Ethicon Endo-Surgery, Inc. v. Covidien, Inc.

Filing 81

ORDER ON CLAIM CONSTRUCTION. Signed by Judge Timothy S. Black on 4/25/2013. (mr1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION
ETHICON ENDO-SURGERY, INC, et al., :
:
Plaintiffs,
:
:
vs.
:
:
COVIDIEN, INC., et al.,
:
:
Defendants.
:

Case No. 1:11-cv-871
Judge Timothy S. Black

ORDER ON CLAIM CONSTRUCTION
The parties have submitted briefs in support of their proposed claim constructions.
(Docs. 66, 67, 74, and 75). Additionally, the Court held a Markman hearing on April 12,
2013.
I. THE PATENTS AT ISSUE
A.

The ‘055 Patent

The ‘055 patent, filed in 1993, relates to an ultrasonic surgical device that includes
a clamp for pushing body tissues towards an ultrasonic blade, thus allowing the tissue to
be cut and/or coagulated during surgical procedures. The clamping mechanisms claimed
in the ‘055 patent give the surgeon direct control over how much to open and close the
clamp in order to produce the desired surgical results. The ‘055 patent overcame
shortcomings associated with prior art systems without clamps. The prior art systems
required the surgeon to press the blade directly against the tissue with sufficient pressure

to achieve the desired surgical result, and made it difficult for surgeons to grasp tissue.
(Doc. 65-3 at 11). Today, the use of surgeon controlled clamps built into in ultrasonic
surgical cutting devices is widespread.
B.

The ‘275 Patent

The ‘275 patent, filed in 1997, relates to components for damping (i.e., reducing)
undesired vibrations that occur during the operation of ultrasonic cutting devices. When
operated, the devices generate ultrasonic vibrations traveling in many directions. Only
some of the vibrations are desirable, specifically axial or longitudinal vibrations (e.g.,
vibrations that move directly forward and backward towards the surgical blade). (Doc.
64-5 at 10). The undesirable vibrations lead to non-optimal performance and potential
damage to the device. (Id.)
Prior to the ‘275 patent, various methods had been used to reduce undesirable
vibrations, including O-rings mounted within the device and damping fluids. (Id.) The
prior art methods have limitations and drawbacks, including generating too much heat
and being inconvenient or impractical. (Id.) The ‘275 patent improves on the prior art by
using a damping member that surrounds a portion of the transmission rod within the
device, allowing the desirable vibrations to move to the blade while reducing the
undesired vibrations. (Id.) The damping member of the ‘275 patent works without the
use of fluid and without other drawbacks associated with the prior art. (Id.)

2

C.

The ‘569 Patent

The ‘569 patent, filed in 1997, relates to power generation within ultrasonic
surgical devices. More specifically, the patent relates to an electrical system for ensuring
that the generator is maintained in an optimal state during system operation. As noted
above, the generator supplies power to a transducer which, in turn, produces the
ultrasonic vibrations. The generator needs to operate in an optimal state for the overall
device to work in its intended, optimal manner. During device operation, there are a
number of factors (including temperature and environmental conditions) that might cause
the generator to operate in a suboptimal manner. (Doc. 65-18 at 10). The ‘275 patent
discloses a generator that includes circuitry to detect a suboptimal state and take
corrective action to return the system to an optimal state. (Id.)
D.

The ‘501 Patent

The ‘501 patent, with a priority date of February 2004, relates to devices and
methods for sealing blood vessels using ultrasonic surgical cutting devices. More
specifically, the patent relates to the optimal amount of clamping pressure that should be
used during surgical procedures to seal blood vessels. Prior art methods and devices
typically used low clamping forces (approx. 1.5 pounds), corresponding to low clamping
pressures (approx. 45 psi (pounds per square inch)), to cut and seal blood vessels. (Doc.
64-5 at 7). The conventional thought was that using higher clamping forces would lead
to a degradation in coagulation performance (i.e., the seal on the end of the coagulated
3

blood vessel would be weaker and more susceptible to bursting open). (Id.) Defying
conventional wisdom, Plaintiffs discovered that the use of higher clamping forces (2 to 7
pounds), corresponding to clamping higher pressures (60 to 210 psi), actually resulted in
superior performance. (Id.) The ‘501 patent claims Plaintiffs’ novel method of using the
higher clamping forces/pressures and devices capable of operating at such
forces/pressures.
II.

THE CLAIM TERMS AT ISSUE
The claim terms at issue in the ‘055 Patent are (1) “means for selectively

displacing said clamp toward and away from said blade,” (2) “means extending along
said tube and operable from said housing for displacing said clamp toward and away
from said blade,” (3) “means for pivoting said clamp toward and away from said blade,”
(4) “means for pivoting said clamp toward and away from said blade,” and (5) “means for
isolating the ultrasonic vibration transmitted from said ultrasonic element along said
extender to said blade from said tube including means engageable between said tube and
said extender.”
The claim term at issue in the ‘725 Patent is “configured to loosely contact.”
The claim terms at issue in the ‘569 Patent are (1) “detector circuitry to detect a
non-resonant condition of the phase lock loop” and (2) “an input signal to the phase lock
loop of a desired condition.”

4

The claim terms at issue in the ‘501 Patent are (1) “means for limiting a user
applied clamping force,” (2) “limiting the clamping art to exert between 60 psi and 210
psi on the blood vessel,” (3) “clamp(ing) [pressure/force] [of/between and including] . . .
a value,” and (4) “average coaptation pressure . . . between and including . . . a value.”
III.

STANDARD OF REVIEW
Claim construction is a matter of law to be decided exclusively by the court.

Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc),
aff’d, 517 U.S. 370.
“The appropriate starting point [...] is always with the language of the asserted
claim itself.” Comark Comm, Inv. v. Harris Corp., 156 F.3d 1186 (Fed. Cir. 1998).
“[T]he claims of a patent define the invention to which the patentee is entitled the right to
exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004).
Claim terms are “generally given their ordinary and customary meaning.” Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “The ordinary and customary
meaning of a claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective date of the
patent application.” Id. at 1313.
In the event of ambiguity regarding claim terms, courts must first look to the
intrinsic evidence (i.e., the claim itself, the specifications, the prosecution history, and
5

prior art cited in the patent) to resolve any ambiguities. Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
“The specification is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”
Id. Indeed, “[w]hen the specification explains and defines a term used in the claims,
without ambiguity or incompleteness, there is no need to search further for the meaning
of the term.” Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1478 (Fed. Cir.
1998).
The court may also consider “the prosecution history of the patent, if in evidence.”
Vitronics, 90 F.3d at 1582. The prosecution history limits the interpretation of claim
terms so as to exclude any interpretation that was disclaimed during prosecution.
Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).
In most circumstances, analysis of the intrinsic evidence alone will resolve claim
construction disputes. See Vitronics, 90 F.3d at 1583. However, if the intrinsic evidence
does not resolve ambiguities, extrinsic evidence may be considered. Extrinsic evidence
“can shed light on the relevant art,’ but is less significant than the intrinsic record in
determining the ‘legally operative meaning of disputed claim language.’” C.R. Bard, Inc.
v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting
Vanderlande Indus. Nederland BV v. Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed. Cir.
2004)).
6

IV.

THE COURT’S CONSTRUCTION OF THE CLAIMS
A.

Joint Claim Constructions

The Court adopts the joint claim constructions proposed by the parties in the
Agreed Upon Claim Constructions charts found in Doc. 64-1 at 1-5.
B.

The Disputed Terms
1.

The ‘055 Patent
i.

“means for selectively displacing said claim toward and
away from said blade”

Ethicon’s proposed construction
112 ¶6 Structure

Covidien’s proposed construction
112 ¶6 Structure

Scissors-like gripping handles or grips,
with thumb and finger grips, that, when
squeezed, engage an actuator to move the
clamp jaw toward the clamp-closed
position and into engagement with the
blade. When the grips are separated, the
clamp jaw is moved away from the blade.
Equivalents are also included.

Actuator rod and single distal pin in hole of
clamp jaw - displaced forwardly to move
clamp toward blade by pivoting thumb grip
toward finger grip about pin to cause link
to pivot ring in a clockwise direction about
pivot pins to advance rod and thereby
pivoting clamp towards blade about pivot
pin – displaced rearwardly to move clamp
away from the blade by pivoting thumb
grip in the opposite direction to rotate ring
about pivot pins in a counterclockwise
direction to retract rod, thereby pivoting
clamp away from blade about pivot pin.

The parties agree that this is a means-plus-function element governed by 35
U.S.C. § 112 ¶6 and agree that the function is “to selectively displace the clamp toward
and away from the blade.” (Doc. 66 at 9; Doc. 67 at 17).

7

Plaintiffs argue that their proposed structure is identified in the specification and
clearly linked with the function of selectively displacing the clamp toward and away from
the blade, as the specification uses language similar to what Plaintiffs propose in
describing the type of structure used to displace the clamp. (Id. at 14). Plaintiffs argue
that Defendants’ proposed construction is a “subset” of Plaintiffs’ proposed construction
and is incorrect because it ignores the broader configuration represented in the
specification. (Id.)
Defendants urge that Plaintiffs’ argument that the corresponding structure is
limited to the thumb grip and actuator rod because the patent on occasion refers to these
structures without mentioning the distal pin, pivot pins, link and pivot ring is flawed
because the only embodiment showing the use of the thumb grip and actuator rod for
“selectively displacing the clamp” discloses a direct connection to the distal pin along
with the pivot pins, link and pivot ring and shows why they are necessary for the claimed
function. (Doc. 74 at 8). Defendants point out that the thumb grips and an actuator rod
alone cannot perform the clamp displacing function as, without the distal pin, the clamp
would not even be connected to either the scissor grips or the actuator rod. (Id. at 6-7).
According to Defendants, the pivot pins, link, and pivot ring are all integral to performing
the selectively displacing function and thus must be included in the corresponding
structure. (Id. at 7).

8

The Court agrees with Defendants that the actuator rod and distal pin along with
the pivot pins, link and pivot ring are required corresponding structure. “If a patentee
chooses to disclose a single embodiment, then any means-plus-function claim limitation
will be limited to the single disclosed structure and equivalents thereof.” Mettler-Toledo,
Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1296 (Fed. Cir. 2012). The Federal Circuit has
consistently required the inclusion of structures that are necessary to perform the claimed
function. Gemstar–TV Guide Int’l., Inc. v. Int’l Trade Comm'n, 383 F.3d 1352, 1363
(Fed.Cir.2004); see also IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1431
(Fed Cir. 2000) (because interface means required transferring data to a tape cassette and
receiving data from the RAM through the PIA, the tape cassette and the PIA must be
included within the means for interfacing corresponding structure); Engineered Prods.
Co. v. Donaldson Co., Inc., 147 Fed. Appx. 979, 985 (Fed. Cir. 2005) (unpublished) (“the
district court construed ‘means for selectively disengaging’ too broadly by not identifying
all of the structure necessary to perform the stated function”; the corresponding structure
could not be as broad as just pushing the button that initiated the disengagement process
but must also include the flange and bottom wall “that actually causes the interengagable
notches to disengage”). In the ‘055 patent, to accomplish the function of selectively
displacing the clamp toward and away from the blade, the specification discloses that the
actuator rod and the single distal pin in conjunction with thumb grip, link, pivot ring and
pivot pins, are all necessary to move the clamp toward and away from the blade.
9

Therefore, the Court adopts Defendants’ construction, which properly includes all
of the integral structures for this claim term.
ii.

“means extending along said tube and operable from said
housing for displacing said clamp toward and away from
said blade”

Ethicon’s proposed construction
112 ¶6 Structure

Covidien’s proposed construction
112 ¶6 Structure

An actuator operable from the housing that
moves the clamp jaw toward and away
from the blade, and equivalents.

Actuator rod with single distal pin as
incorporated in the means for selectively
displacing the clamp toward and away from
the blade, where actuator rod extends along
the length of tube and is operable from
housing.

The parties agree that this is a means-plus-function element governed by 35
U.S.C. § 112 ¶6 and agree that the function is “displacing the clamp toward and away
from the blade.” (Doc. 66 at 11; Doc. 67 at 19).
Plaintiffs argue that their proposed construction is supported by the same section
of the specification they cite in support of their construction of the prior term in Section
IV.B.1.i, supra. Plaintiffs argue that the specification clearly identifies the actuator as the
element to displace the clamp toward and away from the blade and that Defendants’
construction is an overly-narrow subset of Plaintiffs’ proposed construction. (Doc. 67 at
15-16).
Defendants argue that their construction of the structure properly reflects the
structures disclosed in the ‘055 patent for performing the claimed function. (Doc. 66 at
10

7). They argue that Plaintiffs’ construction would improperly broaden the claim element
and permit any structure connecting any actuator to a clamp to be encompassed, but that
the specification only provides one structure – the single distal pin connecting the
actuator rod.
As with the previous term, all of the structure necessary to perform a claimed
function must be included with regard to a means-plus-function term. See Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). The Court
agrees with Defendants that Plaintiffs’ proposed construction omits necessary structure.
Plaintiffs’ construction improperly recites any “actuator” and omits the necessary distal
pin.
Accordingly, the Court adopts Defendants’ construction because it comports with
the corresponding structures disclosed by the ‘055 patent specification in keeping with
the applicable means-plus-function law.
iii.

“means for pivoting said clamp toward and away from said
blade”

Ethicon’s proposed construction
112 ¶6 Structure

Covidien’s proposed construction
112 ¶6 Structure

Scissors-like gripping handles or grips,
with thumb and finger grips, that, when
squeezed, engages an actuator to pivot the
clamp jaw toward the clamp-closed
position and into engagement with the
blade. When the grips are separated, the
clamp jaw is pivoted away from the blade.
Equivalents are also included.

Actuator rod with single distal pin movable
forwardly to engage clamp jaw at pin joint
and pivot jaw about pivot pin in a
clockwise direction to close the jaw and
actuator rod and pin in pin joint engaging
clamp jaw as moved rearwardly to pivot
jaw about pivot pin in a counterclockwise
direction to open the jaw.
11

The parties agree that this is a means-plus-function element governed by 35
U.S.C. § 112 ¶6 and agree that the function is “to pivot the jaw (clamp) between the open
and closed positions.” (Doc. 66 at 12; Doc. 67 at 20).
Plaintiffs advance the same evidence and arguments in favor of a broader
construction that they cited in support of their constructions of the previous two claim
terms, arguing that Defendants’ proposed construction is an overly-narrow subset of
Plaintiffs’ proposed construction. (Doc. 67 at 20-21).
Defendants again argue that their proposed construction accurately reflects the
structure and thus comports with the requirements of 35 U.S.C. § 112 ¶ 6. Defendants’
construction includes the actuator rod with the single distal pin to engage the clamp of the
jaw and pivot it about a pivot pin to close the jaw. By contrast, Plaintiffs’ construction
does not provide any corresponding structure for the pivoting function and includes only
the gripping handles and an actuator. Defendants urge that this fails (1) because the
gripping handles are not linked to the pivoting function described in the specification, (2)
because the patent identifies only an actuator rod (not any actuator) as part of the pivoting
mechanism, and (3) because the specification identifies additional structures essential for
the pivoting function, namely the distal pin to engage the clamp of the jaw and pivot it
around a pivot pin to close the jaw. (Doc. 66 at 13); see Chicago Bd. Options Exchange,
Inc. v. Int’l Sec. Exchange, LLC, 677 F.3d 1293, 1367 (Fed. Cir. 2012); Frank’s Casing
Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 398 F.3d 1370, 1377-78 (Fed. Cir.
12

2004). The Court agrees with Defendants that the additional elements included in their
proposed construction are necessary to perform the recited function and thus must be
included in the Court’s construction.
Accordingly, the Court adopts Defendants’ construction of this claim term as well,
because it properly includes the actuator rod, single distal pin, and pivot pin for the
corresponding structure to the pivoting means.
iv.

“means for isolating the ultrasonic vibration transmitted
from said ultrasonic element along said extender to said
blade from said tube including means engageable between
said tube and said extender”

Ethicon’s proposed construction
112 ¶6 Function

Covidien’s proposed construction
112 ¶6 Function

To isolate the ultrasonic vibration
transmitted from the ultrasonic element
along the extender to the blade from the
tube extending about and radially spaced
from the extender.

To minimize or eliminate dissipation of the
ultrasonic longitudinal vibration of the
extender by contact with the tube.

The parties agree that this is a means-plus-function element governed by 35
U.S.C. § 112 ¶6 and agree that the structure is “a plurality of longitudinally spaced rings
located at the node points of the extender.” (Doc. 66 at 14; Doc. 67 at 21).
Plaintiffs argue that they have proposed the only construction that gives force to
the entirety of the claim because it is taken from the claim language itself, and identify
the claim language as the most important source in construing a claim. (Doc. 67 at 2223); see Becton, Dickinson & Co. v. Tyco Healthcare Grp., 616 F.3d 1249, 1254 (Fed.
13

Cir. 2010). Plaintiffs argue that Defendants propose a construction based on cobbling
together language in the claim with additional terms that do not appear in it. (Id. at 22).
Defendants argue that Plaintiffs’ proposed construction impermissibly broadens
the scope in violation of 35 U.S.C. § 112 by omitting the contact with the tube when the
specification states that the rings minimize or dissipate ultrasonic vibration “by contact
with the tube.” (Doc. 66 at 14). The Court agrees that the construction cannot include a
corresponding function that would not contemplate contact with the tube.
Accordingly, because Plaintiffs’ proposed construction neglects to include both
contact with the tube and minimizing or eliminating dissipation of the ultrasonic
longitudinal vibration of the extender as disclosed in the claim and specification, the
Court adopts Defendants’ more complete (and hence accurate) proposed construction.
2.

The ‘275 Patent
i.

“configured to loosely contact”

Ethicon’s proposed construction
Contacting or capable of contacting
portions of the transmission rod, but not
tightly fitted.

Covidien’s proposed construction
Structured to have contact other than at
fixed support points, but not tightly fitted.

The parties’ disagreement regarding the term “configured to loosely contact”
focuses on where the damping sheath contacts the transmission rod and whether it is
structured to contact or is simply “capable of contacting” the transmission rod. (Doc. 66
at 15). The primary difference between the proposed constructions is the concept of
“fixed support points” in Defendants’ construction. (Doc. 75 at 4).
14

Plaintiffs argue that their proposal tracks the claim language, which makes it clear
that the damping member only needs to be configured to loosely contact a portion of the
transmission rod. (Doc. 67 at 24). Plaintiffs claim that Defendants propose to add a
limitation, requiring that to “loosely contact” be “contact other than at fixed support
points,” that does not appear in the claim. (Id.)
Defendants argue that their construction is guided by the ’275 patent specification
which differentiates between two types of contact, only one of which corresponds to
“configured to loosely contact.” (Doc. 66 at 15). Defendants urge that Plaintiffs’
construction is inconsistent with the patent’s description because it neglects to distinguish
loose contact from the contact at fixed points. (Id.) Defendants further argue that
Plaintiffs’ construction would include embodiments where the damping sheath need not
be specifically structured for contact with the transmission rod, but that the specification
in fact indicates actual contact. (Id.)
The Court agrees with Defendants that their proposed construction is appropriately
consistent with the patent specification by distinguishing loose contact from attachment
at fixed support members, and tracks the claim language by making clear that the
damping member makes actual contact with the transmission rod.
Accordingly, the Court adopts Defendants’ proposed construction as Plaintiff’s
proposed construction is, again, inappropriately broad.

15

3.

The ‘569 Patent
i.

“detector circuitry to detect a non-resonant condition of the
phase lock loop”

Ethicon’s proposed construction
Supervisory circuitry to detect if there is a
nonresonant condition of the phase lock
loop.

Covidien’s proposed construction
Supervisory circuitry outside the phase lock
loop and separate from the processing unit
that monitors and determines if the phase
lock loop fails to maintain a resonant
condition.

As with previous terms, Plaintiffs argue that their construction is appropriate
because it directly follows the claim language. (Doc. 67 at 25). Plaintiffs argue that
Defendants, on the other hand, add two restrictions that are not supported by the claim
language or by the intrinsic record: that the supervisory circuitry must be outside of the
phase lock loop (“PLL”) and that it must be separate from the processing unit. (Id.)
Defendants argue that Plaintiffs’ construction omits key distinctions made by the
patent and the prosecution history in distinguishing the patent’s circuitry from the prior
art PLL. Defendants argue that Plaintiffs’ construction improperly suggests that the
detector circuitry could be the internal circuitry inherent in any PLL that detects if the
PLL is in a nonresonant condition, when the ‘569 patent specification makes it clear that
the detector circuitry is, in fact, separate and distinct from the prior art PLL. (Doc. 74 at
24). As the claim language indicates that the detector circuitry is separate from the
processing unit (“a processing unit coupled to detector circuitry”) and the patent
specification places the claimed detector circuitry outside of the PLL, the Court agrees
16

that Plaintiffs’ proposed construction inappropriately conflates the prior art with the new
technology disclosed by the ‘569 patent. (Doc. 66 at 13).
Accordingly, the Court adopts Defendants’ proposed construction as it properly
incorporates the distinction the patentee made between the claimed invention and the
prior art.
ii.

“an input signal to the phase lock loop of a desired
condition”

Ethicon’s proposed construction
An input signal to the phase lock loop to
cause the phase lock loop to reach a
resonant condition.

Covidien’s proposed construction
An override voltage control signal to the
voltage controlled oscillator of the phase
lock loop corresponding to a last known or
most recently stored resonant frequency.

Defendants argue that Plaintiffs’ construction improperly broadens this claim term
beyond what is disclosed as the patent does not identify any other possibilities for the
input signal other than an override voltage control signal, and only as a signal going to
the voltage controlled oscillator. (Doc. 66 at 18). Defendants further urge that Plaintiffs’
construction impermissibly encompasses all types of signals going to any part of a PLL
and improperly encompasses what was disclaimed during prosecution because Plaintiffs
previously distinguished the invention from the prior art by pointing to the use of the last
known or most recently stored resonant frequency. (Id. at 18-19).
Plaintiffs argue that their proposal directly follows the claim language and that
requiring the input signal to be an “override voltage control signal” that “correspond[s] to
a last known or most recently stored resonant frequency” contemplates limitations that do
17

not appear in the claim and are not required by the intrinsic record. (Doc. 67 at 26).
Plaintiffs urge that the inclusion of examples involving voltage controlled oscillators and
override voltage control systems in the specification does not impose limitations on the
claim itself. See Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)
(“Even when the specification describes only a single embodiment, the claims of the
patent will not be read restrictively unless the patentee has demonstrated a clear intention
to limit the claim scope using ‘words or expressions of manifest exclusion or
restriction’”). Plaintiffs further urge that Defendants also do not cite any statement in the
prosecution history that approaches the “clear and unmistakable disavowel of [claim]
scope” necessary for disclaimer. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d
1366, 1374 (Fed. Cir. 2008) (quoting Purdue Pharma L.P. v. Endo Pharms, Inc., 438
F.3d 1123, 1136 (Fed. Cir. 2006)).
The Court agrees that both the claim and the prosecution history are devoid of
evidence of any clear intent to limit the claim term as Defendants’ proposed construction
does and that the limitations that Defendants include are, in fact, only examples of
possible embodiments of the claim.
Accordingly, the Court adopts Plaintiffs’ proposed construction as it appropriately
omits limitations that are not required by the claim.

18

4.

The ‘501 Patent

i.

“means for limiting a user applied clamping force” and
“limiting the clamping arm to exert between and including
60 psi and 210 psi on the blood vessel”

Ethicon’s proposed construction
112 ¶6 Function

Covidien’s proposed construction
112 ¶6 Function

To limit a user applied clamping force to
exert between and including 60 psi and 210
psi on the blood vessel.

To limit a user applied clamp force.

112 ¶6 Structure
Each of the following alone or in
combination: (1) a motor which rotates
either the clamp arm or the blade relative to
the other and is preselected to cause a
known-size clamping surface area to exert
the desired pressure on tissue large enough
to cover the clamping surface area, (2) a
variable torque motor with user settings to
set the value or range of the force; (3) a
substantially constant force spring, while
applied a predetermined force to the clamp
arm; and (4) a physical stop limiting the
range of motion of the actuator rod.
Equivalents to (1), (2), (3), and (4) are also
included.

Covidien contends that the part of the claim
element stating “between and including 60
psi and 210 psi on the blood vessel” is
indefinite.
112 ¶6 Structure
A conventional torque wrench; element 40
as positioned between the scissor-like grips
in Figure 3.

The parties agree that both of these claim elements are governed by 35 U.S.C.
§ 112 ¶6 and agree that the function includes “to limit a user applied clamp force.” (Doc.
66 at 20; Doc. 67 at 27). The parties also agree that “means for limiting a user applied
clamping force” is a means-plus-function term and “limiting the clamping arm to exert
19

between and including 60 psi and 210 psi on the blood vessel” is a step-plus-function
term and that they share common functions and corresponding structures under § 112 ¶6
and therefore they should be construed together. (Doc. 66 at 25 n.2).
Plaintiffs argue that their proposed construction for the structure includes all
structures within the specification that “limit a user applied clamp force.” (Doc. 67 at
27). Plaintiffs urge that the specification illustrates that the structures that limit force go
beyond the single structure that Defendants include in their proposed construction (torque
wrench/element 40). (Id.) Plaintiffs argue that the specification discloses the three other
structures found in their proposed construction and describes them as force creating
means, but that they clearly “limit a user applied clamping force” as well, and thus are
properly included as force limiting means. (Id.)
Defendants argue that their proposed construction for the structure properly limits
these force-limiting means to the corresponding structures in the patent specification and
that Plaintiffs’ construction improperly imports structures that are not linked in the patent
specification to the force limiting function. (Doc. 66 at 20); see Med. Instrumentation &
Diagnostics Corp. v. Elektra AB, 344 F.3d 1205, 1213 (Fed. Cir. 2003). Defendants urge
that Plaintiffs’ construction also includes a fourth structure (a physical stop limiting the
range of motion of the actuator rod), but that no such structure is even described, let alone
linked to the description of the force-limiting means in the patent. See Med.
Instrumentation, 344 F.3d at 1218 (finding software was not part of the corresponding
20

structure because “the two structures clearly linked by the specification to the converting
function are depicted in the figures of the patent, while software for digital-to-digital
conversion is not”). The Court agrees that Plaintiffs’ proposed construction identifies
structures not clearly linked to the claimed function.
With regard to function, the only difference between the parties is whether “to
exert between and including 60 psi and 210 psi on the blood vessel” should be included
in the description of the function. As Defendant argues that the disputed language is
indefinite, this question will be addressed as part of the analysis in the following section.
Accordingly, the Court adopts Defendants’ proposed construction as Plaintiffs
have not established the required linkage between the additional structures they include in
their proposed construction and the function in question.
ii.

“clamp(ing) [pressure/force] [of/between and including] . . .
a value”

Ethicon’s proposed construction
Clamping arm exerts a clamp(ing)
[pressure/force] [of/between and including]
a value when the clamping arm is fully
engaged by the user.
iii.

Covidien’s proposed construction
Indefinite.

“average coaptation pressure . . . between and including . . .
a value”

Ethicon’s proposed construction
Clamping arm exerts an average coaptation
pressure . . . between and including . . . a
value when the clamping arm is fully
engaged by the user.

Covidien’s proposed construction
Indefinite.

21

The ‘501 patent has a variety of claim elements relating to (1) clamping force
measurements (e.g., how much force or pressure is exerted by the clamp arm of the
ultrasonic cutting instrument) and (2) coaptation force measurements (e.g., how much
force or pressure is exerted by the clamp arm of the ultrasonic cutting instrument on a
blood vessel). (Doc. 67 at 30). The parties have divided the allegedly indefinite terms
into two groups commonly represented by one term each. (Id.) This Court need only
decide if the common term is capable of construction or is indefinite. (Id.)
To prevail on their indefiniteness claim, Defendants must demonstrate by clear
and convincing evidence that the claim terms at issue are “not amenable to construction”
or “insolubly ambiguous.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1250 (Fed. Cir. 2008).
Defendants argue that there is a distinct lack of guidance as to how such force and
pressure are measured to ascertain whether a device falls within the claimed numeric
values. (Doc. 66 at 22). Defendants further argue that neither the specification, nor the
claims, nor the file history provide any guidance for measuring force or pressure or any
objective standard known in the art for measuring clamping pressure and force. (Id. at
23). Finally, Defendants argue that Plaintiffs’ proposed constructions fail to address
how, where, and when clamping force/pressure is measured. (Id.)
Plaintiffs argue that their constructions make use of the claim term language and
that the added specificity of “when the clamping arm is fully engaged” comes from the
22

specification itself, which explains that the pressure/force measurements correspond to a
“fully engaged clamping surface area.” (Doc. 67 at 31). Plaintiffs point out that the
patent went through eight rounds of examination by the Patent Examiner, who used the
terms in question himself when discussing prior art. (Id.) Plaintiffs urge that as the
ultimate issue is whether someone in the relevant technical field could understand the
bounds of a claim, the Patent Examiner’s use of the terms demonstrates that one with
ordinary skill in the art understands the meaning of these terms. See PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick
Co. v. Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984))(“[USPTO is] a qualified
government agency presumed to have properly done its job, which includes one or more
examiners who are assumed to have some expertise in interpreting the references and to
be familiar from their work with the level of skill in the art and whose duty it is to issue
only valid patents”).
The Court agrees with Plaintiffs that there is evidence in the intrinsic record to
allow for construction, that one of skill in the art knows what clamping force/pressure
means, that the specifications define when to measure the pressure (“when the clamping
arm is fully engaged”), and that Defendants have failed to meet their high burden of
“showing by clear and convincing evidence that a skilled artisan could not discern the
boundaries of the claim based on the claim language, the specification, and the
prosecution history, as well as her knowledge of the relevant art area.” Halliburton, 514
23

F.3d at 1249-50.
Accordingly, the Court finds that the terms in question are not indefinite and
adopts Plaintiffs’ proposed constructions.
V.

CONCLUSION

“The construction that stays true to the claim language and most naturally
aligns with the patent’s description of the invention will be, in the end, the correct
construction.” Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa
per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Therefore, the parties shall construe
the contested terminology of the patents in suit as set forth in this Order.
IT IS SO ORDERED.

Date: April 25, 2013

s/ Timothy S. Black
Timothy S. Black
United States District Judge

24