Zircore, LLC v. Straumann Manufacturing, Inc. et al

Filing 156

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 10/17/2016. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ZIRCORE, LLC,
Plaintiff,
v.

Case No. 2:15-cv-01557-JRG-RSP

STRAUMANN MANUFACTURING,
INC. ET AL.,
Defendants.

CLAIM CONSTRUCION MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Zircore, LLC (“Plaintiff”)
(Dkt. No. 128, filed on August 19, 2016),1 the response of Straumann Manufacturing, Inc.,
Straumann USA, LLC, and Dental Wings Inc. (collectively “Defendants”) (Dkt. No. 138, filed
on September 2, 2016), and the reply of Plaintiff (Dkt. No. 142, filed on September 9, 2016). The
Court held a hearing on the issues of claim construction and claim definiteness on September 26,
2016. Having considered the arguments and evidence presented by the parties at the hearing and
in their briefing, the Court issues this Order.

1

Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
are to the page numbers assigned through ECF.
1

Table of Contents
I. 

BACKGROUND ............................................................................................................... 3 

II. 

LEGAL PRINCIPLES ..................................................................................................... 7 
A. 

Claim Construction ................................................................................................. 7 

B. 

Departing from the Ordinary Meaning of a Claim Term ...................................... 10 

C. 

Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) ......... 11 

D. 

Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 13 

III. 

AGREED CONSTRUCTIONS ..................................................................................... 14 

IV. 

CONSTRUCTION OF DISPUTED TERMS ............................................................... 15 
A. 

U.S. Patent No. 7,690,920..................................................................................... 15 

B. 

A-1.  “one piece integrally formed” ................................................................... 15 
A-2.  “said side wall including a generally uniform outer surface” ................... 18 
A-3.  “protruding from said outer surface of said side wall” ............................. 21 
A-4.  “veneer” .................................................................................................... 24 
A-5.  “coping” .................................................................................................... 27 
A-6.  “subtracting” ............................................................................................. 30 
A-7.  Alleged Product-By-Process Claims 15, 16, 19–21.................................. 32 
U.S. Patent No. 7,967,606..................................................................................... 34 

C. 

B-1.  “three-dimensional model,” “model,” and “scanning” ............................. 34 
B-2.  “implant abutment insert,” “core,” and “core blank” ............................... 39 
B-3.  “at the same time” ..................................................................................... 45 
B-4.  “coping” .................................................................................................... 48 
U.S. Patent No. 8,751,031..................................................................................... 51 
C-1. 
C-2. 
C-3. 
C-4. 

V. 

“single master electronic file” ................................................................... 51 
“virtual ideal tooth replacement of a restoration” ..................................... 56 
“utilizing said master file to manufacture” ............................................... 59 
“coordinated, sequential, simultaneous or partly simultaneous and
partly sequential, manner” ........................................................................ 62 
C-5.  “end-stage materials” ................................................................................ 64 
C-6.  “collateral component” ............................................................................. 66 
CONCLUSION ............................................................................................................... 68 

2

I.

BACKGROUND
Plaintiff alleges infringement of three related U.S. Patents: No. 7,690,920 (the “’920

Patent”), No. 7,967,606 (the “’606 Patent”), and No. 8,751,031 (the “’031 Patent”) (collectively,
the “Asserted Patents”). The ’920 Patent is entitled “High Strength Substructure Reinforcement
for Crowns and Bridges.” The application that issued as the ’920 Patent was filed on April 15,
2005 and the patent issued on April 6, 2010. The ’606 Patent is entitled “Process for
Manufacturing Custom Crown Copings and Infrastructures.” The application leading to the ’606
Patent was filed on September 17, 2008 and the patent issued on June 28, 2011. The ’606 Patent
purports to be a continuation of the December 28, 2004 application that issued as U.S. Patent
7,445,409 and claims priority to three provisional applications, the earliest filed on February 6,
2004. The ’031 Patent is entitled “System and Method for Mass Custom Manufacturing of
Dental Crowns and Crown Components.” The application leading to the ’031 Patent was filed on
December 30, 2008 and the patent issued on June 10, 2014. The ’031 Patent purports to be a
continuation-in-part of the ’920 Patent’s application and a continuation-in-part of the ’606
Patent’s application.
In general, the Asserted Patents are directed to technology for dental restorations, such as
crowns and bridges. The technology of the ’920 Patent can be generally understood with
reference to Figure 2 of that patent, reproduced
here and annotated by the Court. A crown (35, in
blue) is formed about a coping (20, in yellow) that
is placed over an abutment portion (10) in the
patient’s mouth. A protrusion (25, in red) that is

3

’920 Patent Figure 2

formed on, or as part of, the coping, supports the crown. See ’920 Patent col.4 l.64 – col.5 l.35.
The technology of the ’606 Patent can be generally understood with reference to Figures
2 and 5 of the patent, reproduced here and annotated by the Court. An abutment comprising an
insert portion (20, in red) and a core portion (40, in blue) is customized in concert with a crown
coping (50, in yellow). The customization involves scanning a model of the patient’s mouth with
an insert portion installed and then designing and making the custom core portion and crown
coping

in

conjunction.

See

’606

Patent

col.4

l.65

–

col.6

l.34.

’920 Patent
Fig. 5

Fig. 2

The technology of the ’031 Patent can be generally understood with reference to Figure
9, reproduced here by the Court. Data regarding various components of a dental restoration, such
as the abutment, coping, and crown, are collected and used to manufacture multiple components
of the restoration in conjunction. See ’031 Patent col.7 l.59 – col.9 l.47.

4

’031 Patent Figure 9

The abstracts of the Asserted Patents provide:
’920 Patent:
A reinforcement for a dental restoration substructure is provided. The
reinforcement is a generally annular structure that protrudes from the body of the
substructure generally near an occlusal portion of the restoration. The annular
structure provides a support for veneering porcelain at the location of the greatest
thickness of the porcelain and at the location where occlusal stress is applied, and
fractures of veneering porcelain are commonly experienced.
’606 Patent:
A method of manufacturing custom crown coping and infrastructures is provided.
A metal portion (base) of an abutment is located in a model of a patient's mouth
and the model is scanned. The data from the scan is then utilized to manufacture
the ceramic portion of the abutment and the coping. In one embodiment, the
coping and infrastructure is designed by first determining the shape and
orientation of the final crown, subtracting a thickness for the crown from the
shape to determine the shape and orientation of a coping, and subtracting a
thickness for the coping to form the shape and orientation of an abutment.
’031 Patent:
A Mass Custom Manufacturing System and methods are provided. A single
master file is created for a restoration (or multiple restorations for a single patient)
from a scan. Copings/cores, abutments and other companion pieces are designed
using the master file through a deconstruction method allowing for simultaneous
CAM of those pieces. A centralized system controls design and manufacturing,
allowing the system to “learn” from feedback from the CAM operations of prior
pieces and incorporate such feedback into the design phase.
5

Claim 1 of the ’920 Patent, Claim 1 of the ’606 Patent, and Claim 1 of the ’031 Patent,
exemplary independent claims, recite as follows:

’920 Patent

’606 Patent

6

’031 Patent

II.

LEGAL PRINCIPLES
A.

Claim Construction

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of

7

ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy
presumption that claim terms carry their accustomed meaning in the relevant community at the
relevant time.”) (vacated on other grounds).
“The claim construction inquiry. . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
meaning, because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he 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. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the
court in interpreting the meaning of disputed claim language, particular embodiments and
examples appearing in the specification will not generally be read into the claims.’” Comark

8

Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415
F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication in the
intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim
construction because, like the specification, the prosecution history provides evidence of how the
U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction purposes.” Id. at
1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are not helpful. Id. Extrinsic evidence is “less reliable than the

9

patent and its prosecution history in determining how to read claim terms.” Id. The Supreme
Court recently explained the role of extrinsic evidence in claim construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art
during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). In cases where those subsidiary facts are in dispute, courts will
need to make subsidiary factual findings about that extrinsic evidence. These are
the “evidentiary underpinnings” of claim construction that we discussed in
Markman, and this subsidiary factfinding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
B.

Departing from the Ordinary Meaning of a Claim Term

There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term
either in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758
F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal.”). The standards for
finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,

2

Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
10

669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
meaning of a claim term by including in the specification expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”). “Where an applicant’s statements
are amenable to multiple reasonable interpretations, they cannot be deemed clear and
unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir.
2013).
C.

Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA)3

A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a
“means . . . for performing a specified function” and that an act may be claimed as a “step for
performing a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir.
2002).
But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for”
terms, and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
3

Because the applications resulting in the patents-in-suit were filed before September 16, 2012,
the effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA version of
§ 112.
11

ordinary skill in the art would understand the claim with the functional language, in the context
of the entire specification, to denote sufficiently definite structure or acts for performing the
function. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
Cir. 2015) (§ 112, ¶ 6 does not apply when “the claim language, read in light of the specification,
recites sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at
1349; Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson,
792 F.3d at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by
persons of ordinary skill in the art to have sufficiently definite meaning as the name for
structure”); Masco Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes
an “act” corresponding to “how the function is performed”); Personalized Media
Communications, L.L.C. v. International Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998)
(§ 112, ¶ 6 does not apply when the claim includes “sufficient structure, material, or acts within
the claim itself to perform entirely the recited function . . . even if the claim uses the term
‘means.’” (quotation marks and citation omitted)).
When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
involves multiple steps. “The first step . . . is a determination of the function of the means-plusfunction limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
specification and equivalents thereof.” Id. A “structure disclosed in the specification is
‘corresponding’ structure only if the specification or prosecution history clearly links or
associates that structure to the function recited in the claim.” Id. The focus of the “corresponding

12

structure” inquiry is not merely whether a structure is capable of performing the recited function,
but rather whether the corresponding structure is “clearly linked or associated with the [recited]
function.” Id. The corresponding structure “must include all structure that actually performs the
recited function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1298 (Fed. Cir. 2005). However, § 112 does not permit “incorporation of structure from the
written description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v.
Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
For § 112, ¶ 6 limitations implemented by a programmed general purpose computer or
microprocessor, the corresponding structure described in the patent specification must include an
algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but rather
the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
D.

Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA)

Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application
for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of
any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
13

When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective
term is used in a claim, “the court must determine whether the patent’s specification supplies
some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).
In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as
indefinite if the claim fails to disclose adequate corresponding structure to perform the claimed
functions. Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary
skill in the art “would be unable to recognize the structure in the specification and associate it
with the corresponding function in the claim.” Id. at 1352.
III.

AGREED CONSTRUCTIONS
The parties have agreed to the following constructions set forth in their Joint Claim

Construction Chart (Dkt. No. 148).
Term4
“distal end”


’920 Patent Claim 1

“proximal occlusal end”


Agreed Construction
“end closest to the gum-line or root”

“end closest to the biting surface”

’920 Patent Claim 1

4

For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest level claim in each dependency chain is listed, and (2) only asserted
claims identified in the parties’ Joint Claim Construction Chart (Dkt. No. 148) are listed. The
Court notes at least one discrepancy between a party’s position as stated in the briefing and
advocated at the hearing and as stated in the P.R. 4-5(d) chart. The parties’ positions stated in
this Order are from the P.R. 4-5(d) chart.
14

Term4

Agreed Construction
“force that is opposite but parallel to the force
that is [exerted on said veneer]”

“sheer stress”


’920 Patent Claim 1

“generally encircling the entire periphery of
the substructure body”


’920 Patent Claim 1

“generally proximate to the location of
greatest occlusal stress”


plain and ordinary meaning
NOTE: “sheer stress” is a typographical error
for “shear stress”

‘920 Patent Claim 1

“subtracting a thickness”


plain and ordinary meaning

‘920 Patent Claim 1

“protrudes a distance from the surface of the
side wall surface so as to provide support for
said veneer that reduces the sheer stress
exerted on said veneer”


“generally surrounding the entire periphery of
the substructure body by way of a single
structure or multiple structures”

plain and ordinary meaning

’606 Patent Claims 11, 12
Having reviewed the intrinsic and extrinsic evidence of record, the Court agrees with and

adopts the parties’ agreed constructions.
IV.

CONSTRUCTION OF DISPUTED TERMS
A.

U.S. Patent No. 7,690,920
A-1.

“one piece integrally formed”

Disputed Term
“one piece integrally formed”


’920 Patent Claim 1

Plaintiff’s Proposed
Construction
plain and ordinary meaning

Defendants’ Proposed
Construction
“[substructure body] formed
from the same component”

Alternative Construction:
 “formed as a single unit”

The Parties’ Positions
Plaintiff submits that the meaning of “one piece integrally formed” is clear and the term
does not need to be construed. Dkt. No. 128 at 9. According to Plaintiff, the ’920 Patent teaches
15

that the “one piece integrally formed” substructure body of the claim may be formed from
multiple components. Id. at 9–10 (citing ’920 Patent col.6 ll.15–21).
In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to
support its position: ’920 Patent figs.2, 3a, 3b, col.6 ll.15–21.
Defendants respond that the ’920 Patent distinguishes an integral portion of a structure
from a portion that is a separate component attached to the structure:
the ‘protrusion’ of the instant invention may be designed as an integral portion of
an infrastructure (as is shown and described herein with respect to coping 20
protrusion 25), or alternatively, the ‘protrusion’ may be a separate component
that is attached to or otherwise combined with an infrastructure.
Dkt. No. 138 at 9 (quoting ’920 Patent col.6 ll.15–21 (emphasis added by Defendants)).
According to Defendants, the patentee added “one piece integrally formed” (via Examiner
Amendment) to the claims during prosecution and thereby restricted the claims to the described
“integral portion” embodiment. Id.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’920 Patent col.5 ll.14–16, col.5 ll.38–40, col.6 ll.15–21, col.6 l.53; ’920
Patent File Wrapper January 15, 2010 Supplemental Notice of Allowability (Defendants’ Ex. A,
Dkt. No. 138-2).
Plaintiff replies that “integrally formed” means “formed as a single unit” rather than
“from the same component.” Dkt. No. 142 at 7.
Analysis
There issue in dispute here is whether the “one piece integrally formed substructure
body” is necessarily formed from a single component. In the context of the ’920 Patent, a
substructure body is “integrally formed” if it is made as one component or if it is made as
separate components that are integrated into one component.
16

The Court is not persuaded by Defendants’ argument that the ’920 Patent distinguishes
“integral” from “attached or otherwise combined.” The description relied on by Defendants
states:
Furthermore, it will be appreciated that the “protrusion” of the instant invention
may be designed as an integral portion of an infrastructure (as is shown and
described herein with respect to coping 20 protrusion 25), or alternatively, the
“protrusion” may be a separate component that is attached to or otherwise
combined with an infrastructure.
’920 Patent col.6 ll.15–21 (emphasis added). The Court does not understand this to distinguish
“integral” from “separately made then joined,” as Defendants posit. Rather, the Court
understands this to allow two ways in in which a protrusion may be “integrally formed” with the
substructure. First, it can be “designed as an integral portion” of the substructure. And second, it
can be designed as “a separate component” that is then integrated with the substructure (i.e.,
“attached to or otherwise combined with an infrastructure”). Defendants’ proposed construction
would exclude an expressly described exemplary embodiment. And “a construction that excludes
a preferred embodiment is rarely, if ever, correct.” C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 865 (Fed. Cir. 2004). Ultimately, the patent describes the invention as including two
ways of integrally forming the substructure and, given that nothing of record indicates an intent
to exclude integrally forming by connecting multiple components, the claims should be
construed consistently with this description. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en banc) (“‘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.’”
(quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
Accordingly, the Court construes “one piece integrally formed substructure body” as
follows:

17



“one piece integrally formed substructure body” means “substructure body
formed as or into one piece.”
A-2.

Disputed
Term
“said side
wall
including a
generally
uniform
outer
surface”


’920
Patent
Claim 1

“said side wall including a generally uniform outer surface”
Plaintiff’s Proposed Construction5

“said external side portion of the substructure body
extending between the distal end and the occlusal end
including a “generally uniform outer surface”,
meaning an outer surface of the substructure body
(other than the protruding support structure) which
does not include any significant variation in contour at
the external surface of the substructure body, and
which can be any simple or complex shape desired,
whether now known or hereafter discovered, and
which is not necessarily smooth, symmetrical, or of
uniform thickness”
Alternative Construction:
 “said side wall including a surface that does not
include any significant variations in contour at the
external surface of the substructure body, and
which can be any simple or complex shape
desired, and which is not necessarily smooth,
symmetrical, or of uniform thickness”

Defendants’
Proposed
Construction
“said side wall
including a surface
that does not include
any significant
variations in contour
from the surface of
the restoration for
which it is a
substructure”
Alternative
Construction:
 indefinite.

The Parties’ Positions
Plaintiff submits that what it means for a surface to be “generally uniform” is expressly
defined in the ’920 Patent. Dkt. No. 128 at 11–12 (citing ’920 Patent col.5 ll.36–53, col.6 ll.32–
39). According to Plaintiff, Defendants’ proposed construction improperly—and meaningfully—
truncates the definition set forth in the patent. Id. at 12. Specifically, Plaintiff argues that the
patent allows a “generally uniform” surface that is not necessarily “smooth or even,”
“symmetrical,” or of a “uniform thickness.” Id. (quoting ’920 Patent col.5 ll.44–53).
5

Plaintiff’s proposed construction presented in its briefing is the alternative construction
presented in the parties’ Joint Claim Construction Chart that was filed pursuant to Local Patent
Rule 4-5(d). Dkt. No. 128 at 11; Dkt. No. 142 at 7–8, Dkt. No. 148-1 at 2–3.
18

In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to
support its position: ’920 Patent col.5 ll.36–53, col.6 ll.32–39.
Defendants respond that their proposed construction, and not Plaintiff’s, comports with
the ’920 Patent’s definition of “generally uniform” as used in the context of the claims:
[T]he phrase ‘generally uniform’ to describe the outer surface of the body of
coping 20 of the instant invention refers to the fact that the outer surface of coping
20 generally (other than protrusion 25) does not include any significant
variations in contour from those variations typically found in conventional coping
structures which generally follow the contours of (i.e. are concentric with) the
surface of the restorations for which they are sub-structures.
Dkt. No. 138 at 10 (quoting ’920 Patent col.5 ll.36–44 (emphasis added by Defendants)).
Defendants argue that if “generally uniform” is not a measure of the surface of the substructure
relative to the surface of the restoration then the term renders claims indefinite. Id. at 11. This,
according to Defendants, is because “generally uniform” is a term of degree, and the patent’s
only guidance on how to determine whether a substructure surface is generally uniform is to
examine how the substructure surface varies relative to the restoration surface. Id. at 11–12.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’920 Patent col.5 ll.36–44; ’920 Patent File Wrapper September 10
Amendment (Defendants’ Ex. B, Dkt. No. 138-3).
Plaintiff replies that while the surface of the wall may follow the contour of the final
restoration in some instances, it need not do so. Dkt. No. 142 at 8.
Plaintiff cites further intrinsic evidence to support its position: ’920 Patent figs.3a, 3b;
’920 Patent File Wrapper September 10 Amendment (Defendants’ Ex. B, Dkt. No. 138-3).
Analysis
The issue in dispute here is whether a “generally uniform outer surface” of a side wall
necessarily follows the contour of the surface of the restoration. It does.
19

The Court agrees with the parties that this term is expressly defined in the ’920 Patent.
The patent provides:
It will be appreciated that the use of the phrase “generally uniform” to describe
the outer surface of the body of coping 20 of the instant invention refers to the
fact that the outer surface of coping 20 generally (other than protrusion 25)
does not include any significant variations in contour from those variations
typically found in conventional coping structures which generally follow the
contours of (i.e. are concentric with) the surface of the restorations for which
they are sub-structures. Such contours often include various asymmetrical and
irregular shapes that may include both concave and convex patterns in a single
structure. Therefore, the generally uniform surface does not require the surface to
be smooth or even, or of any standardized or symmetrical shape or form. It will
further be appreciated that reference to the outer surface of the body of coping 20
as being generally uniform is not intended to require a uniform thickness for
coping 20, even though the embodiment of coping 20 shown in FIG. 2 does
include a generally uniform thickness.
’920 Patent col.5 ll.36–53 (emphasis added). While the Court agrees with Plaintiff that under this
definition a “generally uniform” outer surface “can be any simple or complex shape desired, and
which is not necessarily smooth, symmetrical, or of uniform thickness,” that does not mean that
every “simple or complex shape desired” is “generally uniform.” Rather, the shape of the outer
surface is irrelevant, provided the outer surface (other than the protrusion) generally tracks the
surface of the restoration.
Accordingly, the Court construes “said side wall including a generally uniform outer
surface” as follows:


“said side wall including a generally uniform outer surface” means “said side wall
including an outer surface that, other than the protruding support structure, does
not include any significant variations in contour from those variations typically
found in conventional coping structures which generally follow the contours of
(i.e. are concentric with) the surface of the restorations for which they are
sub-structures.”
20

A-3.

“protruding from said outer surface of said side wall”

Disputed Term
“protruding from said outer
surface of said side wall”


’920 Patent Claim 1

Plaintiff’s Proposed
Construction
“protruding (projecting) from
said outer surface of said side
wall, as an integral portion of
the infrastructure from which
it protrudes, or alternatively,
as a separate component that
is attached to or otherwise
combined with the
infrastructure, and having any
shape including but not
limited to bulges, powerswells, tumors, bumps, blobs,
raised protuberances, etc.”

Defendants’ Proposed
Construction
“having a shape that
significantly varies from the
contour of the side wall in a
manner that does not
generally follow the contour
of the surface of the final
restoration”
Alternative Construction:
 indefinite

The Parties’ Positions
Plaintiff submits that the ’920 Patent defines the protrusion of the claims. Dkt. No. 128 at
13 (quoting ’920 Patent col.6 ll.15–24). Plaintiff further submits that what it protrudes from, the
“said outer surface of said side wall,” is readily understood without construction. Id. This,
Plaintiff argues, is evinced by each side’s incorporation of “side wall” into the proposed
constructions. Id. And, Plaintiff argues, “outer surface” appears elsewhere in the claim and is
defined in the patent as “the outer contour shape of the coping.” Id. at 13–14 (citing ’920 Patent
col.7 ll.3–5). According to Plaintiff, Defendants’ proposed construction improperly injects
“significantly varies” and “does not generally follow the contour of the surface of the final
restoration” limitations into the claims. Id. at 14. Plaintiff submits that the patent discloses an
embodiment in which the “support structure” that is “protruding” generally follows the contour
of the surface of the final restoration. Id. (citing ’920 Patent figs. 1, 3a, col.7 ll.34–36).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’920 Patent figs.1, 3a, col.6 ll.15–24, col.7
21

ll.3–5, col.7 ll.34–36. Extrinsic evidence: Merriam Webster’s Collegiate Dictionary (11th ed.
2003) (“protrude”) (Plaintiff’s Ex. 4, Dkt. No. 128-4).
Defendants respond that the support structure that protrudes from the side wall must not
generally follow the contours of the restoration surface else it would not be “protruding.” Dkt.
No. 138 at 12–13. This understanding, according to Defendants, naturally follows the ’920
Patent’s definition of what it means for a substructure surface to be generally uniform. Id.
Defendants further respond that, during prosecution, patentee explained that certain prior-art
references did not disclose a protruding support structure because those references disclosed only
generally uniform surfaces. Id. at 13. As Defendants argued with respect to the “generally
uniform” term, they argue that if “protruding” is not defined in relation to the surface of the
restoration, the “protruding” term would render claims indefinite as there would be no way to
determine whether a region of the side-wall surface was a protrusion or just a generally uniform
variation. Id. at 14.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’920 Patent figs.3a, 3b, col.4 ll.45–46, col.5 ll.36–44, col.7 ll.46–49; ’920
Patent File Wrapper September 10 Amendment (Defendants’ Ex. B, Dkt. No. 138-3), May 13,
2009 Office Action (Defendants’ Ex. E, Dkt. No. 138-6); U.S. Patent 5,342,2016 (excerpts)
(Defendants’ Ex. C, Dkt. No. 138-4); U.S. Patent No. 5,810,5907 (excerpts) (Defendants’ Ex. D,
Dkt. No. 138-5).

6

U.S. Patent 5,342,201 to Oden is cited on the face of the ’920 Patent. ’920 Patent, at [56]
References Cited.
7
U.S. Patent No. 5,810,590 to Fried et al. is cited on the face of the ’920 Patent. ’920 Patent, at
[56] References Cited.
22

Plaintiff replies that it would be improper to rely on the ’920 Patent’s definition of
“generally uniform” to define the protrusion as the protrusion is “excluded in the parenthetical”
of the definition. Dkt. No. 142 at 9.
Plaintiff cites further intrinsic evidence to support its position: ’920 Patent fig.3b, col.5
l.39.
Analysis
The issue here is whether the support structure “protruding from said outer surface of said
side wall” necessarily deviates from the “generally uniform” nature of the outers surface. It does.
The protruding substructure of the claims is defined in the ’920 Patent in the context of
the “generally uniform” outer surface. As set forth above, a “generally uniform” outer surface of
the substructure body’s side wall generally tracks the surface of the restoration. The protruding
substructure is that part of the surface that does not qualify as “generally uniform”—it is that
portion of the side wall’s surface that does not generally track the restoration surface. As with the
side wall’s surface, the shape of the protrusion is irrelevant so long as it protrudes from the side
wall’s outer surface and thereby does not track the restoration’s surface. ’920 Patent col.5 l.36 –
col.6 l.24. Specifically, the patent provides:
the terms “protrusion” and “protruding” are intended to include, but not be limited
to, any convex shape that is not a coincident concentric duplicate shape of the
preparation; any complex amplification of shape that is not just a convex
derivative of the shape of the preparation; any shape having a concave approach
from each side approach to an amplified area of protrusion that can not be
described in simple harmonics, but only complex wave form; any superseding
amplification of form that is not accidental or rendered for strictly artistic
purpose; any concentric enlargement that is disproportionately distributed toward
the superior (non-apical) portion of the long axis of the preparation; any
asymmetrical appendage added to a design by computer generated pre-made
shape or file added for specific structural considerations of subsequent materials
added to a restoration infrastructure.
Id. at col.5 l.67 – col.6 l.15.
23

Accordingly, the Court construes “protruding from said outer surface of said side wall” as
follows:


“protruding from said outer surface of said side wall” means “having a shape that
extends out from the side wall’s outer surface and is not generally uniform with
the surface of the restoration.”
A-4.

“veneer”

Disputed Term
“veneer”


‘920 Patent Claim 1

Plaintiff’s Proposed
Construction
Plain and ordinary meaning.

Defendants’ Proposed
Construction
“porcelain or ceramic layer
that is [formed over …]”

Alternative Construction:
 “a coating or overstructure material”

The Parties’ Positions
Plaintiff submits that “veneer” is well understood in the art and does not need to be
explained to one of ordinary skill in the art. Dkt. No. 128 at 16. Plaintiff further submits that
under the customary meaning of “veneer” in the art, it is not limited to “porcelain” or “ceramic,”
as Defendants’ contend. Id. And, Plaintiff submits, the ’920 Patent specifically states that “the
materials used to manufacture the substructure (as well as the veneer) of the instant invention are
not limited to those described herein.” Id. (quoting ’920 Patent col.8 ll.30–33). Finally, Plaintiff
submits that “veneer” was described as an “overstructure” in the course of prosecuting the ’920
Patent. Id.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’920 Patent col.8 ll.30–33; ’920 Patent File
Wrapper July 21, 2008 Interview Summary (Plaintiff’s Ex. 5, Dkt. No. 128-5). Extrinsic

24

evidence: Merriam Webster’s Collegiate Dictionary (11th ed. 2003) (“veneer”) (Plaintiff’s Ex.
25, Dkt. No. 128-25).
Defendants respond that “veneer” in the ’920 Patent is used only to refer to porcelain or
ceramic layers and that “the word ‘coating’ appears nowhere in the patent.” Dkt. No. 138 at 14–
15. Defendants further respond that during prosecution, the patentee equated “veneer” with
“porcelain veneer.” Id. And, Defendants contend, while a “veneer” may be a kind of overstructure, not all over-structures are veneers. Id. at 15. Thus, they conclude, construing veneer as
an over-structure would improperly broaden the scope of the claims. Id.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’920 Patent File Wrapper December 17, 2008 Amendment (Plaintiff’s Ex.
6, Dkt. No. 128-6).
Plaintiff replies to reiterate that a “veneer” may be of a material other than ceramic or
porcelain. Dkt. No. 142 at 9.
Analysis
The primary issue here appears to be whether a veneer is necessarily limited to “porcelain
or ceramic.” It is not.
To begin, the Court does not discern a difference between a “coating” and a “layer” in the
context of a “veneer formed over and contacting the outer surface.” And the Court agrees with
Defendants that not every “over-structure” is a veneer.
Not all “veneers” are porcelain or ceramic. While it may be that every exemplary
embodiment of a veneer in the ’920 Patent is porcelain or ceramic, that alone is not enough to
limit “veneer” to those materials. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(en banc) (“we have expressly rejected the contention that if a patent describes only a single

25

embodiment, the claims of the patent must be construed as being limited to that embodiment”);
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise
not enough that the only embodiments, or all of the embodiments, contain a particular limitation.
We do not read limitations from the specification into claims; we do not redefine words. Only
the patentee can do that.”); SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir.
1985) (en banc) (“The law does not require the impossible. Hence, it does not require that an
applicant describe in his specification every conceivable and possible future embodiment of his
invention.”). Indeed, the patent expressly allows for other materials: “Further, it will be
appreciated that the materials used to manufacture the substructure (as well as the veneer) of the
instant invention are not limited to those described herein.” ’920 Patent col.8 ll.30–33.
The prosecution history statements Defendants argue are disclaimer of all but porcelain
(and ceramic) veneers do not rise to the level of disclaimers. The Court perceives an error in the
prosecution-history characterization of the December 17, 2008 amendments. While the patent
practitioner may have characterized the amendments as, “the independent claims of the instant
application have been amended to now positively recite the porcelain veneer that is formed about
the body,” inspection of the actual amendments leads to a contrary conclusion. ’920 Patent File
Wrapper December 17, 2008 Amendment at 4–11, Dkt. No. 128-6 at 4–12. Pending independent
claim 11 was amended to include “a porcelain veneer about said body” while the other pending
independent claims (1, 9, 13) were amended to include “a veneer about said body”—no
recitation of “porcelain.” Id. That is, only pending claim 11 was amended as characterized. That
the term “porcelain” was added to claim 11—and not to the other claims—strongly suggests that
the patentee did not intend to limit veneer to a particular material. See Phillips v. AWH Corp.,
415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (noting that the use of the term “steel baffles”

26

“strongly implies that the term ‘baffles’ does not inherently mean objects made of steel”). Given
that the patent clearly states that the veneer may be of materials other than what is described in
the patent, ’920 Patent col.8 ll.30–33, and that there is no discernable reason that a restriction to
“porcelain” was meant to overcome prior art during prosecution, the Court holds that the
characterization of the amendments is erroneous and does not give rise to a disclaimer. See
Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341, 1348 (Fed. Cir.
2001) (“A person of reasonable intelligence would not be misled into relying on the erroneous
statement [in the prosecution history], for it is contrary not only to the plain language of the
claims and the specification, but also to other statements in the same prosecution document.”).
The Court’s understanding of “veneer” comports with the customary meaning of
“veneer.” Specifically, the extrinsic evidence establishes that veneers of materials other than
porcelain or ceramic are used in the art. Merriam Webster’s Collegiate Dictionary 1387 (11th ed.
2003) (defining veneer, in relevant part, as “a plastic or porcelain coating bonded to the surface
of a cosmetically imperfect tooth”), Dkt. No. 128-25 at 2.
Accordingly, the Court construes “veneer” as follows:


“veneer” means “layer of material.”
A-5.

“coping”

Disputed Term
“coping”


’920 Patent Claim 5

Plaintiff’s Proposed
Construction
“an intermediate structure
disposed over an abutment or
natural tooth”

Defendants’ Proposed
Construction
“layer supporting the veneer”

The Parties’ Positions
Plaintiff submits that the ’920 Patent explains a “coping” as something designed to fit
over an abutment or a prepared portion of a tooth. Dkt. No. 128 at 19. According to Plaintiff,
27

Defendants’ proposed construction improperly requires the “coping” to support the veneer and
improperly requires the “coping” to be a layer. Id. Plaintiff submits the patent describes that
which supports the veneer as the protrusion which is the “support structure.” Id. And Plaintiff
submits that it is known in the art that not all copings require a veneer. Id. at 19–20 (citing
Mosby’s Dental Dictionary (2004)).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’920 Patent col.4 ll.9–13, col.4 l.65 – col.5
l.1, col.5 ll.26–29, col.7 ll.22–23. Extrinsic evidence: Mosby’s Dental Dictionary (2004)
(“coping”) (Plaintiff’s Ex. 8, Dkt No 128-8).
Defendants respond that “coping” is described in the ’920 Patent as a “layer.” Dkt. No.
138 at 16 (citing ’920 Patent col.4 ll.9–13). Defendants further respond that Claim 1 requires the
veneer to contact the outer surface of the substructure body and that Claim 5 requires the
substructure body to comprise a “coping” and therefore the veneer must be supported by the
coping. Id.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’920 Patent col.4 ll.9–13, col.5 ll.18–19.
Plaintiff replies that while the ’920 Patent refers to the coping as a layer in one
embodiment, it refers to the coping as a structure throughout the specification. Dkt. No. 142 at 3.
Plaintiff further replies that it is the protrusion that supports the veneer and not all surfaces of the
coping support the veneer. Id.
Plaintiff cites further intrinsic evidence to support its position: ’920 Patent col.7 l.66.

28

Analysis
The parties dispute whether a “coping” is a “layer” and whether a “coping” necessarily
supports a veneer. With respect to whether a coping is a layer, the Court determines that a coping
may be used as a layer in that it is designed to cap or cover something, but a coping alone is not
necessarily a layer. With respect to whether a coping necessarily supports a veneer, the Court
determines that a coping may be used to support a veneer, but a coping alone does not
necessarily support a veneer.
A “coping” is a covering or a cap. Claim 4 of the ’920 Patent expresses that the “coping”
is “adapted to be positioned over a preparation.” And the patent describes that the “coping” fits
over other structures. See, e.g., ’920 Patent col.4 ll.65–67 (“the implant includes abutment
portion 10 over which thin coping 20 is fit”). This comports with the customary meaning of the
term in the art. Mosby’s Dental Dictionary 137 (2004) (defining “coping,” in relevant part, as “a
thin metal covering or cap over a prepared tooth” and “a casting placed over an implant
abutment”), Dkt. No. 128-8 at 2. That is, a “coping” is a structure that is placed over some other
structure—it is a covering or cap.
The “coping” of Claim 5 does not necessarily support the veneer. To begin, the Court
agrees with Defendants that Claim 1, and therefore Claim 5, requires a veneer “formed over and
contacting the outer surface of the side wall” of the substructure body. The Court also agrees that
Claim 5 requires that the “substructure body comprises a coping.” But that a substructure body
“comprises” a coping does not preclude the substructure body having other features that support
the veneer. Indeed, Claim 1 requires a “support structure” “to provide support for said veneer.”
The patent also describes exemplary embodiments in which the protrusion is supporting the
veneer. See, e.g., ’920 Patent, at [57] Abstract (the protruding substructure “provides a support

29

for veneering porcelain”), col.5 ll.25–29 (“protrusion 25 is located in close proximity to (right
under in the shown embodiment) this high stress region to provide a contact region and support
for the veneering porcelain of crown 30”). And nothing in the extrinsic evidence of record
establishes that a coping necessarily supports a veneer.
Accordingly, the Court construes “coping” as follows:


“coping” means “covering or cap.”
A-6.

“subtracting”

Disputed Term
“subtracting”


’920 Patent Claim 20

Plaintiff’s Proposed
Construction
“using an ‘outside-in’
approach, deconstructing to a
desired shape”

Defendants’ Proposed
Construction
plain and ordinary meaning

Alternative Construction:
 “deconstructing to a
desired shape”
The Parties’ Positions
Plaintiff submits that “subtraction” is used in the ’920 Patent other than according to its
ordinary meaning. Dkt. No. 128 at 20. Specifically, Plaintiff contends, “subtracting” in the
context of determining the shape of a substructure body refers to starting with “the desired shape
for the restoration and then subtracting away or deconstructing from that shape to leave the
desired substructure shape.” Id. (quoting ’920 Patent col.8 ll.4–8 (Plaintiff’s modifications
omitted)). This, according to Plaintiff, is distinct from a “simple mathematical subtraction” and
the term should be clarified for the jury. Id. at 20–21.
In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to
support its position: ’920 Patent figs.1, 2, 3a, 3b, col.8 ll.4–25.

30

Defendants respond that because the “subtracting” is from a shape, there is no risk that a
jury will view it as a simple mathematical subtraction calculation. Dkt. No. 138 at 17. Rather,
according to Defendants, the entirety of the surrounding claim language makes clear that
“subtracting” refers to subtracting “layers” from the final desired shape. Id. Defendants object to
Plaintiff’s proposed construction as failing to clarify the claim scope as it introduces “outside-in”
and “deconstruction”—concepts that are not readily understood. Id.
Plaintiff replies that “subtracting” is not limited to removing layers from a shape to get a
smaller version of the shape, but includes removing portions of a shape to get a smaller, different
shape—i.e., deconstructing to a desired shape. Dkt. No. 142 at 10.
Analysis
It appears that the dispute here is whether “subtracting from a final desired shape for the
restoration” necessarily requires removing layers from the “final desired shape for the
restoration.” It does not.
To begin, the Court does not agree with Defendants implicit assumption that the final
desired shape is comprised of “layers.” Rather, the layers of the restoration are determined based
on the desired shape for the restoration. Even if the shape was described mathematically as a sum
of layers, the ’920 Patent describes exemplary software that “embellishes or diminishes certain
key areas . . . to design the final substructure shape.” ’920 Patent col.8 ll.19–21, see also, id. at
col.2 ll.60–66 (describing software that allows one to “distort the shape in one/multiple
vanishing points”), col.3 ll.25–32 (“the part of the final [restoration] shape that is subtracted is
determined to maximize the aesthetic appearance of the final restoration”), col.6 ll.25–39 (noting
the aesthetic benefits of having a thicker veneer at the top of the restoration than at the bottom).
Thus, the subtraction is not limited to removing layers, but includes removing points, areas, and

31

parts. Importantly, to the extent that Defendants intend their argument to limit the meaning of
“subtracting” to removal of generally uniform thickness from the entirety of the shape, it is
unclear how one would account for the protruding support structure. “Subtracting” is not limited
to removing layers, it refers to removing portions, be they layers, parts of layers, or otherwise,
from the final shape.
That said, Plaintiff’s proposed construction does not clarify claim scope for the jury. The
term “deconstructing” is no more clear than “subtracting.”
Accordingly, the Court construes “subtracting” to mean:


“subtracting” means “removing portions.”
A-7.

Alleged Product-By-Process Claims 15, 16, 19–21

Disputed Term


’920 Patent Claim 16



’920 Patent Claim 19



’920 Patent Claim 20



Defendants’ Proposed
Construction

’920 Patent Claim 15



Plaintiff’s Proposed
Construction

’920 Patent Claim 21

not product-by-process

product-by-process

Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that Defendants have neither proposed a construction for these claims
nor contended that they are indefinite, and therefore that there is no claim-construction dispute.
See Dkt. No. 128 at 21.
Defendants respond that Claims 15, 16, 19, 20, and 21 define the restoration in part by
the process used to manufacture the restoration, and therefore the claims are product-by-process

32

claims. Dkt. No. 138 at 17–18. Specifically, Defendants contend that Claim 15 defines the
restoration as having a substructure with a shape “determined through the use of a software
application” and Claim 20 defines the restoration as one that is “milled.” Id. at 18.
Plaintiff replies that claim construction is not the appropriate vehicle for resolving
whether these claims are product-by-process claims. Dkt. No. 142 at 10. Plaintiff further replies
that the claims cannot be product-by-process claims “as they contain structural limitations” Id.
(citing Union Carbide Chemicals & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167 (Fed.
Cir. 2002); Hazani v. U.S. Intern. Trade Comm’n, 126 F.3d 1473 (Fed. Cir. 1997)).
Analysis
The issue here is whether Claims 15, 16, 19, 20, and 21 are product-by-process claims.
They are.
Each of Claims 15, 16, 19, 20, and 21 include a limitation that defines the restoration in
part by a process to produce it. Specifically, Claim 15, and its dependent claims, require that the
shape of the restoration’s substructure body “is determined through use of a software
application” and Claim 21 requires that the restoration is “milled.” These limitations are not
structural characteristics of the restoration, they are limitations that define the restoration by the
steps taken to form the restoration. Thus, the claims are product-by-process claims. See
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1313 (Fed. Cir. 2006) (“A productby-process claim is one in which the product is defined at least in part in terms of the method or
process by which it is made.” (quotation marks omitted)).
Plaintiff posits that a claim to a product that includes purely structural limitations in
addition to reference to process steps by which the structure was formed cannot be a product-byprocess claim. The Court disagrees. The Federal Circuit has stated that a claim to a product

33

defined “at least in part” by the process for making it is a product-by-process claim. Id. (quoting
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158 (1989)). The cases cited by
Plaintiff do not suggest otherwise. For example, in Union Carbide Chemicals & Plastics Tech.
Corp. v. Shell Oil Co., the Federal Circuit held a claim was not a product-by-process claim not
because the claim also included clearly structural limitations, but because the limitation at issue
described a capability of the product—it was “characterizable by an efficiency equation.” 308
F.3d 1167, 1177–79 (Fed. Cir. 2002). The court there distinguished such language from language
such as “determined from the efficiency equation”—the “determined from” language denotes a
product defined, at least in part, by a process step instead of by a capability. Id. Likewise, Hazani
v. U.S. Intern. Trade Comm’n, rejected a product-by-process interpretation because the limitation
at issue “read in context, describes the product more by its structure than by the process used to
obtain it,” not because the claim also had other, clearly structural, limitations. 126 F.3d 1473,
1479 (Fed. Cir. 1997).
Accordingly, the Court construes Claims 15, 16, 19, 20, and 21 as product-by-process
claims.
B.

U.S. Patent No. 7,967,606
B-1.

“three-dimensional model,” “model,” and “scanning”

Disputed Term
“three-dimensional model” /
“model”


Plaintiff’s Proposed
Construction
“a physical object or a
mathematical or graphical
representation of an object”

’606 Patent Claims 1, 12
Alternative Construction:
 “physical or virtual threedimensional model”

34

Defendants’ Proposed
Construction

“physical three-dimensional
model”

Disputed Term
“scanning”


’606 Patent Claim 1

Plaintiff’s Proposed
Construction
“obtaining data about a
physical object or
mathematical or graphical
representation of an object”

Defendants’ Proposed
Construction
plain and ordinary meaning

Alternative Construction:
 “obtaining data about the
model”
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that neither “model” nor “scanning,” as those terms are used in the
claims, are necessarily physical. Dkt. No. 128 at 21–24. Specifically, Plaintiff contends that the
ordinary meaning of “model” encompasses a virtual model, i.e., a “mathematical or graphical
representation[s] of a real-world situation or object.” Id. at 21–22 (quoting Microsoft Computer
Dictionary 344 (5th ed. 2002), Dkt. No. 128-9 at 2). And Plaintiff contends that “scanning” a
model encompasses software obtaining data from a virtual model. Id. at 23–24.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’606 Patent col.5 ll.32–38. Extrinsic
evidence: Merriam Webster’s Collegiate Dictionary (11th ed. 2003) (“model”) (Plaintiff’s Ex.
10, Dkt. No. 128-10); Microsoft Computer Dictionary (5th ed. 2002) (“model”) (Plaintiff’s Ex.
9, Dkt. No. 128-9); Merriam Webster’s Collegiate Dictionary (11th ed. 2003) (“scan”)
(Plaintiff’s Ex. 26, Dkt. No. 128-26).
Defendants respond that the only three-dimensional model disclosed in the ’606 Patent is
a physical model. Dkt. No. 138 at 18–19. Defendants further respond that the patent describes
that the “instant invention” uses a physical model and a physical scanner:
35

the manufacturing method of the instant invention begins with the purchase of
the metal portion of the abutment from a manufacturer. . . . the metal portion of
the abutment, which is located in the model, is scanned.
Id. at 19–20 (quoting ’606 Patent col.4 l.67 – col.5 l.5 (emphasis added by Defendants)). And,
Defendants contend, “scanning”—under its ordinary meaning—is a physical process. Id. at 20.
This, according to Defendants, is evinced by the dictionary definition of scanning: “to examine
systematically (as by passing a beam of radiation over or through) in order to obtain data esp.
for display or storage <scanned the patient’s heart> <radar ~s the horizon> <~ the photos into
the computer>.” Id. (quoting Merriam Webster’s Collegiate Dictionary 1512–13 (11th ed.
2003), Dkt. No. 128-26 at 2–3 (emphasis added by Defendants)).
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’606 Patent col.2 ll.50–53, col.3 ll.25–26,
col.4 l.67 – col.5 l.5, col.5 ll.9–11. Extrinsic evidence: Merriam Webster’s Collegiate
Dictionary (11th ed. 2003) (“scan”) (Plaintiff’s Ex. 26, Dkt. No. 128-26).
Plaintiff replies that instead of limiting the invention to the description, the patent notes
that “the disclosed embodiment is merely exemplary of the principles of the invention, which
may be embodied in various forms.” No. 142 at 11. Specifically, Plaintiff contends, the invention
includes virtual models and scanners—it is not limited to physical models and scanners. Id. at
10–11.
Plaintiff cites further intrinsic evidence to support its position: ’606 Patent col.3 ll.17–
29, col.4 ll.41–45.
Analysis
The issue in dispute here is whether the “three-dimensional model” and “scanning”
limitations are necessarily physical. They are.

36

“Scanning” is described in the patents as a physical process and the extrinsic evidence of
record establishes that it is a physical process. That is, the Court understands the plain and
ordinary meaning of “scanning,” in the context of the ’606 Patent, to refer to a physical process
to collect information about the real world for use on a computer. For example, in describing the
prior-art approach to manufacturing the abutment core and the coping, the patent provides that a
“stone model of the patient’s mouth is prepared from a master impression,” a lab technician will
then “fit the metal portion of the abutment into the appropriate implant analog location in the
model,” and “modifies the ceramic portion [of the abutment] by grinding down the factory
sintered Zirconia ceramic piece” to the appropriate shape, and scans the modified abutment
“which is located in the model.” ’606 Patent col.1 ll.53–67. The “data from the scan” is used to
make the coping. Id. at col.1 l.67 – col.2 l.4. Here, the physical nature of the model and scanning
is clear, for example, from the material of the model and abutment (“stone” model, “metal” and
“ceramic” abutment), the method of preparing the model (from an “impression”), and the method
of shaping the abutment (“grinding”). The Court similarly understands the “model” and
“scanning” of the described embodiments to be physical. For example, the patent provides an
overview of the process: a “lab technician will fit the metal portion of the abutment in the
appropriate location in the model,” “the model will then be scanned” to collect data, and that data
will be used with “stored data” about the abutment to design the core and coping. Id. at col.49–
62 (emphasis added); see also, id. at col.4 l.65 – col.5 l.21 (same), Claim 1 (“storing” data about
the abutment, “scanning” the model to acquire data, and using the stored and scanned data to
design the core and coping). This contrast between stored data and scan data strongly suggest
that the scan data was not already stored in a computer—it is data acquired from the real world

37

for use in a computer. “Scanning” is the process of acquiring that real-world data—a physical
process.
The Court’s understanding of “scanning” comports with the customary meaning of
“scanning.” Specifically, the extrinsic evidence of record establishes that “scanning” is a
physical process. “Scan” is defined in relevant part as: “to examine systematically (as by passing
a beam of radiation over or through) in order to obtain data for display or storage <scanned the
patient’s heart> <radar [scans] the horizon> <[scans] the photos into the computer>.” Merriam
Webster’s Collegiate Dictionary 1107–08 (11th ed. 2003), Dkt. No. 128-26 at 2–3. Notably, this
definition does not refer to manipulating data to obtain data, as is encompassed by Plaintiff’s
advocated understanding of “scanning,” but uniformly refers to examining physical objects to
obtain data.
Because the Court determines that “scanning” is a physical act and because the described
three-dimensional models are all physical models, the Court determines that the models of the
’606 Patent are physical models. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (“‘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.’”
(quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
Accordingly, the Court determines that “scanning” has its plain and ordinary meaning,
which does not encompass “obtaining data about a mathematical or graphical representation of
an object,” and requires no further construction. The Court construes “three-dimensional model”
as follows:


“three-dimensional model” means “physical three-dimensional model.”

38

B-2.

“implant abutment insert,” “core,” and “core blank”

Disputed Term
“implant abutment insert”


’606 Patent Claim 1

“core”


’606 Patent Claims 1, 12

“core blank [material]”


’606 Patent Claim 5

Plaintiff’s Proposed
Construction
“a reference of known
standard size and shape for
use in design of a core or
abutment and coping”

Defendants’ Proposed
Construction
“lower insert portion of a
two-piece abutment”

“the central or foundational
part of a tooth restoration;
abutment”

“upper portion of a two-piece
abutment”

“a form for a core component
from which a core of a tooth
restoration is manufactured”

“cylindrical block with an
axis running through it”

Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that the ’606 Patent expressly contemplates one-piece abutments in that
it teaches “the material and process allow one piece ceramic/zirconium abutments.” Dkt. No. 128
at 22, 24 (quoting ’606 Patent col.2 ll.43–44). Plaintiff further submits that the “implant
abutment insert” is simply a design reference, and does not necessarily support the restoration or
serve as a mounting point for the core. Id. at 22–23. According to Plaintiff, the patentee used the
terms “core” and “abutment” interchangeably in prosecution and such use comports with the
ordinary meaning of the term. Id. at 25 (citing ’606 Patent File Wrapper November 16, 2010
Amendment 9, Dkt. No. 128-11 at 3; Mosby’s Dental Dictionary 137 (2004), Dkt. No. 128-12 at
2). Plaintiff further contends that the embodiment of Figures 6a and 6b of the patent show that
the core is milled from a “core blank” and that such a milled product would be the entire
abutment. Id. at 24. And, Plaintiff submits, the “core blank” may be of any shape or dimension,
and specifically is not limited to a cylindrical block. Id. at 27–28.
39

In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’606 Patent figs.2–5, 6a, 6b, col.2 ll.41–44,
col.5 ll.30–38, col.5 l.42 – col.6 l.18; ’606 Patent File Wrapper November 16, 2010 Amendment
(excerpts) (Plaintiff’s Ex. 11, Dkt. No. 128-11). Extrinsic evidence: Mosby’s Dental Dictionary
(2004) (“core”) (Plaintiff’s Ex. 12, Dkt No 128-12).
Defendants respond that “implant abutment insert” refers to the insert piece of the
abutment and that “core” refers to the piece of the abutment that fits over the insert—that is, the
abutment comprises two pieces, the “implant abutment insert” and the “core.” Dkt. No. 138 at
20–21. Defendants contend that the “instant invention” of the ’606 Patent, throughout its
prosecution history, is described as including an abutment comprising two pieces, an insert and a
core. Id. at 21–23. Defendants further contend that a plain meaning of the claim language evinces
that the “core” and “implant abutment insert” together form the abutment as it requires the core
to “fit over” the insert. Id. at 22.
According to Defendants, the only mention of a one-piece abutment in the patent
establishes that the patentee did not possess a method for making such, and therefore such an
abutment is outside of the scope of the invention:
The objects of the instant invention are accomplished through the use of a system
that includes a two piece abutment similar to that described above (until such
time as the material and process allow one piece ceramic/zirconium abutments).
Id. at 24 (quoting ’606 Patent col.2 ll.41–44 (emphasis added by Defendants)). Further,
Defendants argue, the embodiment of Figures 6a and 6b is the same “core” that fits over the
insert as elsewhere described in the patent as it designated by the same item number, 40, in the
description and figures. Id. (citing ’606 Patent col.5 ll.55–56). And Defendants argue the
“implant abutment insert” is never described as simply a reference but, rather, as the lower
portion of the abutment. Id. (citing ’606 Patent figs.2–5, col.5 ll.30–38).
40

With respect to the “core blank,” Defendants respond that it is distinct from the “block”
from which the coping is milled in Claim 5 and should be construed accordingly. Id. at 28–29.
Thus, Defendants argue, the “core blank” of the claims should construed as the core blank is
described and depicted—a cylinder with an axis depicted at various angles. Id.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: Intrinsic evidence: ’606 Patent figs.2–5, 6a, 6b, col.2 ll.41–45, col.2 l.54,
col.2 ll.56–60, col.3 ll.19–21, col.3 ll.29–31, col.3 l.33, col.3 ll.39–42, col.3 ll.59–61, col.3 l.66,
col.4 l.67 – col.5 l.6, col.5 l.13, col.5 l.16, col.5 l.25, col.5 ll.30–38, col.5 l.40, col.5 l.52 – col.6
l.15; U.S. Patent Application No. 60/543,0388 (Defendants’ Ex. H, Dkt. No. 138-9); U.S. Patent
Application No. 60/566,8559 (Defendants’ Ex. I, Dkt. No. 138-10); ’606 Patent File Wrapper
September 17, 2008 Application (Defendants’ Ex. J, Dkt. No. 138-11), September 24, 2010
Office Action (Defendants’ Ex. K, Dkt. No. 138-12), January 4, 2011 Supplemental Amendment
(Defendants’ Ex. L, Dkt. No. 138-13).
Plaintiff replies that the abutments of Figures 6a and 6b are one-piece abutments. Dkt.
No. 142 at 12 (citing ’606 Patent File Wrapper September 17, 2008 Drawings at figs.6a, 6b, Dkt.
No. 142-3 at 8). Plaintiff further replies that a related patent application recognizes that
abutments may be one piece. “it would be beneficial to provide a system for simultaneously
manufacturing a custom dental crown coping and ceramic infrastructure (abutment or ceramic
portion of the abutment if two piece).” Id. (quoting U.S. Patent No. 61/099,56610 ¶ [0005], Dkt.

8

The ’606 Patent claims priority to and incorporates U.S. Patent Application No. 60/543,038.
’606 Patent, at [60] Related U.S. Application Data, col.1 ll.7–14.
9
The ’606 Patent claims priority to and incorporates U.S. Patent Application No. 60/566,855.
’606 Patent, at [60] Related U.S. Application Data, col.1 ll.7–14.
10
U.S. Patent Application No. 61/099,566 incorporates the application that issued as the ’606
Patent and purports to be a continuation-in-part of the ’606 Patent’s application. U.S. Patent
Application No. 61/099,566 ¶ [0001], Dkt. No. 142-1 at 3.
41

No. 142-1 at 5). Plaintiff further replies that the core need not fit over the insert used for the scan
so long is it “fits over the shape from the stored data” for the insert. Id. And Plaintiff replies that
the “core blank” is not a block and is not necessarily a cylinder. Id. at 13.
Plaintiff cites further intrinsic evidence to support its position: ’606 Patent col.2 ll.57–
60; ’606 Patent File Wrapper September 17, 2008 Drawings (Plaintiff’s Ex. 30 Dkt. No. 142-3);
U.S. Patent Application No. 61/099,566 (Plaintiff’s Ex. 28, Dkt. No. 142-1).
Analysis
There are three issues in dispute with respect to these terms. First, whether the abutment
of the ’606 Patent’s invention is necessarily a two-piece abutment. Second, whether the “implant
abutment insert” is the insert that is actually used with the implant. Third, whether the “core
blank” is necessarily a cylindrical block. With respect to the first issue, the Court determines that
the abutment of the patent’s invention is not necessarily a two-piece abutment. With respect to
the second issue, the Court determines that the “implant abutment insert” is an insert portion of
an abutment (whether two-piece or one-piece), and not merely a reference. And with respect to
the third issue, the Court determines that the “core blank” is not necessarily a cylindrical block.
The “implant abutment insert” and “core” are two portions of an implant abutment. The
’606 Patent refers to abutments with two portions, an insert (metal) portion and a core (ceramic)
portion. See, e.g., ’606 Patent, at [57] Abstract (“A metal portion (base) of an abutment is located
in a model of a patient's mouth and the model is scanned. The data from the scan is then utilized
to manufacture the ceramic portion of the abutment and the coping.”), col.1 ll.42–46 (noting that
in the prior art “[t]he ceramic portion of the abutment, which is cemented to the metal portion in
the lab prior to constructing the crown coping, simulates a laboratory analog of a prepared tooth
stump base for fabrication of a custom crown coping”), col.2 ll.45–48 (“The metal insert portion

42

of the abutment is a standard piece. The ceramic portion of the abutment becomes a custommade piece, which is manufactured at the same time the coping is manufactured.”). The patent
provides an overview description of the manufacturing process, referring to the portions of the
abutment and the role each portion has in the process:
a lab technician will fit the metal portion of the abutment into the appropriate
location in the model. The model will then be scanned. . . . The data from the
scan, along with stored data about the standard shape of the metal insert to which
the ceramic portion is to be mounted, is used to determine and design the
appropriate shape for the ceramic portion of the abutment.
Id. at col.2 ll.51–60. In a more detailed description, the patent provides:
Referring to FIG. 2 is a schematic of the method of manufacturing custom crown
copings and infrastructures of the instant invention. As is shown in FIG. 2, the
manufacturing method of the instant invention begins with the purchase of the
metal portion of the abutment from a manufacturer. The abutment is located in a
model of the patient's mouth and the metal portion of the abutment, which is
located in the model, is scanned. The data from the scan is then utilized to
manufacture the ceramic portion of the abutment and the coping.
Id. at col.4 l.65 – col.5 l.6. That is, the abutments that are customized according the invention
have two portions, and insert portion and a core portion.
While the customized abutment of the invention may comprise two portions, these
portions are not necessarily separate pieces—the abutment is not necessarily a two-piece
abutment. The problem the invention sets forth to solve is stated as follows: “Therefore, it would
be beneficial to provide a system for simultaneously manufacturing a custom dental crown
coping and ceramic infrastructure (abutment or ceramic portion of the abutment if two piece) to
reduce the amount of labor, time and materials.” Id. at col.2 ll.25–29 (emphasis added). That is,
the problem to be addressed by the invention exists for abutments that may be—but are not
necessarily—two pieces. In the context of this problem, the patent provides certain objectives of
the invention:

43

A principal object of the instant invention is to provide a system for
simultaneously or mechanico-sequentially fabricating a custom dental crown
coping and infrastructure (abutment) to reduce the amount of labor, time and
materials. The process is accomplished by integrating, sharing and interpreting
stored Cad/Cam digital job information and CNC machining programs to achieve
optimized custom milling results.
The objects of the instant invention are accomplished through the use of a system
that includes a two piece abutment similar to that described above (until such
time as the material and process allow one piece ceramic/zirconium abutments).
The metal insert portion of the abutment is a standard piece. The ceramic portion
of the abutment becomes a custom-made piece, which is manufactured at the
same time the coping is manufactured.
’606 Patent col.2 ll.33–48 (emphasis added). This does not mean that the “instant invention” is
limited to two-piece abutments, as Defendants contend. Rather, it means that the invention is
agnostic on the issue of whether the abutment is one-piece or two-piece. That is, the invention—
a manufacturing process—will work with a two-piece abutment and with a one-piece abutment,
when the one-piece abutment becomes available.
As stated above, the “implant abutment insert” is a portion of an abutment. But the patent
provides that this “insert portion of the abutment is a standard piece” with a “standard shape.” Id.
at col.2 l.45–59; see also, id. at col.3 ll.17–24 (“a custom crown core and custom crown coping
is made for use with an off-the-shelf lower abutment portion” (emphasis added)). That is, the
insert is not a unique or custom part—it is standardized. All inserts of a particular type are the
same—they have a standard “size and shape.” See, e.g., id. at col.3 ll.22–24 (“[i]nformation
regarding the size and shape of the off-the-shelf pieces are stored in a data file or library”). So,
while the patent is clear that the “implant abutment insert” is a physical portion of an implant
abutment, the Court discerns no reason that the insert fitted into the model of a patient’s mouth
must be the same physical piece that is ultimately placed in the patient’s mouth.
Finally, a “core blank” is not simply a form or a cylindrical block, it is material that has
been pre-formed partially in the shape of a core. The ’606 Patent does not provide much in the
44

way of a description of a “core blank” other than it is something from which a core can be
milled. ’606 Patent col.5 l.52 – col.6 l.15. The exemplary blanks come loaded in a frame at
different angles, with each angle corresponding to a different implant angle. Id. And the blanks
come in different sizes, each size also corresponding to a different implant angle. Id. This does
not distinguish a blank from a block, but rather defines how the blanks are fed to the milling
machine for manufacture. The prosecution history provides more guidance. Specifically, Figure
6a as originally filed denotes the blanks with “Implant Connection & Emergence pre-milled.”
’606 Patent File Wrapper September 17, 2008 Drawings, fig.6a, Dkt. No. 142-3 at 8. From this,
the Court understands that the critical characteristic of the blank it that it has part of the core
shape pre-formed, it is pre-formed toward the shape of the core.
Accordingly, the Court construes “implant abutment insert,” “core,” and “core blank” as
follows:


“implant abutment insert” means “lower insert portion of an abutment”;



“core” means “upper portion of an abutment”; and



“core blank material” means “material partially formed toward the shape of the
core.”
B-3.

Disputed Term
“at the same time”


’606 Patent Claim 1

“at the same time”
Plaintiff’s Proposed
Construction
“referencing data sets for the
core and coping concurrently
or so close in time as to
appear concurrent”

45

Defendants’ Proposed
Construction
“simultaneously and from
that same data”
Alternative Construction:
 indefinite

The Parties’ Positions
Plaintiff submits the ’606 Patent describes that the core and coping are designed “at the
same time” in that they are designed in conjunction. Dkt. No. 128 at 25 (citing ’606 Patent col.2
ll.56–62, col.5 ll.15–21). This, according to Plaintiff, was explained by the patentee in
prosecution—the core and coping were designed in concert rather than designing the coping only
after the core was designed and manufactured, as was previously done in the art. Id. at 25–26.
Plaintiff contends that this meaning of “at the same time” comports with independent Claims 10
and 11, one of which requires the coping to be designed after the core, the other requires that the
core design be based on the coping design, even while the claim from which they depend
requires that design of the core happen at the same time as design of the coping. Id. at 26.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’606 Patent col.2 ll.25–29, col.2 ll.33–40,
col.2 ll.56–62, col.3 ll.46–50, col.5 ll.15–21; ’606 Patent File Wrapper November 16, 2010
Amendment (excerpts) (Plaintiff’s Ex. 11, Dkt. No. 128-11). Extrinsic evidence: Merriam
Webster’s Collegiate Dictionary (11th ed. 2003) (“concurrent”) (Plaintiff’s Ex. 27, Dkt. No. 12827); Merriam Webster’s Collegiate Dictionary (11th ed. 2003) (“simultaneous”) (Plaintiff’s Ex.
23, Dkt. No. 128-23).
Defendants respond that construing “at the same time” to encompass “so close in time as
to appear concurrent” would result in an uninformed term of degree and therefore render the
claims indefinite. Dkt. No. 128 at 25–27. Defendants further argue that dependent Claims 10 and
11 should not be used to change the meaning of “at the same time” and that those claims are
invalid because they fall outside of the scope of the claim from which they depend. Id. at 26 &
n.7. Specifically, Defendants contend that the core and coping can’t be designed “at the same

46

time,” as required by Claim 1, and also be designed in sequence, as required by Claims 10 and
11. Id. at 26.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’606 Patent File Wrapper November 16,
2010 Amendment (excerpts) (Plaintiff’s Ex. 11, Dkt. No. 128-11). Extrinsic evidence: Merriam
Webster’s Collegiate Dictionary (11th ed. 2003) (“concurrent”) (Plaintiff’s Ex. 27, Dkt. No. 12827); Merriam Webster’s Collegiate Dictionary (11th ed. 2003) (“simultaneous”) (Plaintiff’s Ex.
23, Dkt. No. 128-23).
Plaintiff replies that the claim language is “at the same time,” not “simultaneously.” Dkt.
No. 142 at 12–13. Plaintiff further replies that whether the components are designed close
enough in time so as to be designed “at the same time” is satisfied by an objective measure, i.e.,
whether they appear to be concurrent. Id.
Analysis
The issue in dispute distills to whether “at the same time” means “simultaneously.” It
does not.
In the context of the ’606 Patent, design of the core and coping happens “at the same
time” when they are designed in conjunction—without an intervening manufacture of the core.
For instance, the patent describes the prior-art approach as first using model-scan data to design
and manufacture the core and then designing the coping based on scan data for the manufactured
core. See, e.g., ’606 Patent fig.1, col.4 ll.49–64. The approach of the invention is different in that
the design of the coping is based not on the manufactured core, but rather on the model-scan data
or the design of the core. Id. at fig.2, col.4 l.65 – col.5 l.21. Alternatively, the core design can be
based on the coping design. Id. at col.6 ll.19–34. That is, the design of the coping and the design

47

of the core occur contemporaneously, with the design of one informing the design of the other or
both being designed from the same data.
The Court’s understanding comports with the use of “at the same time” in Claims 10 and
11. Claim 10 recites “designing the coping to fit over the core once the core is designed.” This is
the scenario in which the coping is designed using the core design or using same data as used for
the core design. Claim 11 recites “subtracting a thickness of the coping from the coping shape to
form a shape and orientation of the core.” This is the scenario in which the coping design
informs the core design. And the coping and cores of these claims are designed at the same time
in that they are designed without an intervening manufacturing step—they are designed
contemporaneously.
Accordingly, the Court construes “at the same time” as follows:


“at the same time” means “contemporaneously and in conjunction.”
B-4.

“coping”

Disputed Term
“coping”


’606 Patent Claims 1, 12

Plaintiff’s Proposed
Construction
“a structure disposed over an
abutment which may be the
final shape of the tooth
replacement or may itself be
an intermediate structure to
the final shape”

Defendants’ Proposed
Construction
“substructure layer
supporting a crown and
covering an abutment”

The Parties’ Positions
Plaintiff submits the ’606 Patent teaches that the coping may be the final shape of the
tooth replacement, and therefore need not support a crown. Dkt. No. 128 at 27 (citing ’606 Patent
col.2 ll.7–10).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’606 Patent fig.5, col.2 ll.7–10, col.3 ll.53–
48

58; U.S. Patent Application No. 60/543,03811 (Plaintiff’s Ex. 13, Dkt. No. 128-13). Extrinsic
evidence: Mosby’s Dental Dictionary (2004) (“coping”) (Plaintiff’s Ex. 8, Dkt No 128-8).
Defendants respond that the “coping” of the ’606 Patent necessarily supports a crown
because it is understood that way in the art, it is described that way in the exemplary
embodiments, and it is described that way in the claims. Dkt. No. 138 at 27–28. Specifically,
Defendants contend that Claims 11 and 12 both require that the coping shape depends on, and is
not coextensive with, the crown shape. Id. at 27. This, Defendants argue, evinces that a coping is
not a crown. Id. Defendants contend that the description of building up the coping to resemble
the tooth further evinces that a coping is not a crown. Id. at 27–28. That is, the patent’s
description that “the coping is completed, and built-up with porcelain to resemble a natural
tooth” indicates that the coping is an intermediate structure on which a veneer crown is built. Id.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’606 Patent, at [57] Abstract, figs.4, 5,
col.3 ll.55–56, col.5 ll.38–51, col.6 ll.31–32. Extrinsic evidence: Mosby’s Dental Dictionary
(2004) (“coping”) (Plaintiff’s Ex. 8, Dkt No 128-8).
Plaintiff replies that a coping can function as a crown, as recognized in a ’606 Patent
priority application: “In the context of the Lava TM System, a Computer Numeric Control
(CNC) Machine is utilized to manufacture the coping by milling a block to the shape of the
crown.” Dkt. No. 142 at 13 (quoting U.S. Patent Application No. 60/543,038 at 1, Dkt. No. 12813 at 3).

11

The ’606 Patent claims priority to and incorporates U.S. Patent Application No. 60/543,038.
’606 Patent, at [60] Related U.S. Application Data, col.1 ll.7–14.
49

Analysis
The parties dispute whether the “coping” of the ’606 Patent necessarily supports a crown.
In the context of the ’606 Patent, the “coping” of the claims is a “crown coping” and therefore is
meant to support a crown.
The “coping” of the claims of the ’606 Patent is a “crown coping.” For example, Claim 1
and Claim 12 each recite “a method of manufacturing custom crown copings.” The abstract
provides the that patent is directed to a “method of manufacturing custom crown coping.” ’606
Patent, at [57] Abstract. And the summary of the invention provides that a “principal object of
the instant invention is to provide a system for . . . fabricating a custom dental crown coping.” Id.
at col.2 ll.33–35; see also, id. at col.6 ll.27–29 (referring to the “custom dental crown coping . . .
of the instant invention”). The Court understands from these repeated references to the “crown
coping” that the “coping” of the claims is a “crown coping.”
As set forth above, the Court understands a “coping” to be a covering or a cap. With that
understanding, a crown coping is a covering or cap to support a crown. The description of a
coping that Plaintiff contends is a description of coping without a crown is not. In relevant part,
the patent provides that “[o]nce the coping is completed, and built-up with porcelain to resemble
a natural tooth, the entire piece (coping and abutment) is ready for placement in the patient’s
mouth. The crown coping/crown is cemented conventionally (like any crown to a tooth) to the
installed abutment.” ’606 Patent col.2 ll.7–12. The Court understands the porcelain build up on
the coping is the crown, not the coping. With this veneer, the coping is the “crown
coping/crown”—it is the combination of coping and crown.
Accordingly, the Court construes “coping” as follows:


“coping” means “covering or cap to support a crown.”

50

C.

U.S. Patent No. 8,751,031
C-1.

“single master electronic file”

Disputed Term
“single master electronic file”


’031 Patent Claim 1

Plaintiff’s Proposed
Construction
“a single collection of data
pertaining to a main or
critical subject matter for use
by a computer program”

Defendants’ Proposed
Construction
“exactly one computer file
containing all scan and design
data for a restoration for use
by a computer program”

Alternative Construction:
 “a single collection of
data pertaining to
manufacturing
components for a dental
restoration for use by a
computer program”
The Parties’ Positions
Plaintiff submits that a “file” is a collection of related data, and need not be “exactly one
electronic file.”12 Dkt. No. 128 at 29. This, according to Plaintiff, is evinced by the ordinary
meaning of “file”—“a collection of related data records (as for a computer)”—and by the ’031
Patent’s depiction of an exemplary master file in Figure 9 as containing multiple data sets. Id.
(citing Merriam Webster’s Collegiate Dictionary 467 (11th ed. 2003), Dkt. No. 128-14 at 2; ’606
Patent fig.9). Plaintiff submits that the term “single” was inserted into the claim in order to
distinguish a prior-art approach that used multiple digital models to produce a single component.
Id. at 29–30. Plaintiff further submits that the master file need not include “all scan and design
data” because the patent discloses that the file may be created by means other than a scan. Id. at
30 (citing ’031 Patent col.4 ll.64–66).

12

Defendants originally proposed that “single master electronic file” be construed as “exactly
one electronic file containing all scan and design data for a single restoration for use by a
computer program.” Exhibit A to Joint Claim Construction and Prehearing Statement 6, Dkt. No.
111-1 at 6.
51

In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’031 Patent fig.9, col.3 ll.38–42, col.4 ll.64–
66, col.5 ll.1–6; ’031 Patent File Wrapper December 3, 2013 Amendment – RCE (Plaintiff’s Ex.
16, Dkt. No. 128-16). Extrinsic evidence: Merriam Webster’s Collegiate Dictionary (11th ed.
2003) (“file”) (Plaintiff’s Ex. 14, Dkt. No. 128-14); Microsoft Computer Dictionary (5th ed.
2002) (“file”) (Plaintiff’s Ex. 15, Dkt. No. 128-15).
Defendants respond that the ’606 Patent’s prosecution history establishes that the “single
master electronic file” is exactly one file. Dkt. No. 138 at 30–31. Specifically, Defendants argue,
the word “single” was added to the claims in prosecution in order to distinguish the “single
master electronic file” from the “multiple digital models” of a prior-art reference. Id. at 30–31.
Defendants further respond that the patent describes the contents of the master file: “the master
file includes scan data regarding the operative arch and preparation area, as well as the software
generated (virtual) final external shape of the restoration(s) to fit over the preparation area(s).”
Id. at 32 (quoting ’031 Patent col.8 ll.48–53 (Defendant’s modifications omitted)). And,
Defendants argue, the “other data” the Plaintiff argues may be in the master file is also described
in the patent as “scan data”: “a 3D scan, or other digital, electronic or virtual input of information
relating to the real condition of the a patient's mouth (i.e. scanning a patient’s mouth,
impression taken from the mouth, or a model constructed from an impression taken from the
mouth).” Id. at 32 (quoting ’031 Patent col.4 l.64 – col.5 l.1 (emphasis added by Defendants)).
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’031 Patent col.3 ll.38–42, col.4 ll.64–66, col.8 ll.48–53; ’031 Patent File
Wrapper June 29, 2012 Amendment (Defendants’ Ex. M, Dkt. No. 138-14), October 18, 2012

52

Office Action (Defendants’ Ex. N, Dkt. No. 138-15), December 3, 2013 Amendment – RCE
(Plaintiff’s Ex. 16, Dkt. No. 128-16).
Plaintiff replies that “single master electronic” file should be construed to give effect to
“master.” Dkt. No. 142 at 14. This, according to Plaintiff, means that the master file “controls the
operation of” separate data collections. Id. Plaintiff further replies that the ’031 Patent describes
that the master file includes scan data, it does not require the master file to include “all” scan
data. Id.
Plaintiff cites further intrinsic and extrinsic evidence to support its position: Intrinsic
evidence: ’031 Patent fig.11, col.8 l.48. Extrinsic evidence: Merriam Webster’s Collegiate
Dictionary (11th ed. 2003) (“master”) (Plaintiff’s Ex. 29, Dkt. No. 142-2).
Analysis
There are two issues in dispute: First, whether the “single master electronic file” is
exactly one file. Second, whether this file contains “all” the scan and design data for a
restoration. With respect to the first issue, the Court determines that the “single master electronic
file” is one electronic file. With respect to the second issue, the Court determines that the while
this master file directs manufacturing efforts, what it includes is set forth in the claims: “a virtual
model including a final external shape of a virtual ideal tooth replacement of a restoration for a
patient.”
The master file is the file used to manufacture components. For example, the ’031 Patent
explains that the “master file . . . may be utilized to design any component . . . of the dental
restoration.” ’031 Patent fig.9, col.8 ll.34–39. The patent further explains that “the master file
may be utilized to make any of the components . . . of the restoration.” Id. at col.8 ll.48–64. But
the patent also explains that “completed design files are saved for manufacture . . . the data in the

53

stored digital/electronic files are accessed and utilized . . . to aid in the design and/or
manufacture of ‘companion’ or ‘collateral’ components.” Id. at col.18 ll.51–56 (emphasis
added); see also, id. at col.6 ll.3–7 (“Information regarding the size and shape of the off-the-shelf
pieces are stored in a data file or library accessed by a milling machine (such as a DCS milling
machine) or otherwise accessed as part of the CAD process (i.e. by the central control system).”),
col.11 ll.19–21 (referring to the “library of shapes and sizes that will be utilized in designing
components through the instant invention”), col.13 ll.17–20 (“The custom ceramic portion of the
abutment 40 will be designed to have predetermined minimum dimensions 42 (stored in
library).”). The Court understands this to mean that while the data may exist in multiple
computer files (e.g., in a library), the single master file coordinates or directs any design or
manufacture based on the data. See id. at col.7 ll.66–67 (“The inventive system provides an
automated CAD/CAM dental manufacturing system that creates a virtual replacement tooth file
that directs subsequent deconstructive component design.” (emphasis added)).
The prosecution history does not dictate Defendants’ proposed “exactly one computer file
containing all scan and design data.” In distinguishing a prior-art reference (“Schmitt”), the
patentee argued that
Schmitt fails to disclose a single master file that is utilized to manufacture two
or more components of a single artificial tooth of a dental restoration in the
manner currently claimed by the Applicant. To the contrary, Schmitt utilizes
multiple digital models to produce a single component (the “substructure”).
Moreover, the component of Schmitt is not an artificial tooth, it does not replace
the tooth structure at all. Instead, the component of Schmitt is a substructure to
support an artificial tooth/teeth that is manufactured separately from the
substructure.
’031 File Wrapper December 3, 2013 Amendment – RCE at 8, Dkt. No. 128-16 at 9 (emphasis in
original). Thus, the patentee distinguished its claimed invention from the prior art in that the
prior art “utilizes multiple digital models to produce a single component” that is not an artificial
54

tooth, but rather is the structure to support to support an artificial tooth (or teeth). The patentee
characterized the prior-art reference in three relevant ways, it: (1) “utilizes multiple digital
models,” (2) “to produce a single component,” (3) that is “not an artificial tooth.” See also, ’031
File Wrapper December 3, 2013 Amendment – RCE at 8 (amended claim), Dkt. No. 128–16 at 6.
It is unclear how these characterizations pertain to how data is stored. Indeed, how the prior-art’s
model data is stored is not mentioned in the patentee’s remarks. Thus, it is not clear that “a single
master electronic file including a virtual model” is distinct from “multiple digital models” in the
way the Defendants contend. Simply, the prosecution history cited by Defendants does not give
rise to a disclaimer of any way of storing manufacturing data other than “exactly one computer
file containing all scan and design data.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d
1315, 1325 (Fed. Cir. 2013) (“in order for prosecution disclaimer to attach, the disavowal must
be both clear and unmistakable”).
Finally, the extrinsic evidence establishes that, as relevant here, an electronic file is a
collection of related records treated as a unit by a computer application. See, e.g., Merriam
Webster’s Collegiate Dictionary 467 (11th ed. 2003) (defining “file,” in relevant part, as “a
collection of related data records (as for a computer)” and “a complete collection of data (as text
or a program) treated by a computer as a unit esp. for purposes of input and output”), Dkt. No.
128-14 at 2; Microsoft Computer Dictionary 211 (5th ed. 2002) (defining “file,” in relevant part,
as “[a] complete, named collection of information, such as a program, as set of data used by a
program, or a user-created document”), Dkt. No. 128-15 at 2.
Accordingly, the Court construes “single master electronic file” as follows:


“single master electronic file” means “single complete collection of data treated
by a computer as a unit that directs component manufacture.”

55

C-2.

“virtual ideal tooth replacement of a restoration”

Disputed Term
“virtual ideal tooth
replacement of a restoration”


’031 Patent Claim 1

Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
“a mathematical or graphical indefinite
representation of a conception
of a tooth, for a crown,
bridge, partial denture, or
complete denture, that
restores or replaces lost tooth
structure”

The Parties’ Positions
Plaintiff submits that “ideal” is used here to denote that the tooth replacement is
conceptual, not actual. Dkt. No. 128 at 31–32. Specifically, Plaintiff contends, “ideal” is not used
to denote that the tooth replacement is “perfect” but rather that it is the product of design process
that is based on approximations and preferences. Id.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’031 Patent col.8 l.50, col.15 ll.17–20,
col.16 ll.11–14, col.16 ll.24–34, col.16 ll.63–64, col.18 ll.25–29. Extrinsic evidence: Merriam
Webster’s Collegiate Dictionary (11th ed. 2003) (“ideal”) (Plaintiff’s Ex. 17, Dkt. No. 128-17);
Mosby’s Dental Dictionary (2004) (“restoration”) (Plaintiff’s Ex. 18, Dkt No 128-18).
Defendants respond that whether a tooth replacement is “ideal” is subjective and the ’031
Patent does not provide guidance as to what constitutes “ideal.” Dkt. No. 138 at 33. Thus,
Defendants conclude, the term renders the claims indefinite. Id. And, according to Defendants,
redefining “ideal” as “acceptable” does not cure the indefiniteness problem as “acceptable” is
also subjective. Id. Defendants further respond that interpreting “ideal” to mean any conception
of a tooth would make “ideal” mere surplusage in the phrase “virtual ideal tooth replacement.”
Id. Defendants also argue the Plaintiff’s proposed construction improperly broadens the
56

“restoration” of the patent to include dentures and needlessly rewrites “virtual” as “mathematical
or graphical representation.” Id. at 33–34.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’031 Patent col.18 ll.25–29. Extrinsic
evidence: Giordano Decl.13 ¶¶ 22, 25, 29–30 (Dkt. No. 138-1 at 6–8).
Plaintiff replies that the “ideal” tooth replacement is one that the restoration designer
conceives as appropriate for the specific patient based on that patient’s data. Dkt. No. 142 at 14–
15. And, Plaintiff contends, “an ‘ideal’ conception of a tooth replacement for one [designer] may
differ from another [designer’s] conception for that tooth replacement.” Id. at 15.
Plaintiff cites further intrinsic evidence to support its position: ’031 Patent col.5 ll.30–
38.
Analysis
There are two issues in dispute: First, whether “ideal” in the claims is an uninformed
subjective measure that renders the claims indefinite. Second, whether “restoration” should be
broadly construed to include dentures. With respect to the first issue, the Court determines that
“ideal” here is used to denote that the tooth replacement is conceptual, and not physical. With
respect to the second issue, the Court finds that under its plain and ordinary meaning, a
“restoration” includes dentures and the ’031 Patent uses the term according to its plain and
ordinary meaning.
The patent contemplates using the invention to “visualize the final external shape of the
restoration” regardless of the restoration. ’031 Patent col.15 l.66 – col.16 l.4 (emphasis added).

13

Declaration of Dr. Russel A. Giordano II.
57

For example, the patent describes using an exemplary embodiment to visualize the final shape
for a restoration, “whether a single tooth is being replaced, multiple teeth, a bridge, etc.”:
In a preferred embodiment of the software, the models are die-cut and ditched
prior to scanning (as is shown in FIG. 7) to identify all individual restorations to
be designed and manufactured for the operative arch. Nevertheless, in one
preferred embodiment, although die-cut and ditched prior to scanning, all the
pieces are scanned in a single process and are individually identified by the
software. Identification of the operative arch, the prepared teeth and the opposing
arch are obtained by the software as design input. Depending upon the
restoration being designed (i.e. whether a single tooth is being replaced,
multiple teeth, a bridge, etc.), the software may utilize one or more tooth
libraries that are selected automatically by the software or manually by the
operator to be used to visualize the final external shape of the restoration.
’031 Patent col.15 l.58 – col.16 l.4 (emphasis added). The visualization aid extends to operator
interaction with the modeled restoration to change the restoration to more closely align with what
the operator conceives. See, e.g., id. at col.16 l.59 – col.17 l.2 (“Should fully parametric
modeling of the coping fail to produce an acceptable result the software will provide tools for
manual editing of the coping shape.”). That is, the operator conceives of the restoration he wants
and uses the system to create the model of that conception—to create a virtual representation
(model) of the conceived restoration (ideal).
The Court’s understanding of “ideal” comports with the extrinsic evidence, which allows
that “ideal” refers to “mental images, ideas, or conceptions.” Merriam Webster’s Collegiate
Dictionary 616 (11th ed. 2003), Dkt. No. 128-17 at 2. And it more naturally aligns with the
description of the invention than Defendants’ proposed definition of “ideal” as “perfect.” See
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (“‘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.’” (quoting Renishaw PLC v. Marposs
Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). On this issue, the Court finds that
Defendants’ expert is not credible: he states but ignores the extrinsic evidence that “ideal” refers
58

to “mental images, ideas, or conceptions”—which definition comports with the disclosure of the
’031 Patent—and focuses on an extrinsic definition of “ideal” as “a standard of perfection,
beauty, or excellence”—which finds no support in the patent. Specifically, while the patent states
the invention is to help visualize the restoration (i.e. form mental images of—conceptualize—the
restoration), there is no relevant mention of even the concepts of “perfection, beauty, or
excellence” in the patent.
Given the patent’s open-ended list of applicable restorations, “a single tooth . . ., multiple
teeth, a bridge, etc.,” the patent has not narrowed “restorations” to specific restorations. The term
takes on its plain and ordinary meaning, which includes dentures. Mosby’s Dental Dictionary
549 (2004) (“restoration”), Dkt. No. 128-18 at 2.
Accordingly, the Court determines that Defendants have failed to prove that any claim is
rendered indefinite by the term “ideal” and construes “virtual ideal tooth replacement of a
restoration” as follows:


“virtual ideal tooth replacement of a restoration” means “virtual representation of
a conceived tooth replacement of a restoration.”
C-3.

“utilizing said master file to manufacture”

Disputed Term
“utilizing said master file to
manufacture”


Plaintiff’s Proposed
Construction
Plain and ordinary meaning
of “utilizing” and
“manufacture.”

’031 Patent Claim 1
Alternative Construction:
 “making use of said
master file to make the
components”

59

Defendants’ Proposed
Construction
“creating one or more output
files readable by a CAM
machine from said single
master electronic file to
manufacture”

The Parties’ Positions
Plaintiff submits that other than “said master file,” which is the subject of a separate
dispute, “utilizing said master file to manufacture” consists of terms the meanings of which are
clear without construction, namely “utilizing” and “manufacture.” Dkt. No. 128 at 32. Plaintiff
further submits that the ’031 Patent allows manufacture using the master file without creating
one or more output files readable by a CAM machine as it teaches that “a single software
application may control both the CAD and CAM processes” and that “any CAM machine or
other manufacturing process . . . may be utilized.” Id. at 32–33 (quoting ’031 Patent col.9 ll.7–
10, col.9 ll.39–47).
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’031 Patent col.9 ll.7–10, col.9 ll.39–47.
Extrinsic evidence: Merriam Webster’s Collegiate Dictionary (11th ed. 2003) (“utilize”)
(Plaintiff’s Ex. 19, Dkt. No. 128-19); Merriam Webster’s Collegiate Dictionary (11th ed. 2003)
(“manufacture”) (Plaintiff’s Ex. 20, Dkt. No. 128-20).
Defendants respond that the only way the ’031 Patent describes using the master file to
manufacture is by creating CAM files and the claims should be limited to that embodiment. Dkt.
No. 138 at 34 (citing ’031 Patent col.8 l.65 – col.9 l.1). Further, Defendants contend, the patent
describes the use of CAM as a feature of the “instant invention.” Id. at 34–35 (citing ’031 Patent
col.5 ll.3–5).
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’031 Patent col.5 ll.3–5, col.8 l.65 – col.9 l.1, col.9 ll.46–47.

60

Plaintiff replies the ’031 Patent provides that “any CAM machine or other manufacturing
process . . . may be utilized” and therefore the patent is not limited to CAM machines. Dkt. No.
142 at 15 (quoting ’031 Patent col.9 ll.39–47).
Plaintiff cites further intrinsic evidence to support its position: ’031 Patent col.4 ll.15–
21.
Analysis
The issue here is whether “utilizing said master file to manufacture” necessarily entails
producing one or more files for a CAM machine. It does not.
The ’031 Patent specifically lists examples of manufactures that do not use CAM
machines:
The manufacturing facility shown in FIG. 10 includes CAM machines capable of
manufacturing abutments, temporary crowns, Cores (copings/infrastructures),
crown molds (in the embodiment shown, male and female portions of a two-piece
mold), and ultimately crowns. In the embodiment shown, the crowns must be
pressed using the two-piece crown mold. Thus, it will be necessary to
manufacture the crown molds prior to pressing the crown veneer. All other
components may be manufactured in any order or simultaneously. In a preferred
embodiment, the CAM machines of FIG.10 utilize a continuous production
system as is described in U.S. application Ser. No. 11/023,950. Nevertheless, it
will be appreciated that any CAM machine or other manufacturing process now
known or hereinafter developed may be utilized without departing from the
spirit and scope of the instant invention. For example, pieces may be injection
molded, milled, built-up, sintered, welded, etc.
’031 Patent col.9 ll.26–47 (emphasis added). That is, the patent expressly contemplates injection
molding, milling, building up, sintering, and welding as alternatives to using a CAM machine.
Such a disclosure is inconsistent with limiting to the claims to a CAM machine based on
statements regarding the “instant invention.” See Absolute Software, Inc. v. Stealth Signal, Inc.,
659 F.3d 1121, 1136 (Fed. Cir. 2011) (“we have found that use of the phrase ‘present invention’
or ‘this invention’ is not always [] limiting, such as where the references to a certain limitation as

61

being the ‘invention’ are not uniform, or where other portions of the intrinsic evidence do not
support applying the limitation to the entire patent”).
Accordingly, the Court rejects Defendants’ proposed “creating one or more output files
readable by a CAM machine from said single master electronic file” limitation and determines
that “utilizing said master file to manufacture” has its plain and ordinary meaning without the
need for further construction.
C-4.
Disputed Term

“coordinated,
sequential,
simultaneous or
partly
simultaneous
and partly
sequential,
manner”


’031 Patent
Claim 1

“coordinated, sequential, simultaneous or partly simultaneous
and partly sequential, manner”
Plaintiff’s Proposed Construction

plain and ordinary meaning

Defendants’
Proposed
Construction
indefinite

Alternative Construction:
 “one or more of four processes for
manufacturing, namely: 1) a coordinated manner;
or 2) a sequential manner; or 3) a simultaneous
manner; or 4) a partly simultaneous and partly
sequential manner;
wherein the terms ‘coordinated,’ ‘sequential,’
‘simultaneous,’ ‘partly simultaneous’ and ‘partly
sequential’ each have a plain and ordinary
meaning”

The Parties’ Positions
Plaintiff submits this term is already clear and would not benefit from construction. Dkt.
No. 128 at 33. Plaintiff further submits that the term defines a manner of manufacture that is
distinct from the prior-art approach in which one component (implant abutment) was
manufactured, modified, and scanned before a second component (coping) could be
manufactured. Id. at 33–34 (citing ’031 Patent col.3 ll.26–31).

62

In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’031 Patent figs.10, 10a, col.3 ll.26–31,
col.4 ll.15–21, col.7 ll.61–64, col.8 ll.48–55, col.9 ll.23–25, col.9 ll.28–35; U.S. Patent No.
7,445,44914 col.3 ll.18–26. Extrinsic evidence: Merriam Webster’s Collegiate Dictionary (11th
ed. 2003) (“coordinate”) (Plaintiff’s Ex. 21, Dkt. No. 128-21); Merriam Webster’s Collegiate
Dictionary (11th ed. 2003) (“sequential”) (Plaintiff’s Ex. 22, Dkt. No. 128-22); Merriam
Webster’s Collegiate Dictionary (11th ed. 2003) (“simultaneous”) (Plaintiff’s Ex. 23, Dkt. No.
128-23); Merriam Webster’s Collegiate Dictionary (11th ed. 2003) (“partly”) (Plaintiff’s Ex. 24,
Dkt. No. 128-24).
Defendants respond that there are two possible interpretations of this phrase, and that
there is no way to select between them—so the phrase renders claims indefinite . Dkt. No. 138 at
35. Specifically, Defendants contend that the phrase could mean: (1) “a coordinated, sequential,
simultaneous manner [or] a partly simultaneous and partly sequential, manner” or, as Plaintiff
proposes, (2) “a coordinated manner; [] a sequential manner; [] a simultaneous manner; or [] a
partly simultaneous and partly sequential manner.” Id. at 35–36 (modifications by the Court).
Plaintiff replies that there is only one reasonable interpretation of this phrase as it makes
no sense for the manufacture to be both sequential and simultaneous. Dkt. No. 142 at 10.
Analysis
The only issue in dispute is whether the term has more than one reasonable interpretation.
It does not.
The Court agrees with Plaintiff that an interpretation of this term that requires the manner
of manufacture to be both “sequential” and “simultaneous” is unreasonable.
14

The ’031 Patent claims priority to and incorporates the application that issued as U.S. Patent
No. 7,445,449. ’031 Patent, at [63] Related U.S. Application Data, col.1 ll.8–21.
63

Accordingly, the Court construes “in a coordinated, sequential, simultaneous or partly
simultaneous and partly sequential, manner” as follows:


“in a coordinated, sequential, simultaneous or partly simultaneous and partly
sequential, manner” means “in a coordinated manner, in a sequential manner, in a
simultaneous manner, or in a partly simultaneous and partly sequential manner.”
C-5.

“end-stage materials”

Disputed Term
“end-stage materials”


’031 Patent Claim 1

Plaintiff’s Proposed
Construction
“materials that do not require
material-altering postproduction processes or
transformation”

Defendants’ Proposed
Construction
“materials that do not require
material-altering postproduction processes or
transformation, such as
factory sintered and HIP’d
blocks or rods of zirconia or
medical grade pure titanium”

The Parties’ Positions
Plaintiff submits the ’031 Patent teaches that “‘end stage’ materials” are materials
“requiring no post production material processing or transformation.” Dkt. No. 128 at 35
(quoting ’031 Patent col.5 ll.47–49). Plaintiff argues that Defendants’ proposed exemplary list of
such materials threatens to improperly limit the claims and contradicts the patent’s express
teaching that the material may be “any other suitable end stage material now known or later
discovered.” Id. (quoting ’031 Patent col.5 ll.51–52).
In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to
support its position: ’031 Patent col.4 ll.49–50, col.5 ll.47–52.
Defendants respond that the parties agree on the construction except for the list of
examples in Defendants’ proposed construction and that the Plaintiff does not disagree that the

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items of the list are in fact end-stage materials. Dkt. No. 138 at 36. Defendants contend that the
list of examples will assist the jury. Id.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’031 Patent col.1 ll.45–47, col.2 ll.60–63, col.4 ll.48–50, col.5 ll.47–52,
col.5 ll.61–62.
Plaintiff replies that the examples will not help the jury. Dkt. No. 142 at 16.
Analysis
The parties dispute whether an exemplary list of “end-stage materials” in the construction
of “end-stage materials” is helpful to a jury. The Court determines that such a list will likely not
be helpful to a jury and declines to include such in the construction.
The ’031 Patent defines “end-stage materials”:
As discussed with respect to the prior art, cutting the ceramic pieces in the green
stage is much easier to accomplish than cutting once the pieces have been
sintered. Nevertheless, the sintering process itself is an additional time consuming
step that is required when working with green stage pieces and the shrinkage of
organic shapes such as dental restorations occurs in a nonlinear manner that is
difficult, if not impossible, to quantify in any accurate and reliable equations.
Therefore, in the instant invention the pieces are milled from “end stage”
materials (requiring no post production material processing or transformation)
such as factory sintered and HIP'd blocks or rods of zirconium or medical
grade pure titanium or any other suitable end stage material now known or
later discovered). Cutting of the factory sintered block is slower than cutting from
a green stage blocks; however the additional sintering step is eliminated. The use
of a factory sintered and HIP'd blocks provides additional advantages over the use
of a greenware block, such as allowing larger pieces to be milled from a single
block or rod (i.e. full arches versus single crowns or bridges). In one preferred
embodiment, as is discussed above, any and all crown and bridge Cores, and/or
companion and collateral components are made only from “end-stage” materials
that do not require material-altering post-production processes, such as factory
sintered HIP'd (Heat and Isostatic Pressure).
’031 Patent col.5 ll.39–63 (emphasis added). That is, “end-stage materials” are defined as
“materials that do not require material-altering post-production processes or transformation.”

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The parties agree. This lexicography governs. The parties disagree whether to include examples
from the description in the construction.
The Court declines to include examples from the description in the construction.
Importantly, Defendants’ proposed construction omits “any other suitable end stage material now
known or later discovered.” Including this example in the list essentially converts the list to “any
suitable material,” which adds nothing to the construction. Excluding it from the list threatens to
improperly limit the term beyond the express definition. On whole, the Court finds that
Defendants’ truncated list of examples is improper and the full list of examples is unhelpful.
Accordingly, the Court construes “end-stage materials” as follows:


“end-stage materials” means “materials that do not require material-altering postproduction processes or transformation.”
C-6.

“collateral component”

Disputed Term
“collateral component”


’031 Patent Claim 2

Plaintiff’s Proposed
Construction
plain and ordinary meaning
Alternative Construction:
 “peripheral piece”

Defendants’ Proposed
Construction
“peripheral piece, such as a
mold, that is used to make a
final piece that mates together
with other components of a
restoration”

The Parties’ Positions
Plaintiff submits that the ’031 Patent expressly defines “collateral components” as
“peripheral pieces.” Dkt. No. 128 at 36 (citing ’031 Patent col.4 ll.39–50, col.18 ll.51–63).
Plaintiff objects to Defendants’ proposed “such as a mold” language, arguing that it threatens to
improperly limit the claims and it excludes other exemplary collateral components listed in the
patent, such as “provisional acrylic splints/temporaries.” Id. (quoting 031 Patent col.18 ll.51–62).

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In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to
support its position: ’031 Patent col.4 ll.39–50, col.18 ll.51–63.
Defendants respond that while the ’031 Patent’s definition of a “collateral component”
includes “peripheral piece” the definition further requires that the component is “used to make a
final piece that mates together with other components of a restoration.” Dkt. No. 138 at 36–37
(quoting ’031 Patent col.4 ll.43–45). And, Defendants contend, the exemplary language “such as
a mold” is part of the patent’s definition of collateral component, but is not essential to the
construction so long as the construction expresses that the component is “used to make a final
piece that mates together with other components of a restoration.” Id. at 37.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’031 Patent col.4 ll.43–45, col.18 ll.63–67.
Plaintiff replies that the example will not help the jury and that the “collateral
component” is not limited to one “that is used to make a final piece that mates together with
other components of a restoration” as the ’031 Patent describes that a collateral component may
mate with components other than a restoration. Dkt. No. 142 at 16 (citing ’031 Patent col.18
ll.51–63).
Analysis
The parties dispute whether a collateral piece is necessarily “used to make a final piece
that mates together with other components of a restoration.” It is.
The ’031 Patent defines “collateral component”:
In all software embodiments discussed above, completed design files are saved
for manufacture. In a preferred embodiment, the data in the stored
digital/electronic files are accessed and utilized by the software application to aid
in the design and/or manufacture of “companion” or “collateral” components,
such as implant abutments (made from file data regarding the inside of the crown
Core), provisional acrylic splints/temporaries (made from data regarding the
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whole final restoration/tooth shape), Core overlays (made from data regarding the
exterior of the crown Core), super-molds to form first stage ceramics on Cores,
simultaneous abutments to fit under Cores, other digital/graphic driven services,
etc. As used herein, companion components refer to components that mate
together with each other, while collateral components refer to peripheral pieces,
such as molds, that are used to make a final piece that mates together with
other components of a restoration.
’031 Patent col.18 ll.51–67. This lexicography governs.
Accordingly, the Court construes “collateral component” as follows:


“collateral component” means “peripheral piece, such as a mold, that is used to
make a final piece that mates together with other components of a restoration.”

.
V.

CONCLUSION
The Court adopts the constructions above for the disputed and agreed terms of the

Asserted Patents. Furthermore, the parties should ensure that all testimony that relates to the
terms addressed in this Order is constrained by the Court’s reasoning. However, in the presence
of the jury the parties should not expressly or implicitly refer to each other’s claim construction
positions and should not expressly refer to any portion of this Order that is not an actual
construction adopted by the Court. The references to the claim construction process should be
limited to informing the jury of the constructions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 17th day of October, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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