Albany Medical College v. Smiths Medical ASD, Inc.

Filing 45

MEMORANDUM-DECISION and ORDER - That Magistrate Judge David E. Peebles' July 9, 2014 40 Report and Recommendation is ADOPTED in its entirety; and it is further ORDERED that the following meanings shall be affixed to the patent claim terms in dispute: Disputed Term: A continuous circumferential notch extending outwardly in the first axial bore of the catheter hub. Construction: a continuous circumferential indentation in an edge or across an inner surface of the catheter hub extending o utwardly in the first axial bore of the catheter hub Disputed Term: An outward extending notch in a catheter hub. Construction: an outward extending indentation in an edge or across an inner surface of the catheter hub Disputed Term: Wherein the not ch is a continuous circumferential notch Construction: a continuous circumferential indentation in an edge or across an inner surface of the catheter hub Disputed Term: A notch extending outwardly in the first axial bore of the catheter hub Constru ction:an indentation in an edge or across an inner surface of the catheter hub extending outwardly in the first axial bore of the catheter hub Disputed Term: An outward extending notch in a catheter hub Construction:an outward extending indentation in an edge or across an inner surface of the catheter hub Disputed Term: A notch extending outwardly in said axial bore Construction: an indentation in an edge or across an inner surface of the catheter hub extending outwardly in the first axial b ore of the catheter hub Disputed Term: A notch extending outwardly in the axial bore Construction: an indentation in an edge or across an inner surface of the catheter hub extending outwardly in the first axial bore of the catheter hub Disputed Ter m: A notch therein (as used in both the 033 patent and the 206 patent) Construction: an indentation in an edge or across an inner surface of the catheter hub Disputed Term: A notch having a longitudinal length Construction: an indentation in an edge or across an inner surface of the catheter hub having a longitudinal length Disputed Term: Notch clip Construction: No further construction required Disputed Term: A notch clip joined with the needle cover Construction: No further construct ion required Disputed Term: The needle cover including a notch clip Construction: No further construction required Disputed Term: A needle cover having a notch clip (as used in both the 033 patent and the 206 patent) Construction: No further con struction required Disputed Term: A notch clip disposed in a catheter hub Construction: No further construction required Disputed Term: A needle cover having a notch clip, said notch clip comprising a resilient material Construction: No further con struction required Disputed Term: A needle cover having a notch clip and a first passageway extending therethrough for receiving said needle, said notch clip comprising a resilient material (as used in both the 033 patent and the 206 patent) Constr uction: No further construction required Disputed Term: A notch clip positionable to engage the notch of the catheter hub (as used in both the 206 patent and the 814 patent) Construction: No further construction required Disputed Term: Means for selectively maintaining a notch clip adjacent the needle Construction: Function: selectively maintaining a notch clip adjacent the needleStructures: notch, needle, needle cover, catheter hub Disputed Term: Resilient means cooperating with said nee dle for locking said needle cover to said catheter hub and for offering resistance from obstruction of said first passageway Construction: Function: cooperating with said needle for locking said needle cover to said catheter hub and offering resistance from obstruction of said first passagewayStructure: resilient notch clip. Signed by Chief Judge Gary L. Sharpe on 1/5/2015. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
ALBANY MEDICAL COLLEGE,
Plaintiff,

1:13-cv-108
(GLS/RFT)

v.
SMITHS MEDICAL ASD, INC.,
Defendant.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Heslin, Rothenberg Law Firm
5 Columbia Circle
Albany, NY 12203

NICHOLAS MESITI, ESQ.
BRETT M. HUTTON, ESQ.

FOR THE DEFENDANT:
Morgan, Lewis Law Firm
1111 Pennsylvania Avenue N.W.
Washington, DC 20004

J. KEVIN FEE, ESQ.

Gary L. Sharpe
Chief Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction
Plaintiff Albany Medical College (AMC) commenced this action
against defendant Smiths Medical ASD, Inc. for alleged infringement of four
of AMC’s patents involving the design and use of a safety intravenous

catheter assembly and method for use with a needle. (See generally Am.
Compl., Dkt. No. 7.) Following the parties’ request for the construction of
several disputed terms 1 in the four patents in suit, the court referred the
matter to Magistrate Judge David E. Peebles for a Markman2 hearing.
(Dkt. Nos. 22, 24, 26, 27.) After conducting a hearing on March 19, 2014,
and in a Report and Recommendation (R&R) filed July 9, 2014, Judge
Peebles recommended constructions for what the parties have labeled the
“notch-related terms,” the “notch clip-related terms,” and the “means
terms.” (Dkt. No. 40.) Pending are Smiths’ objections to the R&R. (Dkt.
No. 42.) Largely for the reasons articulated by Judge Peebles, and for the
reasons that follow, the R&R is adopted in its entirety.
II. Standard of Review
Before entering final judgment, this court reviews report and
recommendation orders in cases it has referred to a magistrate judge. If a

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As noted by Judge Peebles, this District’s local patent rules impose a limit of ten on
the number of terms that may be presented to the court for claim construction, absent prior
leave of court. (Dkt. No. 40 at 15 n.4 (citing N.D.N.Y. L.R. Proc. Pat. 4.4(b).) The parties here
instead sought construction of three groups of claims, totaling more than ten terms or phrases.
(Dkt. No. 22, Attach. 1.) Nevertheless, in the interest of justice, the court adopts the
recommendation of Judge Peebles, (Dkt. No. 40 at 15 n.4), and will permit the parties’
submissions here.
2

See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d 517
U.S. 370 (1996).

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party properly objects to a specific element of the magistrate judge’s
findings and recommendations, this court reviews those findings and
recommendations de novo. See Almonte v. N.Y. State Div. of Parole, No.
Civ. 904CV484GLS, 2006 WL 149049, at *3, *5 (N.D.N.Y. Jan. 18, 2006).
In those cases where no party has filed an objection, only vague or general
objections are made, or a party resubmits the same papers and arguments
already considered by the magistrate judge, this court reviews the findings
and recommendations of the magistrate judge for clear error. See id. at *45.
III. Discussion
Smiths has filed objections to Judge Peebles’ recommendations as to
each group of disputed terms. 3 (Dkt. No. 42 at 3-11.) In response to
Smiths’ objections, AMC argues that Judge Peebles’ recommendations
were appropriate and should be adopted by this court. (Dkt. No. 43 at 3-9.)
The court will address each of the term groupings, and the respective
recommended constructions to which Smiths has objected, below.

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In its objections, Smiths indicates that it also “moves for reconsideration” of the R&R.
(Dkt. No. 42 at 1.) However, it is clear from its submission that Smiths has filed proper
objections to the R&R, and has not argued any of the applicable bases for a motion for
reconsideration. See Johnson v. Lynn-Caron, No. 9:11-CV-0386, 2012 WL 3888175, at *4
(N.D.N.Y. Sept. 7, 2012). As such, to the extent Smiths seeks reconsideration of the
recommendations in the R&R, such a request is inappropriate and denied.

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A.

Notch-Related Terms
Smiths has objected to Judge Peebles’ recommended constructions

of the notch-related terms, arguing that its “proposed construction requiring
the notch to be a ‘cut-out’ does not introduce a process limitation into the
implicated claims nor does it limit the manner in which the notch may be
formed,” and therefore “notch” should be construed to be a “cut-out.” (Dkt.
No. 42 at 8-10.) This is contrary to Judge Peebles’ recommended
construction that “‘notch’ be given its ordinary and customary meaning, and
construed . . . as ‘an indentation in an edge or across an inner surface of
the catheter hub.’” (Dkt. No. 40 at 20.) Smiths also argues that Judge
Peebles erred in not construing “notch” to have any particular shape,
despite its contention that a circumferential notch should be limited to the
shape of a semi-circle. (Dkt. No. 42 at 10-11.)
Both arguments were directly raised by Smiths before the magistrate
judge both in its claim construction briefing, (Dkt. No. 27 at 6-8; Dkt. No. 39
at 3-5), and at the Markman hearing, (Dkt. No. 44 at 39-49), and are ones
that Judge Peebles considered when making his recommendations. These
arguments thus merit only a clear error review. See Almonte, 2006 WL
149049, at *4. After reviewing Judge Peebles’ recommended
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constructions of the notch-related terms for clear error, the court has found
none, and adopts the recommended constructions. With respect to Smiths’
argument that the term “notch” should include language to the effect that it
is a “cutout,” it claims, as it did during the Markman hearing, that it is not
attempting to “import a process into the claim construction” by defining
“notch” as a “cutout.” (Dkt. No. 44 at 39-40.) However, as Judge Peebles
noted, utilizing Smiths’ proposed claim construction, although it does not
explicitly reference the process by which the “notch” is formed, would
purport to imply, or at least suggest, that a “notch” is limited to that which
results from the act of cutting out material, a limitation which Judge
Peebles found was not supported by the intrinsic or extrinsic evidence of
record. (Dkt. No. 40 at 18-20.) As stated in the R&R, “it is not proper to
read a process limitation in an apparatus claim when no such limitation is
presented by the patent claims, patent specification, or prosecution
history.” (Id. at 19 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512
F.3d 1338, 1344 (Fed. Cir. 2008).)
Smiths further argues that the R&R “appears to misstate [its] position”
when it references Smiths’ argument that the shape of the notch is limited
to a semi-circle only, because Smiths is in fact only arguing that
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circumferential notches are semi-circle shaped, not all notches. (Dkt. No.
42 at 9-11.) However, after noting that there was no intrinsic evidence
“suggest[ing that] the inventors intended to limit the shape of the notch
specified to a semi-circle,” (Dkt. No. 40 at 22), and thus refusing to limit the
construction of the term “notch” to a semi-circle only, Judge Peebles
continued his discussion, and indicated that the addition of the word
“circumferential” did not impose the semi-circle-only limitation sought by
Smiths, (id. at 23-26). Rather, it referred to the notch’s continuing “fully
around the inner portion of the catheter hub,” and not to the particular
shape of the notch. (Id. at 23-26.) Accordingly, the court finds that this
recommendation is not clearly erroneous, and adopts it.
B.

Notch Clip-Related Terms
As to the notch clip-related terms, and in particular, the relationship

between the “notch clip” and the “needle cover,” Judge Peebles
recommended that no further construction is required, as the terms utilized
in the patents’ language to describe their interrelationship, for example
“including,” “having,” “joined with,” and “disposed in,” were commonly
understood terms. (Dkt. No. 42 at 28-33 & at 31 n.6.) In doing so, he
recommended rejecting Smiths’ proposed constructions, which purport to
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“require that the notch clip be attached to the needle cover by a resilient
arm.” (Id. at 33.) Smiths objects to this recommendation, simply stating
that the parties dispute the construction of these terms, and that the terms
require construction by the court because they remain ambiguous. (Dkt.
No. 42 at 5-8.)
When faced with “an actual dispute regarding the proper scope” of a
patent claim, the court must construe the allegedly infringed claim to
determine its meaning and scope. O2 Micro Int’l Ltd. v. Beyond Innovation
Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008). In so doing, the
court is cognizant that unless the patentee “acts as his own lexicographer”
or “disavows the full scope of a claim term either in the specification or
during prosecution,” the words of a claim are “given their plain and ordinary
meaning [as understood by] one of skill in the art.” See Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1365-67 (Fed. Cir. 2012).
When “the meaning of a claim term as understood by persons of skill in the
art is not readily apparent,” the court must construe the disputed claim
terms in order to resolve such disputes. O2 Micro, 521 F.3d at 1360.
Here, as discussed in the R&R, these terms are not “complex or
difficult to understand in the context of the [patent] claims and the
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specification,” and therefore require no further construction. (Dkt. No. 40 at
28-33 (citing, inter alia, Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
Cir. 2005).) Additionally, “[n]othing in the [intrinsic evidence] reflect[s] an
intent on the part of the inventors to limit their invention to a notch clip
attached to the needle cover by a resilient arm,” as Smiths advocates,
making its proposed construction “inappropriate.” (Id. at 31-32.)
Accordingly, the court adopts the recommended constructions of these
terms.
C.

Means Terms
Lastly, with respect to the “means” terms, Smiths argues that the

recommended constructions “impermissibly broaden[ ] the scope” of the
relevant terms by defining the “resilient means” term as simply a “notch
clip,” as this permits a notch clip to be joined to the needle cover by a nonresilient arm, while Smiths contends that the term only encompasses the
use of a resilient arm. (Dkt. No. 42 at 3-5.) This argument significantly
overlaps with Smiths’ argument with respect to the notch clip-related terms,
and, as discussed by Judge Peebles, (Dkt. No. 40 at 33-43), and by this
court above, supra Part III.B., the evidence of record does not support
limiting the construction of “notch clip” to only that which utilizes a resilient
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arm.4 Accordingly, for the same reasons discussed above, the court
adopts the recommended constructions of the means terms. Having
reviewed the remainder of Judge Peebles’ R&R for clear error, and finding
none, and for the reasons outlined in the sections above, the court accepts
and adopts Judge Peebles’ claim construction R&R in its entirety.
IV. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that Magistrate Judge David E. Peebles’ July 9, 2014
Report and Recommendation (Dkt. No. 40) is ADOPTED in its entirety; and
it is further
ORDERED that the following meanings shall be affixed to the patent
claim terms in dispute:
Disputed Term

Construction

A continuous circumferential notch
extending outwardly in the first axial
bore of the catheter hub

“a continuous circumferential
indentation in an edge or across
an inner surface of the catheter
hub extending outwardly in the

4

In its response to Smiths’ objections, particularly Smiths’ argument that “the disputed
term expressly requires a ‘resilient means cooperating with said needle for locking,’” (Dkt. No.
42 at 3 (quoting Dkt. No. 40 at 43)), AMC notes that, “[f]or clarification purposes,” it “would not
object to . . . clarifying the construction of the corresponding structure of the ‘resilient means’ to
be a ‘resilient notch clip.’” (Dkt. No. 43 at 4.) While the parties’ dispute centers on whether or
not the notch clip must contain a resilient arm, they nonetheless appear to agree that the notch
clip must be resilient, and the court has therefore included this in its construction.

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first axial bore of the catheter hub”
An outward extending notch in a
catheter hub

“an outward extending indentation
in an edge or across an inner
surface of the catheter hub”

Wherein the notch is a continuous
circumferential notch

“a continuous circumferential
indentation in an edge or across
an inner surface of the catheter
hub”

A notch extending outwardly in the
first axial bore of the catheter hub

“an indentation in an edge or
across an inner surface of the
catheter hub extending outwardly
in the first axial bore of the
catheter hub”

An outward extending notch in a
catheter hub

“an outward extending indentation
in an edge or across an inner
surface of the catheter hub”

A notch extending outwardly in
said axial bore

“an indentation in an edge or
across an inner surface of the
catheter hub extending outwardly
in the first axial bore of the
catheter hub”

A notch extending outwardly in the
axial bore

“an indentation in an edge or
across an inner surface of the
catheter hub extending outwardly
in the first axial bore of the
catheter hub”

A notch therein (as used in both
the ‘033 patent and the ‘206
patent)

“an indentation in an edge or
across an inner surface of the
catheter hub”

10

A notch having a longitudinal
length

“an indentation in an edge or
across an inner surface of the
catheter hub having a longitudinal
length”

Notch clip

No further construction required

A notch clip joined with the needle
cover

No further construction required

The needle cover including a
notch clip

No further construction required

A needle cover having a notch clip
(as used in both the ‘033 patent
and the ‘206 patent)

No further construction required

A notch clip disposed in a catheter
hub

No further construction required

A needle cover having a notch
clip, said notch clip comprising a
resilient material

No further construction required

A needle cover having a notch clip
and a first passageway extending
therethrough for receiving said
needle, said notch clip comprising
a resilient material (as used in
both the ‘033 patent and the ‘206
patent)

No further construction required

A notch clip positionable to
engage the notch of the catheter
hub (as used in both the ‘206
patent and the ‘814 patent)

No further construction required

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Means for selectively maintaining
a notch clip adjacent the needle

Function: “selectively maintaining
a notch clip adjacent the needle”
Structures: notch, needle, needle
cover, catheter hub

Resilient means cooperating with
said needle for locking said needle
cover to said catheter hub and for
offering resistance from
obstruction of said first
passageway

Function: “cooperating with said
needle for locking said needle
cover to said catheter hub and
offering resistance from
obstruction of said first
passageway”
Structure: resilient notch clip

ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
January 5, 2015
Albany, New York

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