regulate the pumping
rate of said pump;
An electric motor that can
operate at more than one speed
(Jt. State., docket # 61.)
Zimmer’s Proposed
Claim Construction
Electric motor with
continuously variable speed
(Jt. State., docket # 61.)
‘383, cl. 38, col.26, l.5-7:
a single, variable speed
electric motor disposed
in said housing
connected to said pump
for actuating said pump
at variable rates;
3
Stryker’s claim amendment replaced all mention of “plural speed motors” with “variable
speed motors” without any discussion as to the difference between the two, and narrowing the
claim term based on this modification is not warranted.
19
‘383, col.23, l.56-59: a
single electric motor
disposed in said housing
and connected to said
pump to actuate said
pump, said motor
operating at variable
speeds to regulate the
pumping rate of said
pump;
A motor that can operate at
more than one speed
(Jt. State., docket # 61.)
Motor with continuously
varying speeds
(Jt. State., docket # 61.)
With respect to these claim terms, each party simply proposes the same construction as in claim 1,
with the only exception that both parties’ construction of “variable speed electric motor” in claims
10 and 38 provides the additional limitation that the motor must be electric. Because the
constructions proposed for claims 1, 10, 20, and 38 all replicate each other, the Court will apply the
same analysis to all of these claims and adopt Stryker’s construction of the terms. See Frank’s
Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d 1370, 1377 (Fed Cir. 2004.)
Accordingly, the Court construes “variable speed electric motor” as “an electric motor that
can operate at more than one speed,” and construes “motor operating at variable speeds” as “a motor
that can operate at more than one speed.”
8.
‘383 Patent, Claims 1, 20, and 38: “control assembly”
Claim Term
Stryker’s Proposed
Claim Construction
Zimmer’s Proposed
Claim Construction
‘383, cl.1, col.21, l.6263:
a control assembly
disposed in said housing
to regulate the speed of
said motor;
Components that work together
to energize the motor
(Jt. State., docket # 61.)
Subject to 35 U.S.C. § 112 ¶ 6.
‘383, cl. 20, col.23, l.66col.24, ln.4:
20
Function:
- Claim 1: regulate the speed of
said motor
- Claim 20: control the speed of
said motor and regulate the
pumping rate of said pump
- Claim 38: supplying a variable
a control assembly
integral with said
housing, said control
assembly having a switch
member moveably
mounted to said housing
and said control
assembly being
configured to apply a
variable energization
signal from said battery
pack to said motor so as
to control the speed of
said motor and regulate
the pumping rate of said
pump.
potential energization signal to
said motor
Structure: an L-shaped trigger
member with an elongate
trigger lever, a single switch
contact support arm, a single
conductive contact blade, two
posts integral with the housing
that are configured for electrical
contacts to be mounted on
them, two electricallyconductive, spring-like metal
contacts mounted to said posts,
and two electrically conductive
contacts protruding rearwardly
from the motor, one being a
springy rectangular piece that is
bent intermediate its ends in a
dogleg fashion.
‘383, cl. 38, col.26, l.1524:
a control assembly
attached to said housing
and connected between
said at least one
conductor of said motor
for supplying a variable
potential energization
signal to said motor, said
control assembly having
a single switch member
that is moveably attached
to said housing that
selectively makes/breaks
a connection between
said at least one
conductor and said motor
and that establishes the
potential of the
energization signal
supplied to said motor.
(Jt. State., docket # 61.)
21
Similar to the issue between the parties regarding the “lock assembly” claim construction,
the parties disagree as to whether “control assembly” requires the Court to engage in a means-plusfunction analysis under 35 U.S.C. § 112 ¶ 6. Zimmer argues that the term “does not convey
sufficiently definite structure to one of ordinary skill in the art,” and the claim term must therefore
be limited to the structures disclosed in the ‘383 patent specification. (docket # 76, at 25.) Stryker
disagrees, arguing that “[i]n the context of the ‘383 patent, a person of ordinary skill would
understand the term ‘control assembly’ to mean ‘components that work together to energize the
motor.’” (docket # 66, at 22.) Zimmer bears the burden of proving section 112 ¶ 6 applies.
Thyssenkrupp, 649 F.3d at 1356. The Court concludes that Zimmer has not carried its burden.
Claims 1 and 38 of the ‘383 patent both provide for a control assembly in the housing of the
handheld irrigator “to regulate the speed of [the] motor” by “apply[ing] a variable energization
signal” to the motor from the irrigator’s battery pack “to control the speed of said motor” and to
“regulate the pumping rate of [the] pump.” (docket # 77-3, at 23:66-24:4; 26:15-24.) As discussed
above, the term “assembly,” though broad, would connote structure to a person of ordinary skill in
the art. See Lighting World, 382 F.3d at 1363; Kegel, 127 F.3d at 1427; Alto-Shaam, 2010 WL
2382249 at *16-*18; Fitness Quest, 2007 WL 2359821, at *8. Stryker did not utilize means-plusfunction language within the claim, and the Court sees no reason to apply section 112 ¶ 6 in its
absence, given the structure the term “control assembly” connotes as used in the ‘383 patent.
Even though section 112 ¶ 6 does not apply, a construction is still necessary in light of the
parties’ disagreement as to the term’s plain and ordinary meaning. Claims 20 and 38 state that the
control assembly includes a “switch member,” and that the assembly must be configured “to apply
a variable energization signal” from the batteries in order to power and control the speed of the
22
motor and regulate the irrigation pump rate. (Id. at 23:66-24:4; 26:15-24.) Against this backdrop,
a person of ordinary skill in the art would construe the “control assembly” in the ‘383 patent as
“components that work together to energize the motor,” which is the construction Stryker proposes
and the Court adopts as to this claim term. See Lighting World, Inc., 382 F.3d at 1360 (holding that
structural definitions may identify their function).
This construction is further confirmed when claims 20 and 38 are read in conjunction with
dependent claims 22 and 40, which recite additional structural requirements of the control assembly.
Claim 22 provides a claim requirement that further requires the control assembly to include two
electrical conductors that are positioned so that “a switch member can be . . . positioned to: connect
neither of said cable conductors to said motor; connect the first said cable conductor to said motor;
or connect the second said cable conductor to said motor.” (docket # 77-3, at 24:20-29.) Claim 42
requires a similar cable conductor configuration. (Id.) If the Court adopted Zimmer’s narrow
definition, the construction of the independent claims would render the dependent claims
superfluous—an outcome strongly disfavored when construing a claim term. See, e.g., Phillips, 415
F.3d at 1315; Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1319 (Fed. Cir. 2006); Versa
Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004).
The extrinsic evidence further confirms the Court’s construction. Generally speaking,
“control” is commonly used to describe “any set of instruments used to operate, regulate, or guide
a machine.” AMERICAN HERITAGE ILLUSTRATED ENCYCLOPEDIC DICTIONARY 381 (1987). And as
previously noted, “assembly” is defined as “the putting together of manufactured parts to make a
completed product.” Id. at 42. Taken together, the Court is persuaded “control assembly” would
be understood in common parlance to refer to a structure comprised of “parts that work together to
23
operate, regulate, or guide a machine.” Here, the “control assembly” in Claims 1 and 38 serve the
express purpose of engergizing the motor of the irrigator. Accordingly, the Court construes “control
assembly” as “components that work together to energize the motor.”
9.
‘383 Patent, Claim 10: “switch assembly”
Claim Term
Stryker’s Proposed
Claim Construction
Zimmer’s Proposed
Claim Construction
‘383, col.22, l.63-col.23,
l.9: A switch assembly
mounted to said housing
for selectively
establishing a connection
between at least one of
said conductors and said
motor, said switch
assembly having a switch
element moveably
attached to said handle,
said switch assembly
being configured so that:
Components that work together
to make, break or change an
electric circuit
(Jt. State., docket # 61.)
Subject to 35 U.S.C. § 112 ¶ 6.
Function: selectively
establishing a connection
between at least one of said
conductors and said motor
Structure: a single conductive
contact blade, two posts
integral with the housing that
are configured for electrical
contacts to be mounted on
them, two electricallyconductive, spring-like metal
contacts mounted to said posts,
and two electrically conductive
contacts protruding rearwardly
from the motor, one being a
springy rectangular piece that is
bent intermediate its ends in a
dogleg fashion
when said switch
element is in a first
position, said switch
assembly does not supply
an energization signal to
said motor;
when said switch
element is in a second
position, said switch
assembly supplies a first
energization signal from
said battery pack to said
motor; and
(Jt. State., docket # 61.)
when said switch
element is in a third
position, said switch
24
assembly supplies a
second energization
signal from said battery
pack to said motor.
With respect to the “switch assembly” in claim 10 of the ‘383 patent, the core issue is once
again whether the term connotes sufficient structure for a person of ordinary skill in the art to
understand its meaning. Zimmer submits that ‘“switch assembly” does not connote sufficiently
definite structure to one of ordinary skill in the art and thus should be construed under section 112
¶ 6, which would limit the “switch assembly” to embodiments disclosed in the specification. (docket
# 76, at 27.) In contrast, Stryker argues “switch assembly” should not be limited to the embodiments
in the specification under section 112 ¶ 6, but rather should be construed as “components that work
together to make, break or change an electric circuit.” (docket # 61.)
Claim 10 of the ‘383 patent provides for a “switch assembly mounted to said housing for
selectively establishing a connection between at least one of” the conductors included in the
irrigation handpiece to the motor. (docket # 77-3, at 22:63-67.) Claim 10 further provides that the
switch assembly includes a “switch element moveably attached to [the] handle” and that the switch
assembly must be configured so that it provides an “off,” “first energization signal,” and “second
energization signal” from the device’s battery pack to the motor. (Id. at 22:63-23:10.) Given that
the hallmark means-plus-function language is absent from the ‘383 patent, Zimmer once again bears
the burden to prove that section 112 ¶ 6 should apply.
Based on the claim language and other intrinsic evidence, however, the Court concludes a
person of ordinary skill in the art would consider “switch assembly” to connote structure, and
declines to apply section 112 ¶ 6. In addition to including the structural term “assembly” within the
25
claim, the claim provides further limitations that confirm “switch assembly” is indeed structural.
For example, the switch assembly includes a “switch member,” which the parties do not dispute is
a structural term, and is mounted on the housing of the irrigation handpiece. A person of ordinary
skill would necessarily consider “switch assembly” as a structural term, given the structural
definitions and positioning descriptions provided for in the claim language itself. Consequently, the
Court holds that section 112 ¶ 6 does not apply.
The specification also supports this construction. As noted above, the “switch assembly”
must be configured “for selectively establishing a connection between at least one of said conductors
and said motor.” (Id. at 22:63-67.) A person of ordinary skill in the art would understand that a
number of different switch assembly configurations could accomplish this functional requirement.
The parties agree that the preferred embodiment discloses a structure consistent with Zimmer’s
proposed claim construction. Contrary to Zimmer’s position, however, the Court concludes a person
of ordinary skill in the art, who at a minimum possesses “a bachelor’s degree in mechanical
engineering and 2-3 years of industry experience relating to the design of medical devices,” would
not be limited to this disclosed configuration. (docket # 79, Milroy Decl. ¶ 18.) Rather, a person
of ordinary skill in the art would define “switch assembly” as components that work together to
make, break or change an electric current.
The extrinsic evidence confirms this construction. A “switch” is commonly defined as “a
device for making, breaking, or changing an electric circuit.” CHAMBER’S CONCISE DICTIONARY
1081 (1991). Taken together with the definition of “assembly” discussed above, a person of ordinary
skill in the art would construe a “switch assembly” to mean “components that work together for
making, breaking, or changing an electrical circuit.” The Court concludes that this definition,
26
although expansive, conveys sufficient structure to be understood by one of ordinary skill in the art,
and would indeed be the definition a person of ordinary skill in the art would associate with “switch
assembly.”
Accordingly, the Court adopts Stryker’s proposed definition of the claim term.
10.
‘383 Patent, Claims 20 and 38: “switch member”
Claim Term
Stryker’s Proposed
Claim Construction
Zimmer’s Proposed
Claim Construction
‘383, cl. 20, col.23, l.66col.24, ln.4:
a control assembly
integral with said
housing, said control
assembly having a switch
member moveably
mounted to said housing
and said control
assembly being
configured to apply a
variable energization
signal from said battery
pack to said motor so as
to control the speed of
said motor and regulate
the pumping rate of said
pump.
A part for directing an electric
current (Jt. State., docket # 61.)
Electrically conductive contact
blade (Jt. State., docket # 61.)
‘383, cl. 38, col.26, l.1524:
a control assembly
attached to said housing .
. . said control assembly
having a single switch
member that is moveably
attached to said housing
that selectively
makes/breaks a
connection between said
27
at least one conductor
and said motor and that
establishes the potential
of the energization signal
supplied to said motor.
The parties disagree as to the construction of “switch member” in claims 20 and 38 of the
‘383 patent. Stryker proposes a broad construction, arguing that the “switch member” should be
construed to include any part that directs an electric current. (docket # 61.) Zimmer proposes a
much more limited definition, essentially seeking to limit “switch member” to an electric conductive
contact blade, such as the one disclosed in the preferred embodiment. (Id.) Neither party has
proposed a convincing construction for the term.
Stryker’s proposed definition is overly broad. While its construction would certainly
encompass the contact blade disclosed in the ‘383 specification, it would also include conductors,
motors, wires, and any other structure that is physically capable of “directing an electric current.”
A person would not have such a broad understanding of “switch member,” particularly as it is used
in the ‘383 patent. Stryker’s definition would improperly encompass various other claim limitations
(the conductors and electric motor, for example), rendering claim terms superfluous and the claim
itself nonsensical. In contrast, Zimmer’s definition is unduly restrictive, seeking to limit the “switch
member” to the type disclosed in the preferred embodiment—a conductive contact blade. A person
of ordinary skill in the art would not adopt such a limited definition. The contact blade 253 simply
serves to make, break, or otherwise change the electricity flow in the handpiece’s electrical circuit,
and a person of ordinary skill would construe the switch member as such.
Accordingly, the Court construes “switch member” as “a component for making, breaking,
or changing an electric circuit.” This construction is preferable, as it is consistent with the ‘383
28
patent as a whole. As discussed above, a person of ordinary skill in the art would understand
“switch” to mean “a device for making, breaking, or changing an electric circuit.” CHAMBER’S
CONCISE DICTIONARY 1081 (1991). In construing “switch assembly,” the Court adopted the
fundamental definition of “switch,” and sees no principled reason to depart from this definition here.
CONCLUSION
This Claim Construction Memorandum addresses only the limited patent terms the parties
selected for construction at this time, hoping this Court’s construction would facilitate framing and
resolution of the issues on dispositive motion practice or trial. The Court anticipates addressing any
further claims construction issues in the context of dispositive motion practice, and preparation of
the final pretrial order and jury instructions on any claims or defenses that go to trial.
IT IS SO ORDERED.
Dated:
February 1, 2012
/s/ Robert J. Jonker
ROBERT J. JONKER
UNITED STATES DISTRICT JUDGE
29
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