Mobile Medical International Corporation v. Advanced Mobile Hospital Systems, Inc. et al
Filing
112
MEMORANDUM OPINION AND ORDER: Claim Construction. Signed by Judge William K. Sessions III on 7/24/2013. (law)
UNITED STATES DISTRICT COURT
FOR THE
DISTRICT OF VERMONT
MOBILE MEDICAL INTERNATIONAL
CORPORATION,
Plaintiff,
v.
ADVANCED MOBILE HOSPITAL SYSTEMS,
INC., TRACTUS MEDICAL, INC., and
DOES 1-10,
Defendants.
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MEMORANDUM OPINION and ORDER:
Case No. 2:07-cv-231
CLAIM CONSTRUCTION
Plaintiff Mobile Medical International Corporation (“MMIC”)
seeks a declaratory judgment of invalidity and/or noninfringement of U.S. Patent No. 4,915,435 (“the ‘435 patent”)1
entitled “Mobile Operating Room With Pre and Post-Operational
Areas.”
Defendants Advanced Mobile Hospital Systems, Inc.
(“AMoHS”), and Tractus Medical, Inc. (“Tractus”), its subsidiary,
have counterclaimed for patent infringement.
MMIC filed this lawsuit on October 30, 2007.
AMoHS and
Tractus answered and counterclaimed on January 28, 2008.
MMIC
filed requests for reexamination of the ‘435 patent with the
United States Patent and Trademark Office (“PTO”) on February 25,
2008, and March 29, 2009.
The case was stayed from August 27,
2008 until April 30, 2012, pending the outcome of the
reexaminations.
1
During the first reexamination, the PTO rejected
The ‘435 patent, issued on April 10, 1990, expired on April 5, 2009.
claims 19-25 and 31-35 of the ‘435 patent as unpatentable, and
the patentee canceled the claims.
During the second
reexamination, the PTO examiner rejected the remaining claims,
but was reversed by the Board of Patent Appeals and Interferences
(“BPAI”), which found claims 1-18 and 30 valid in view of the
prior art asserted.
The patent describes a transportable van in which invasive
surgical procedures can be performed.
It includes a laterally
expandable portion that defines the operating room, with an
operating table that need not be removed when the expandable
portion is retracted.
The unit includes all of the essential
facilities for complete invasive surgical procedures, including
pre- and post-op areas.
The parties have sought construction of several terms in
claims 1-18 and 30, and the Court held a Markman hearing on June
7, 2013.
See Markman v. Westview Instruments, Inc., 517 U.S. 370
(1996).
I.
Legal Standards Governing Claim Construction
“‘[T]he claims of a patent define the invention,’” and
determine the scope of the patentee’s 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)).
“[T]he words of a
claim ‘are generally given their ordinary and customary
2
meaning,’. . . the meaning that the term would have to a person
of ordinary skill in the art in question at the time of the
invention.”
Id. at 1312-13 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
A person of ordinary skill in the art is deemed to read the
claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire
patent, including the specification (the written description of
the invention) and the prosecution history of the patent, if it
is in evidence.
Id. at 1313; Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995), aff’d 517 U.S. 370
(1996).
Examination of this intrinsic evidence ordinarily will
resolve any ambiguity in a disputed claim term.
F.3d at 1583.
Vitronics, 90
“[E]xtrinsic evidence, which ‘consists of all
evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and
learned treatises,’” may be useful in claim construction as well,
although it is less significant than the intrinsic record.
Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980).
II.
Discussion
The parties now apparently agree that “invasive surgery”
should be construed as “a therapeutic medical procedure that
involves the introduction of a physical object into or through
human skin.
Likewise they do not dispute that “expand” has its
3
ordinary meaning of “increase volume or scope.”
Several of the disputed claim terms are recited in claim 1
of the ‘435 patent, which is reproduced below with the disputed
claim terms in bold.
1. A mobile invasive surgery van capable of being
transported on the roads and highways and equipped with
essential equipment for invasive surgery to be
performed within the van, said van comprising:
a main body section that is capable of being
towed, mounted on wheels for mobility by a
separate power section;
an expandable portion of said main body provided
by telescoping side sections thereof which
move outwardly from the main body portion in
order to form an expanded invasive surgery
room; and
an operating table centrally located in said
expandable section, said table being stowable
so that the expandable section may be nested
or expanded without removal of said surgery
room operating table from said van.
‘435 patent col.9 l.31-47.
A.
Van (Claims 1-18, 30)
The term appears both in the preamble and in the body of the
claims.
MMIC proposes that the term be construed as “a vehicle
capable of being driven on roads and highways with integral
wheels for transporting goods.”
AMoHS first proposed that the
term be construed as “a unit that has walls enclosing an interior
space and lacks its own source of propulsion,” and now proposes
that the term be construed as “trailer.”
According to MMIC, the
patent describes a motor vehicle that has its own power source.
According to AMoHS, the patent describes a unit that may be
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transported over the roads by a separate power source.
Claim 1 recites that the “van” comprises “a main body
section that is capable of being towed, mounted on wheels for
mobility by a separate power section.”
38.
‘435 patent col.9, l.36-
Similarly, Claim 12 recites that the “van” comprises “a main
body portion being mounted on wheels for mobility by a detachable
trailer section.”
‘435 patent col. 10 l.61-62.
In Claim 30, as
it depends from Claim 26 as it depends from Claim 24, the patent
recites that a mobile invasive surgery structure comprises “a
main van mounted on wheels for mobility by a detachable trailer
section.”
‘435 patent col. 12 l. 15-16.
The specification describes in great detail a unit which
contains all essential facilities for performing surgeries,
including pre- and post-op areas.
Neither in the specification
nor the claims however is there a recitation or description of a
power section that moves the unit.
The patent does not claim
this source of mobility as part of the invention; it simply
claims a unit mounted on wheels that may be moved, noting that it
may be moved by a separate or detachable power source.
For
example, Figure 1, showing a top plan view of a preferred
embodiment of the invention, shows the distinct areas of the
invention, including a surgery area, a pre-op and post-op area, a
toilet and dressing area and a cleanup area.
is labeled “the van.”
‘435 patent fig. 1.
5
The entire figure
No engine or other
structure for driving the unit is shown.
The claimed invention does not have an integral engine.
Although the specification without question contemplates that the
invention can be moved from location to location over roads and
highways, the ‘435 patent does not claim the entire vehicle.
The
term is construed as “a wheeled transportable unit, or trailer.”
B.
Essential equipment for invasive surgery (Claims 1, 12
and 30 via 24)
The term appears in the preamble of the claims.
“[A]
preamble limits the invention if it recites essential structure
or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.’”
Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed Cir. 2002) quoting
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309
(Fed. Cir. 1999)).
“The determination of whether preamble
recitations are structural limitations or mere statements of
purpose or use ‘can be resolved only on review of the entirety of
the patent to gain an understanding of what the inventor[]
actually invented and intended to encompass by the claim.’”
Rowe
v. Dror, 112 F.3d 473, 478 (Fed Cir. 1997) (quoting Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.
Cir. 1989)).
Reviewing the entire patent, it is clear that the inventor
intended to claim a mobile operating room that included all of
the essential requirements for invasive surgery that a permanent
6
and fixed hospital facility has.
Summary of the Invention.
This is evident from the
See ‘435 patent col.2 l.8-16 (“The
mobile vehicle of this invention . . . includes all of the
operating requirements called for in fixed hospital facilities
and . . . includes . . . all of the essential facilities for
complete invasive surgical procedures . . . .”).
One state’s
regulations are featured in the Description of the Preferred
Embodiment.
See ‘435 patent col. 4 l. 37-42 (“The construction
of the mobile surgical room 100 will follow closely the
guidelines issued by the State of California Office of Statewide
Health Planning and Development (OSHPOD) ‘surgical and anesthesia
service space’ outlined clearly in Section 2-1016A, Title 24 of
the California State Building Code.”); see also ‘435 patent col.
9 l. 10-13 (“It is a feature of this invention that all essential
operational equipment that is qualified to meet the State
hospital code requirements is tailored for mobile van
installation.”).
Thus the Court determines that this claim
language is a structural limitation.
MMIC proposes that the term be construed as “an operating
table or similar structure and one or more instruments or pieces
of equipment for performing invasive surgery.”
AMoHS proposes
that the term be construed as “surgical equipment required by
health and other regulatory codes, and applicable standards of
care, for invasive surgery at the time and place of the intended
7
use.”
MMIC’s proposed language does not accurately convey the
intended limitation.
AMoHS’s proposed language imports an
additional limitation—equipment required by applicable standards
of care—that does not appear in the patent.
Consistent with the
description in the specification, the term is construed as
“equipment required by health, building and other regulatory
codes for invasive surgery at the time and place of the intended
use.”
C.
Main body section that is capable of being towed,
mounted on wheels for mobility by a separate power
section (Claim 1)
Main body portion being mounted on wheels for mobility
by a detachable trailer section (Claim 12)
Main van mounted on wheels for mobility by a detachable
trailer section (Claim 30 via 24)
The parties’ competing definitions do not differ
substantially and are similar or identical for the three claims.
The terms are construed in Claim 1 as “a main body having wheels
that are suitable for use in travel on the roads and highways
that is capable of being towed by a separate power section.”
In
Claim 12 the similar language is construed as “a main body
portion having wheels that are suitable for use in travel on the
roads and highways that is capable of being towed by a separate
trailer.”
In Claim 30 as it depends from Claim 26 as it depends
from Claim 24 the language is construed as “a main trailer having
wheels that are suitable for use in travel on the roads and
highways that is capable of being towed by a separate trailer.”
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D.
Telescoping side sections (Claim 1)
MMIC proposes that the term be construed as “each expansible
side consists of a front, rear, and side walls, floor and roof,
all integrated to form a rigid structure that can slide laterally
outwardly from within the main van body.”
AMoHS proposes “side
sections of the main body of the van that may be expanded or
retracted relative to the main body as a single integral unit,
with the exception of the floor.”
The chief dispute in construction of this term is whether
the floor may, must or cannot telescope.
The patent describes
the expandable sides of a preferred embodiment of the invention
as “single integral unit[s] with exception of the floor which is
hinged to the expanding sides.”
‘435 patent, col.5 l.67-68; see
also ‘435 patent, col.6 l.21-22 (“The expanding sides have hinged
floor panels.”).
“[T]he distinction between using the specification to
interpret the meaning of a claim and importing limitations from
the specification into the claim can be a difficult one to apply
in practice.”
Phillips, 415 F.3d at 1323.
The question is “how
a person of ordinary skill in the art would understand the claim
terms.”
Id.
In this case the patent itself offers guidance
where it states explicitly that the claimed invention is not
limited to the preferred embodiment:
Our invention is, however, susceptible to modifications
and alternate constructions from the embodiments shown
9
in the drawings and described above. Consequently, it
is not the intention to limit the invention to the
particular embodiments disclosed. On the contrary, the
invention is intended and shall cover all
modifications, sizes and alternate constructions
falling within the spirit and scope of the invention,
as expressed in the appended claims when read in light
of the description and drawing.
‘435 patent col.9 l.18-29.
To interpret the telescoping side sections as requiring that
the floor be hinged to the expanding sides would improperly
import this limitation from the specification. more?
The term is construed as “side sections of the main body of
the van that slide outwardly from within the main body.”
E.
Expanded invasive surgery room (Claims 1 & 12)
Expanded centralized invasive surgery room (Claim 30
via Claim 24)
These phrases combine terms whose construction is not
disputed.
MMIC proposes that the terms be construed as “a room
within which invasive surgery may be performed that is formed
when the expandable portion of the main body of the van is moved
outwardly to its expanded state.”
AMoHS proposes that the terms
be construed as “a space in the van that meets the requirements
for invasive surgery, as defined in applicable health and other
regulatory codes, and applicable standards of care, at the time
and the place of intended use, which space has a floor area that
is greater than that contained within the nominal exterior
dimensions of the van when not expanded.”
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In support of its proposed construction, AMoHS stresses that
the inventor’s intent was to create a mobile operating room that
would include “all of the essential facilities for complete
invasive surgical procedures . . . heretofore found only in fixed
surgical facilities.”
‘435 patent, col.2 l.15-20.
The
Description of the Preferred Embodiment states that “construction
of the mobile surgical room 100 will follow closely” the OSHPOD
guidelines, ‘435 patent col.4 l.37-40, and states generally:
To ensure the highest quality of medical care, well
trained personnel are providable in designated areas of
van 100. In addition to the presence of competent
surgeons in area 150, an anesthesiologist as well as
surgical technician instruments will be present during
operations to assist surgeons. There is ample room for
two registered nurses who will provide patient care and
may circulate as needed in the operating room 150 as
well as in the pre and post-op areas 175.
‘435 patent col.5 l.11-19.
It then provides typical dimensions
for the invention, including the expanded width.
col.5 l. 27-36.
‘435 patent
AMoHS argues that therefore the term “expanded
invasive surgery room” must mean a space that meets applicable
regulatory requirements.
As discussed above with respect to surgical equipment, the
inventor clearly intended to claim a surgical space that, when
expanded, would satisfy the requirements of invasive surgery in a
fixed hospital facility.
None of the claims however address any
aspect of the dimensions of the operating room, other than its
location in the expandable portion of the van, and there is no
11
justification for importing the preferred embodiment’s general or
specific dimensions into the claims.
Nothing in the ‘435 patent
indicates that the terms “expanded invasive surgery room” or
“expanded centralized invasive surgery room” themselves were to
be accorded any specialized meaning.
One skilled in the art may
conclude that in order to equip the van with essential equipment
for invasive surgery the expanded space must be a certain size,
or that once so equipped the space will meet regulatory
requirements; that is not the same as concluding that the
inventor meant to incorporate regulatory requirements into these
terms.
Consistent with the construction of the terms “expanded” and
“invasive surgery,” the terms in combination are construed as
“room within which invasive surgery can be performed that has an
increased volume and area than the dimensions of the van when not
expanded.”
F.
Stowable (Claim 1)
MMIC proposes that the term be construed as “positioned or
positionable so that when the expanded side sections are being
nested or expanded the item is not removed from the van.”
proposes that the term be construed as “positionable.”
AMoHS
Neither
definition conveys the ordinary meaning of the term, and neither
party has pointed to evidence that the term is used in any
specialized way in the patent or by persons of skill in the art.
12
The term is given its ordinary meaning, and is construed as “able
to be stored.”
G.
Nested, nesting (Claims 1, 3, 12, 14 & 30)
MMIC proposes that the term be construed as “unexpanded
and/or reduced in interior volume.”
AMoHS proposes that the term
be construed consistent with its ordinary meaning as “condition
in which an inner piece has been moved to fit within a similarly
shaped but larger piece.”
In the specification, the inventor
states that “[a]fter use and when the van is to be moved [the]
surgical table may be swiveled to a stowage position and the
sides of the van nest together around that table.”
‘435 patent
col.2 l.39-42.
MMIC’s proposed definition is broad, broader than the
ordinary meaning of the term, and does not adequately address the
notion of something fitting inside something else.
AmoHS’s
definition however adds a limitation that does not appear in the
claims or the specification, of an inner piece that fits within a
similarly shaped larger piece.
The term is given its ordinary
meaning, and is construed as “fit or fitting together compactly
within one another.”
H.
Means for rolling said table and securing same when not
in use for surgery (Claim 6)
Claim 6 recites a surgical instrument table and “means for
rolling said table and securing same when not in use for
surgery.”
‘435 patent col.10 l.18-20.
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This is a “means-plus-
function” claim, and is “construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.”
35 U.S.C. § 112(f).
The specification twice refers to a rolling surgical
instrument table in listing essential items of surgical equipment
and supplies.
See ‘435 patent col.3 l. 64; col.8 l.19.
shows the table with wheels.
Figure 3
See ‘435 patent fig. 3 at 5.
The
specification thus indicates that wheels or their equivalents are
the means for rolling the table.
There is no disclosure of means
for securing the instrument table when it is not in use, however.
AMoHS points out that the specification discloses that the
invention’s operating table may have retractable wheels and that
this is evidence that the inventor intended that tables of any
sort within the mobile operating room could be moved or secured
by retractable wheels.
“‘[S]tructure 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.
This duty to link or
associate structure to function is the quid pro quo for the
convenience of employing § 112, ¶ 6.’”
Saffran v. Johnson &
Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun
Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
1997)).
Absent adequate disclosure, the inventor “‘has in effect
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failed to particularly point out and distinctly claim the
invention as required by [§ 112(b)].’”
Noah Sys., Inc. v. Intuit
Inc., 675 F.3d 1302, 1311-12 (Fed Cir. 2012) (quoting AllVoice
Computing PLC v. Nuance Commc’ns., Inc., 504 F.3d 1236, 1241 (Fed
Cir. 2007)).
Although the specification must disclose some
structure, a patentee need not disclose details of structures
well known in the art, however.
See, e.g., Default Proof Credit
Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, (Fed.
Cir. 2005).
“Whether a specification adequately sets forth structure
corresponding to a claimed function is viewed from the
perspective of one skilled in the art.”
HTC Corp. v. IPCom GmbH
& Co., KG, 667 F.3d 1270, 1279 (Fed Cir. 2012).
The
specification does not literally disclose a surgical instrument
table with retractable wheels, yet it is possible that one
skilled in the art would understand that any rolling surgical
table would have to be equipped with retractable wheels.
The term needs no further construction at this time.
Whether Claim 6 must be found invalid for indefiniteness requires
factual development, specifically evidence concerning whether one
skilled in the art would have understood that a rolling surgical
instrument table would have to be equipped with retractable
wheels.
15
Dated at Burlington, in the District of Vermont, this 24th
day of July, 2013.
/s/ William K. Sessions III
William K. Sessions III
District Court Judge
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