Merz North America, Inc. v. Cytophil, Inc.

Filing 276

ORDER adopting 249 Memorandum and Recommendation. The court adopts the recommendation of the magistrate judge as its own and construes the claims as indicated in the Memorandum and Recommendation. Signed by Senior Judge Malcolm J. Howard on 2/6/2019. (Rudd, D.)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
WESTERN DIVISION

MERZ NORTH AMERICA , INC .,
Plaintiff ,

v.

NO .: 5 : 15 - CV- 262 -H- KS

CYTOPHIL , INC . d/b/a
REGENSCIENTIFIC ,
Defendant .

CYTOPHIL , INC
NO .: 5 : 16 - CV - 745 - H- KS
Plaintiff ,

v.
MERZ NORTH AMERICA , INC .,
Defendant .

ORDER

This consolidated action is before the court for construction
of certain claims involved in U. S .
Patent " ) .
Judge

6 , 537 , 574

('" 574

This matter was referred to United States Magistrate

Kimberly

recommendation
hearing was

Patent No .

A.

Swank

(" M&R")

for

of

pursuant to 28 U. S . C .

held and the parties

following the hearing.

entry

a

memorandum

§

636(b) (1) (B) .

and
A

submitted additional briefing

Judge Swank filed an M&R ,

recommending

that an order be entered constructing ,

for purposes of claims 1

and 25 of the ' 574 patent , the disputed claim terms as follows :
•

"Rounded " -lacking jagged , sharp , or angular edges

•

"Substantially

spherical "-most

of

the

particles

are

sphere-like or spheroidal
•

"Substantially

non - resorbable " -although

some

dissolution of the augmentation material may take place
over time ,

it is sufficiently slow so as to allow f o r

replacement with growing tissue cells.
Ctyophil objected to the M&R [DE #254} and Merz responded to
the objections .

[DE #255] .

to file a reply brief ,
also

filed

Decided

a

Notice

Authority.

The court allowed Cytophil ' s request

which Cytophil did

of
[DE

Suggestion

# 2 7 5] .

of

These

[DE # 263] .

Merz has

Subsequently Co ntrolling
issues

are

ripe

for

adjudication.
Under Rule 72(b)

of the Federal Rules of Civil Procedure , a

district judge " must determine de novo any part of the magistrate
judge ' s disposition that has been properly objected to ."

Fed . R.

Civ . P. 72 (b) (3) .
Cytophil objects to the construction of each term as follows:

2

1. Rounded

Cytophil objects to the M&R ' s construction of the term rounded
to the extent it suggests that not all of the particles must be
rounded .

[DE #254 at 10] .

Further , Cytophil asserts that " the

M&R errs by failing to exclude other shape characteristics which
the

intrinsic

' rounded '

11

construction

record

shows

[DE #254 at 12] .
of

without merit .

rounded

to

be

contrary

to

the

meaning

of

The court has carefully reviewed the

and

finds

Cytophil ' s

objection

to

be

The construction in the M&R is well-reasoned and

the court hereby adopts it.
2 . Substantially Spherical

Cytophil objects to the M&R ' s proposed construction of the
claim term " substantially spherical
used definitionally in the patent ,

11

arguing

it

confuses

terms

is indefinite , and because it

excluded the D- ratio disclosed definitionally by the applicant in
the

prosecution

history

as

a

method

of

measurement

usable

to

objectively discern the distinction between particles sufficiently
and insufficiently spheroidal for use in the claimed method .
The court agrees with Merz that this objection is vague .

The

court finds there is no issue of indefiniteness , but rather that
substantially is a term of degree.
regarding " D-ra ti os

11

Finally , Cytophil ' s argument

was already addressed properly in the M&R.

3

This objection is without merit for the reasons stated in Merz ' s
response .
3.

Substantially Non-Resorbable

Cytophil does not object to this recommended construction to
the extent that it reflects the fact t h at the patent allows that
"some " amount of the claimed particle matrix " may " be resorbed ,
and such amount is only a small fraction of the claimed particle
matrix .

However , Cytophi l contends the M&R ' s construction is vague

on this critical matter and the reasoning proposed in connection
with this matter is inaccurate and contradicts the intrinsic record
of the ' 574 patent .
In this case , the ' 574 Patent specification expressly defines
the term at issue .
Further ,
define

Therefore , Judge Swank adopted that definition .

it is unclear how exactly Cytophil wants this court to
the

conclusion

term
in

and

light

specification itself .

how

it

of

could

the

reach

definition

another
wit h in

reasonable
the

patent

For this reason , and for reasons detailed

in the response to the objections

[DE #255] ,

this objection is

without merit .
CONCLUSION

A full and careful review of the M&R and other documents of
record

convinces

the

court

that

4

the

recomme n dation

of

the

magistrate judge is ,
and

should

be

in all respects ,

approved .

in accordance with the law

Accordingly ,

the

court

adopts

the

recommendation of the magistrate judge as its own and construes
the claims as indicated in the M&R .
This

l

~
day of February 2019.

Malcolm J .
ward
Senior United States
At Greenville , NC
#26

5

istrict Judge