W.L. Gore & Associates, Inc. et al v. Medtronic, Inc. et al
Filing
92
OPINION AND ORDER; the Court issues this Opinion and Order as the construction of the disputed claim terms in the '870 patent (see order for specifics). Signed by District Judge Mark S. Davis on 12/13/11 and filed on 12/14/11. (jcow, )
UNITED
STATES DISTRICT
COURT
EASTERN DISTRICT OF VIRGINIA
Norfolk Division
W.L.
GORE
& ASSOCIATES,
GORE ENTERPRISE
INC.,
HOLDINGS,
and
INC.,
Plaintiffs,
v.
Civil Action No.
MEDTRONIC,
INC.,
INC.,
2:10cv441
MEDTRONIC USA,
and MEDTRONIC VASCULAR,
INC. ,
Defendants.
OPINION AND
On
for
the
patent
October
25,
purpose
at
2011,
of
issue
construing
in
this
the
briefs
submitted
by
the
Markman
hearing,
and
issues
this
adopted by
Opinion
the
issue
"Intraluminal
Plaintiffs,
Holdings,
the
After
record
Order
conducted
eight
parties,
a
Markman
disputed
careful
the
the
the
hearing
claims
in
consideration
arguments
before
detailing
FACTUAL AND
in
Stent
W.L.
Inc.
specializing
the
case.
the
and
Court
advanced
Court,
claim
the
the
of
at
Court
constructions
Court.
I.
At
the
ORDER
in
this
case
Graft,"
Gore
&
PROCEDURAL BACKGROUND
is
patent
Associates,
(collectively
"Gore")
fluoropolymer
Plaintiff's
number
Inc.
are
products
l
patent
5,810,870
and
Gore
manufacturing
and
are
best
titled
("'870").
Enterprise
companies
known
for
their
GORE-TEX
USA,
fabrics.
Inc.,
and
"Medtronic")
medical
are
alleging
Medtronic's
Talent
Stent
Graft
which
are
stent
graft.
timely
2010,
patent
companies
directed
to
methods
Pursuant
the
carefully
to
a
claim
at
Graft
16,
of
which
in
a
against
complaint
the
Gore
and
and
making
of
a
the
alleges
Talent
the
the
briefs
heard
patent,
intraluminal
at
the
parties
issue
court
argument
that
Abdominal
*870
tubular
order,
filings,
court
its
19
scheduling
such
(collectively
specializing
filed
construction
reviewing
hearing
Stent
12,
Medtronic
industry.
Gore
claims
Inc.,
Inc.
infringement.
Thoracic
infringe
filed
Markman
3,
Medtronic,
Vascular,
manufacturing
September
Medtronic
eight
Medtronic
products and technologies
On
After
Defendants,
have
here.
conducted
regarding
a
the
disputed claim terms.
II.
In
Markman,
explained
The
the
United
for,
Constitution
limited
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Art.
of
to
§
8,
in
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Stat.
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F.3d
court
in
placed
dictionaries,
intrinsic
approach
for
used
the
acknowledged
and
particular
to
that
there
was
court
as
claim meaning
evidence."
will
now
"no
10
magic
not
long
that
Phillips,
in
is
415
methodology
too
little
as
the
on
the
proper
construction,
formula"
from
for
1324.
claim
considering
sources
unambiguous
at
it
as
and
reaffirmed
claim
those
F.3d
such
specification
"barred
as
expressed
sources
and
Innova
follow
is
the
Circuit
and
to
...
the
Federal
Markman,
a
Court
concern
extrinsic
encyclopedias
courts
that
the
the
valid,
on
particular
The
sources
contradict
intrinsic
and
Vitronics,
district
was
reliance
in
mind,
("Although
Digital
much
history.").
construction,
any
Texas
too
in
disputed claim terms.
1319-24
treatises,
in
approach
the
at
sources,
prosecution
but
and
principles
in
are
light
not
of
III.
ANALYSIS OF THE DISPUTED CLAIM TERMS
1. Stent
a. Proposed definitions
Gore:
"one or more interconnected wires defining a
substantially cylindrical plane"
Medtronic:
"implantable device to maintain the patency of a
vessel"
b. Discussion
The
differ
dispute
on
whether
functional
disagree
wires"
to
this
into
whether
proper in
parties
term
is
Medtronic's
limitation
as
is
The
over
definition
the
claim
Gore's
light
use
of the
appear
to
two-fold.
First,
improperly
term.
of
the
Second,
the
term
imputes
the
dispute
exists
difference
which
of
between
functions
Claim
12
comprised
between
a
stent
that
a
"selecting
stent"
parties
which
component
describes
of
adjustable
as
a
the
function
and
of
the
function
57:14,
of
component"
same
a
Docket
of
stent
No.
a
alone
87).
stent
a
least
second
1 During their Markman argument,
of
was
is
to
"stent
alone
the
step
there
The
a
is
a
stent
language
first
tubular,
stent
However,
and
graft."
process;
one
whether
a
step
is
diametrically
involves
"affixing
a
Gore stated that they agreed the
to
However,
graft
as
functions
two-step
at
parties
specification.
agree
the
a
"interconnected
alone is to maintain the patency of a vessel or lumen.1
a
parties
"hold
they
different
function.
11
open
argued
and
a
vessel."
that
not
the
limited
(Tr.
"stent
to
the
tubular
covering
to
Medtronic argues
an
already
will
a
that
They
of
there
is
available
patency
of
The
"stent"
only
(Id.).
a
and
or
"stent
patent
focuses
claim
stent
vessel
and
after
thus
can
the
selected
must
step
by
to
function
a
is
becomes
additional
described
in
arguing
claims
stent
"stent"
stent
the
responds
of
that
the
as
"selecting"
second
have
vessel
9:31-43).
the patency of
the
that
Gore
the
and
that
of
an
Background
only
has
no
there
on
graft:
vessels,
is
that
functions
example,
There
which
that
graft"
For
aneurysmal
only
language
the
col
"maintaining
affixed,
1:37-41).
one
agrees
potential
occluded
stent,
aneurysmal
limits
to
is
graft"
the
*870
or
the
that
in
the
"commercially
to
"maintain
the
vessel."
a
intraluminal
The
at
in
which
Court
the
is
an
{12;
step merely requires
function of
it
(Id.
one"
first
available
stent
nothing
specification
stent."
that
repairing
specification.
.
covering
a
"intraluminal
function
37) .
argue
after
.
the
inherently have the
completed,
*870
.
commercially
vessel."
an
the
been
the
difference
specification
"intraluminal
of
between
Invention
stent
graft."
section
"maintain
patency
the
for
an
after
to
of
an
functions
(1)
re-opened";
aortic
(2)
arteries."
discussion
describes
12
and
the
of
a
"to
(Id.
repair
at
"stent"
"stent"
a
describes
potential
corresponding
simply
a
two
particularly
language
is
as
1:33,
alone.
being
"diametrically adjustable" and as
"having an exterior
luminal
Id_^ at
it
has
surface and a wall."
been
argued by
structure
designed
improperly
imports
claims
suggest
See
1367
Cir.
claim
a
Ecolab,
2001)
see
also,
266
1371
1367,
"import
into
particularly
when
limitations").
according
improper
to
Cir.
claim
read
intraluminal
stent
of
v.
do
White
2001)
(noting
recites
if
the
it
is
one
as
the
of
term
the
described
specification,
the
a
Inc.,
improper
structural
was
that
above
in
specification,
"stent"
stated
1358,
such
is
purely
argued
the
F.3d
Indus.,
it
the
particular
import
that
only
in
recited
Consol.
from
graft,
of
not
not
function
only
section
we
264
a
function,
in
Inc./
or
vessel"
nothing
any
is
device
a
to
claim
the
its
Invention
Co.
Additionally,
to
function
a
of
when
a
Furthermore,
as
patency
Envirochem,
a
Toro
stent
limited
patentee,
(Fed.
the
the
be
v.
("Where
limitation.");
a
limitation
should
Inc.
9:31-43).
defining
functional
the
F.3d
that
"maintain
by
to
itself
to
"stent"
function.
(Fed.
Gore
(12;
surface,
construed
it
would
functions
in
the
while
be
of
an
Background
excluding
the
other.
In
"strive
than
reviewing
to
capture
strictly
embodiments
or
the
intrinsic
the
limit[ing]
allow[ing]
scope
the
the
of
record,
the
this
actual
scope
of
claim
language
13
the
Court
must
invention,
claims
to
to
become
also
rather
disclosed
divorced
from
what
the
Retractable
Cir.
a
Techs.,
2011).
claims
in
light
the
will
the
term.
a
in
Cir.
2001)
no
the
line
and
the
of
limitation
("Where
1305
between
415
importing
F.3d
into
we
graft,
its
Inc.,
is
do
not
not
(Fed.
construing
at
1323.
and
particular
stent
function
patentee,
1296,
improperly
one
Envirochem,
a
invention."
specification,
intraluminal
v.
the
F.3d
Phillips,
mention
Inc.
the
fine
See
functional
by
a
is
653
specification
make
Ecolab,
itself
is
language,
used
a
conveys
Becton,
claim.
See
(Fed.
claim
their
history
import
v.
there
claim
"stent"
not
1367
of
into
the
prosecution
for
Inc.
However,
limitation
Because
specification
the
function
this
Court
construction
264
F.3d
recited
import
of
1358,
in
the
such
a
limitation."),2
The
second
proposed
wires
dispute
at
construction
forming
a
issue
for
describing
substantially
this
a
term
stent
cylindrical
is
as
whether
Gore's
"interconnected
plane"
is
appropriate.
2 Medtronic attempts to support its functional definition with a
case
that
patency
defined
of
a
Vascular,
Inc.,
However,
in
explained
that
a
Fed.
case
the
as
as
reason
an
of
mechanically
(emphasis
patent
at
the
patent
added).
issue,
994,
the
997
Federal
was
the
Since
no
Court
such
does
persuasive.
14
did
2006).
improperly
the
invention
device"
that
language
find
the
Medtronic
specifically
not
affected
not
v.
Cir.
because
stated
the
maintain
(Fed.
support
clearly
keeping
to
Sys.
Circuit
definition
"endovascular
specification
Id.
the
implanted
Cardiovascular
limitation
devices
"for
"device
Appx.
cited,
functional
categorized
a
Advanced
182
the
incorporate
was
"stent"
vessel."
and
stents
vessel
appears
this
the
were
open."
in
the
argument
Gore
supports
every
the
its
example
in
the
specification
Markman
appear
members"
as
The
with
the
3:49-51)
("While
perforated
quantity
Medtronic
abstract
may
that
and
unnecessary
in
the
Resp.
the
the
and
Court
defines
PI.
finds
the
is
11,
"stent."
that
5,
is
neither
of
better
No.
excludes
section
No.
party's
15
the
72).
size
agrees
with
a
stents
Based
is
the
the
or
Court
is
referenced
patent.
on
too
device
the
(Def.
above,
construction
adopts
a
shape,
Last,
^870
proposed
Court
wire,
"plane"
as
col
interconnected"
certain
of
the
("870:
Court
70) .
better
in
metal
a
the
encompasses
suitable
more
the
87).
members"
described
or
the
Docket No.
from
the
in
"elongated
referenced
defining
Docket
Accordingly,
offered
properly
made
at
language,
61:22,
Next,
Docket
described
embodiments.
as
"one
Invention
and
that
"interconnected
claim
more
out
However,
words
examples
used.").
stent
Responsive
and
stent
stents
"elongated
perforations
be
Resp.
(Tr.
shown
pointing
wire.
the
preferred
stent
the
history
that
"stent"
by
actual
alternative.
potentially
finds
that
the
phrase
of
of
metal
prosecution
construing
Summary
11;
also
(Def.
that
in
having
instead
structure.
finds
in
the
sleeve
of
specification
possible
and
all
conceded
first
the
specification
and
the
a possible
Court
comports
all
Gore
or
and
formed
nowhere
specification,
construction
patent
are
hearing,
wires"
proposed
best
following
construction
of
the
claim
substantially cylindrical
term:
"Elongated
members
forming
a
and rigid structure."
c. Definition
"Elongated members
forming a substantially cylindrical
and rigid structure"
2. Wall
a. Proposed
Definitions
Gore's definition:
defined by
the wires
Medtronic's
the
"a
substantially cylindrical plane
of the
definition:
stent which
is
stent"
"structure
spanning
the
length
of
capable of having a multiplicity of
openings"
b. Discussion
Both
sides
constructions
are
acknowledged
of
"stent",
interrelated.
construction
between
should
the
be
"structure"
of
parties
referred
as
"wall"
Thus,
"stent"
during
this
when
to
as
the
"plane"
proposes.
16
arguments
"multiplicity
must
defining
construing
Medtronic
and
Court
in
a
oral
term
as
Gore
of
consider
"wall."
A
"wall"
Gore
that
is
openings"
its
adopted
key
dispute
whether
proposes,
argues
that
the
or
as
it
a
"structure"
is
inappropriate
because
it
implies
is more appropriate because
the wall
of
oral
a
the
it
stent.
was
However,
not
their
"structure"
it
acknowledged
that
in
it
and
87) .
to
claim
"wall"
to
the
not
Medtronic
the
position
had
will
language
a
tubular
covering."
wall"
prosecution
history
wall
internal
and
Docket
wall
as
does
stent.
the
a
as
'870
that
film
"plane"
not
appear
Rather,
the
to
not
in
"plane"
rather,
its
on
col.
Docket
because
No.
the
openings
to
"affix
in
stent
together
therethrough
.
a
(emphasis
definition
perforations
affixing
of
description
expandable
a
referring
9:33-36)
its
as
openings
view,
which
that
Medtronic
of
multiplicity
argues
covering
wall
appropriate
surface
"an
a
87:18-20,
examiner's
is
the
having
a
or
openings
of
both
.
.
."
an
(JA-
added).
that
as
have
"wall"
"a
patent
the
finds
and
(Tr.
specified
(emphasis
Court
a
a
stated
multiplicity
more
be
states,
having
a
that,
Medtronic
accommodate
66)
to
patent
external
No.
First,
defined
there
Medtronic
solid;
tube.
was
and
defining
be
explain
well
the
by
have
solid
(12;
means
which
will
to
Additionally,
with
167,
on
as
consistent
therein
a
requires
the
distinct
that
"structure"
through
added).
wall
wall
is defined by the structure
argument,
therefore
be
went
as
at
solid
is
a
an
"wall"
separate
by
more
appropriately
"structure"
existence
defined
17
is
since
independent
the
structure
the
of
the
of
the
stent
and
includes
includes
the
stent.
The
entire
See
imaginary
the
that
of
claims.
because
could
spans
Medtronic's
proposed
through
a
Second,
spanning
that
the
area
actual
which
the
definition
of
finds
stent.
instead
"plane"
with
any
Court
of
as
of
separate
the
also
it
to
"an
too
phrase
broad
structure
rejects
rejects
Gore's
consistent
with the definition the Court has adopted for "stent."
c. Definition
"A substantially cylindrical
structure
of
the
plane defined by the
stent."
3. Maltiplicity of Openings
a. Proposed
definitions
Gore's definition:
an area
of
the wall
"more
than one
opening;
bounded by the wires
Medtronic's definition:
plain
18
an opening
of the
a
language
Court
be
the
having
the
is
it
objects").
Medtronic's
stent"
modifies
length
capable
Thus,
The
members;
material
that
the
encompass
the
the
comports
of
definition.
and
still
thus
Court
to
spans
joining
is
length
read
length
proposed
the
the
be
and
elongated
(defining
or
"plane"
openings"
"structure
it
surface
surface
finds
"multiplicity
of
than
Oxforddictionarys.com
flat
Court
more
stent"
and ordinary meaning
is
b. Discussion
The Markman hearing made
parties
centers
argues
this
ordinary
art.
on
the
phrase
meaning
However,
is
if
that
"multiplicity"
and
that
all
specification
this
of
clear
v.
Search
2009)
Dictionary
large
of
number
Gore
language
or
cylindrical
plane
or
plain
meaning
this
with
a
a
"large
{not
number
F.
as
"A
2006)
of
point
(defining
the
argues
openings"
two).
support
in
2d
large
in
in
See
Supp.
its
described
To
previous
number."
653
skill
Medtronic
merely
to
some
"large
Ed.
construed,
Medtronic
because
ordinary
embodiments
at
Inc.,
(2nd
that
makes
inlet
or
of
the
cases
the
and
definition,
Girafa.com,
512,
the
526
number");
Inc.
(D.
The
multiplicity
Del.
Oxford
as
"a
variety").
argues
and
as
construction
cites
multiplicity
English
be
openings
which,
Media,
(defining
to
the dispute between
"multiplicity."
person
Medtronic
"multiplicity"
of
preferred
definitions
&
a
is
that
need
"many"
"many"
define
IAC
to
term
the
have
not
means
definition,
dictionary
definition
does
the
clear
outlet
of
its
clear
of
of
the
the
definition
that
stent
Gore
is
definitions.
19
supported
"openings"
wall,
stent.
"multiplicity"
dictionary
the
is
and
do
further
"more
than
However,
by
the
claim
are
through
the
not
include
the
argues
one"
that
and
the
the
supports
dictionary
definition
provided
multiplicity
In
that
to
includes
"a
great
number."
brief
and
"more
cases
more."
than
See
have
at
number");
to
argues
that
Inc.
(D.
v
to
mean
the
or
1999)
"two
"full
with
v.
May
Data
or
more
ordinary
and
"two
any
to
restrict
the
meaning
v.
Raytek
Corp.,
334
Inc.
2003)
("We
indulge
their
full
ordinary
construction
argument
of
later on
The
Court
ordinary meaning,
person
context
of
of
a
and
this
should
well
customary
phrase
or
2007
WL
a
fairly
34
F.
large
Supp.
"multiplicity
of
Gore
meaning"
numbers
be
and
improper.
1314,
2d.
NSM-
signals").
larger
would
F.3d
(defining
of
that
Omega
(Fed.
Cir.
claim
that
1323
terms
carry
meaning.").
Gore
avoid
to
believes
further
"multiplicity" means.
"according
intrinsic
"two
Inc.,,
Inc.,
appropriate
generally
skill
as
65).
mean
customary
presumption'
about what
ordinary
the
^heavy
usually
No.
and cited
2007)
NSM-packet
is
Eng'g,
as
to
of
acknowledged
or more"
8,
Sys.,
multiplicity
attempt
Docket
Gore
"two
(construing
or more"
10,
definition
Burst.com,
more;
CellNet
Minn.
Ex.
argument,
Cal.
"two
its
"multiplicity"
Computer
(N.D.
mean
Itron,
signals"
synonymous
Apple
in
(PI.
oral
construed
*16-17
1140-41
packet
was
e.g.,
multiplicity
at
one"
that
1342504,
1135,
Gore
responsive
its
-
by
to
in
the
the
record."
20
assign
claim
customary
art
who
terms
their
understanding
reads
Agilent
them
Techs.,
of
a
in
the
Inc.
v.
Affymetrix,
Court
has
Inc.,
567
F.3d
reviewed the claim
prosecution
history,
reveals
special
no
openings."
that
assist
particular
on
merge
the
"two
requests
large
(6th
the
that
the
more
an
in
Because
F.3d
phrase
are
"among
skill
2011) .
C.
However,
Court
will
art
definition
Faber,
to
tools
the
of
term
in
appears
to
usually
Faber on Mechanics of
simply
the
the
more;
provide
of
provided
which
or
of
meaning
the
"two
many
For
Drafting,
Robert
the
1318.
Claim
evidence
the
in
parties:
both
The
"multiplicity
at
advocates
claim
than
the
examination
meaning
the
of
guidance
a
Patent
and
to
multiplicity
define
is
apparent
for
construction
this
of
understood
word,"
extrinsic
evidence
not
appropriate
in
do
this
relevant
term
art,
application
of
the
commonly
is
intrinsic
determining
of
2009).
as
more."
skilled
one
of
ed.
Furthermore,
reveals
415
Cir.
specification and the
the
the
in
Patent
number."
ambiguity,
or
of
the
treatises
those
Medtronic
Mechanics
Claim Drafting
avoid
to
{Fed.
that
for
court
Phillips,
"multiplicity,"
finds
and
the
1376
language,
meaning
terminology
invention."
Faber
and
Dictionaries
can
fairly
1366,
the
"opening,"
to
allow
21
as
to
would
accepted
because
meaningfully
case
even
term
widely
and
extrinsic
the
the
evidence
understood
lay
by
persons.
involve
"little
meaning
of
intrinsic
add
to
the
straightforward
[a]
and
definition,
it
claim
language
with
to
speak
Medtronic
"opening"
is
needed.3
See
1554,
1568
resolution
and
when
claims,
not
an
and
finds
U.S.
that
to
in
obligatory
the
here;
meanings
plain
and
therefore,
v.
and
The
what
in
of
no
is
construction
Inc.,
is
scope,
patentee
the
agrees
of
Ethicon,
the
Court
ordinary meaning
technical
determination
exercise
1314.
("Claim construction
explain
the
at
Corp.
1997)
disputed
use
Id.
Surgical
Cir.
necessary
for
itself.
appropriate
(Fed.
of
for
103
a
F.3d
matter
to
of
clarify
covered
by
infringement.
It
the
is
redundancy.").
c. Definition
Multiplicity:
Opening:
"two
or more"
no construction needed;
"opening"
has
a plain
and ordinary meaning
4. Covering
a. Proposed definitions
Gore's
definition:
plain
Medtronic's definition:
and
ordinary meaning
"film of ePTFE material'
3 Both claim 12 and claim 15 require the stent have "a wall" and
"a
multiplicity
'870)(emphasis
makes
clear
of
openings
added).
that
the
include the inlet or
The
"openings"
outlet
through
Court
are
wall."
the
through
the
of the stent.
22
the
believes
(12,
claim
wall
15:
language
and
do
not
b. Discussion
The
dispute
"covering"
whether
it
covering
limited
is
and
Gore
be
covering
should
that
patent
the
col
making
ePTFE
(17;
wherein
that
at
construed
be
if
the
limiting
their
examiner
should
and
the
that
claim
is
than
just
rejected
a
covering
as
9-10) .
to
to
claim
construed
Gore
ePTFE,
a
16
PTFE").
states
Procedure
inventors
being
mean
superfluous.
Examining
of
of
without
at
examiner
the
'870
"method"
material.
believed
17
{1-11;
"covering"
17
that
specifically
Id.
expanded
patent
material.
"covering"
according
Patent
claim
23
to
Claim
ePTFE
of
a
1-11
(12-21;
the
examiner
to
use
porous
ordinary
differentiation
ePTFE.
construing
of
and
that
presumption
relate
method
Manual
a
of
dependent
"a
plain
Claims
broadly
that
invention
of
12-21
argues
particular
creates
ePTFE.
covering
patent
have
and
Claims
(reciting
to
doctrine
render
broader
any
whether
specifically
Gore
its
covering made
out
argues
to
to
on
material,
material.
broadly.
to
points
would
Gore
according
(MPEP),
a
material
10)
to
uses
grafts
said tubular
"covering"
the
However,
Gore
Second,
that
be
material
Id.
be
construction
8-9).
Additionally,
ePTFE
limited
stent
the
to
centers
particular
not
intraluminal
limiting
any
parties
according
asserts
their
the
defined
should
supports
state
to
limited
should
meaning
First,
is
between
were
then
duplicate
the
of
claim
16.
See MPEP
706.03 (k)
(8th
Edition,
revised July
the
specification
2010)
(dealing with duplicate claims).
Third,
Gore
presumption
the
term
that
claim differentiation
"covering."
Invention
"These
of
argues
which
devices
Gore
describes
are
and a
points
various
typically
to
the
types
flexible
of
terephthalate
or
of
(hereinafter
PTFE).
of
biological
these
being
typically
('870
patent
a
col
argues
broad
application
claims:
1)
2)
examiner
of
any
stent
of
the
material:
woven
or
knitted
polytetrafluoroethylene
origin
umbilical
a
"any
did
not
ePTFE
being
of
or
are
also
bovine
apparatus
making
a
stent
on
used,
arteries."
claim
patent
Abstract.
by
a
Inventor's
and
apparatus
(JA-64).
allowed
that
of
"thin
method
that
this
in
is
light
to
be
US
Patent
the
patent
specifically
and
patent
covering
Khosravi,
ePTFE,
covering"
The
claim,
a
also
the
covering
emphasizes
Khosravi
24
a
(JA-74);
claims
In
having
a
which
Gore
the
anticipated
12,
history
method
having
graft
material."
reject
both
material.
rejected
art
prosecution
"covering."
graft
suitable
examiner
the
describe
prior
at
that
they
restriction
5,441,515
as
of
initially
Khosravi,
made
No.
a
methods
without
human
construction
patent
and
porous
of
of
1:15-26).
Gore
Last,
supports
fixed
covering
of
the
construction
Background
tubes
polyethylene
Grafts
broad
supports
required
because
the
examiner
claims
understood
which
rejection,
from
argued
it
art
was
by
oral
making
a
the
ePTFE.
made
highlights
and
Gore's
of
ePTFE.
argues
that
Gore's
claims
as
law.4
See
37
A
oral
distinct
of
the
arguing
used
it
narrower
against
their
ePTFE,
this
invention
instead
required
with
Gore
an
they
exterior
out
§
inventions"
1.142
two
invention."
the
by
131:
25
a
an
"this
the
is
incorrect
or
method
more
the
Each
Docket
No.
the
to
and
graft
a
is
has
87).
no
one
the
with
a
apparatus
matter
independent
method
a
Medtronic
and
as
of
Medtronic
claims
(Transcript
"there
patent
of
refers
Last,
of
two
covering
invention"
2:28).
the
Description
intraluminal
col
to
Abstract
Specifically,
arguing
7-9,
with
Detailed
is
argument.
entitled
stent
inventions.
inventions.
(Tr.
a
characterized
distinct
responded
two
("If
Medtronic
disclosed
language
patent
only
that
material.
describing
Gore
as
is
the
that
disclaimer
namely
characterization
argument
clear
embodiment
('870
C.F.R.
Medtronic
made
Invention,
the
when
distinct
claims
patent
points
of
use
covering
was
that
ePTFE
invention"
"two
it
every
with
"present
a
it
disclosed,
Summary
Invention,
120:9).
in
than
differentiate
because
argues
invention
the
covering
as
broader
differentiation
Medtronic
Invention,
At
not
asserting
claim
scope
apparatus
did
argument
Medtronic
the
was
Further,
different
Instead,
of
ePTFE.
12
(JA-83).
During
of
claim
applicants
prior
covering.
not
recited
the
the
that
of
and
and
116:20;
such
thing
patentably
distinct
inventions
examiner
in
reply
that
will
to
be
claim
an
Office
only
specification
believes
claim
is
notion
a
and
scope."
1369
to
as
Phillips,
dependent
a
to
independent
scope
than
or
that
Corp.
v.
1315
this
of
on
"the
in
have
not
a
in
claims
overcome
26
the
Medtronic
cannot
separate
be
claims
474
F.3d
creates
language
terms
in
presence
limitation
question
a
sense
is
gives
not
doctrine
their
contrary
a
is
such
superfluous.
"the
beyond
each
meanings
LLC,
construe
the
that
different
claim
by
if
common
claim
that
particular
a method
claim
provides
between
However,
be
that
product
used
claims
(noting
broaden
the
case.
based
should
limitation
will
out
differentiation
language
claim").
"any presumption
claims
Composites,
Court
cannot
which
Fiber
the
the
the
"covering"
phrases
difference
a
in
Claim
2007).
adds
a
of
is
the
applicant
to
the
interpretation.
in
and
application,
the
differentiation
words
at
that
that
invention
the
F.3d
differentiation
and
that
claim
an
record
scope
the
render
415
presumption
the
in
Cir.
that
and
require
broader
claim
indicate
(Fed.
significant
way
of
Andersen
presumption
a
intrinsic
single
Medtronic points
broader
different
presumed
").
that
a
will
elect
.
in
interpretation
different
are
1361,
a
broad
doctrine
that
.
supports
supported by the
The
to
.
have
claimed
action
action
restricted
can
are
See
of
a
rise
to
present
in
of
correct
claim
scope
construction
dictated
by
the
Retractable
Cir.
Techs.,
an
Court
ePTFE
examples
Inc.
must
covering
in
overcome
disclosed
in
also
that
true
broadly
less
than
support
that
the
narrower
Office
giving
of
653
F.3d
history."
1296,
1305
(Fed.
more
to
the
consistent
and
presumption
created
parties
agree
describes
the
a
method
"covering"
discloses
an
any
examination
claims
in
covering
by
other
claim
example
ePTFE.
(claims
than
disclosed
every
of
less
references
the
that
claims
It
12-21)
covering
12-21
claims
solely
their
0.10mm
the
in
as
the
materials,
describe
the
the
patent
is
appear
thick,
material
the
broader
"The
basis
Patent
of
of
reasonable
would
See
be
the
which
claim
Invention
appears
those
section
('870
27
col
but
*in
by
F.3d
are
grafts"
patent
patent
upon
light
one
at
mentions
materials
"conventional
surgical methods.
language,
interpreted
the
Trademark
in
construction
aware
than
and
415
appears
was
scope
claims
Phillips,
of
older
history
examiner
a
scope
art.'"
it
the
1-11.
it
Background
prosecution
contained
broadest
specification
skill
on
the
that
determines
not
of
statement
apparatus
invasive
whether
0.10mm thick.
method
Although
possible
a
never
claims
ordinary
only
although
(PTO)
the
patent
Gore's
applications
5
prosecution
specification
any
require
However,
to
or
Becton,
the
Both
the
specification
is
v.
determine
differentiation.5
to
description
2011).
This
to
written
of
1316
other
mentioned
that
require
1:14-26).
(citing
(Fed.
In
Cir.
consider
during
of
Acad.
2004)).
that
the
in
the
present
adjustable
a
also
than
In
0.010
the
Court's
not
that
limit
Claim
1
examiner
Claim
it
and
the
own
view,
ePTFE
is
This
Infineon
and
a
Cir.
described
tubular
luminal
exterior
surfaces
of
openings
of
stent
requiring
and
a
which
a
seam
luminal
the
is
stent
to
covering
a
and
of
graft
affixing
thin
has
exterior
porous
surface
intraluminal
claim,
the
the
reject
scope
(Fed.
diametrically
covering
an
of
Techs.
prosecution
patented
material.
to
the
scope
as
the
(less
extending
surfaces.
added).
inventors
12
1055
to
tubular,
claims
thick)
its
(JA-74).
1.
v.
to
Claim
chose
understood
Inc.
the
the
article
(emphasis
assertion
to
method
83)
to
specification
repeatedly
multiplicity
making
the
of
a
tubular
of
surface
about
relates
a
the
for
1364
Court
permissible
1048,
applicants
1359,
this
the
the
F.3d
exterior
a
affixed
through between
(JA-64,
having
and
claimed,
exterior
127
F.3d
for
to consult
determine
comprising
method
described
367
appropriate
the
containing
PTFE
A
Ctr.,
following way:
stent
therethrough,
stent.
to
Morris,
graft
wall
expanded
is
invention
intraluminal
and
order
re
Tech.
"required
prosecution,
invention
The
in
In
During
Sci.
it
PTO was
claim."
1997).
Of
Thus,
examination
the
their
re Am.
"covering"
The
recitation
Claim
12
makes
clear
the
Aq,
claims
318
28
only
of
based
to
F.3d
history
that
be
1081,
broadly
and
difference
ePTFE
on
supports
and
prior
the
patent
different.
1095
(Fed.
did
between
the
art
the
patent
and
not
examiner
See
Rambus
Cir.
2003)
(refusing
noting
to
that
understood
Federal
"Each
the
"bus"
claim
be
under
Tanaka,
640
in
the
a
the
useful
claims
to
the
not
broad
patent
has
remaining
clarify
1246,
at
to
a
the
is
of
narrowly
principle,
purpose
that
Claims
claim
of
of
the
PTO
The
noting
is
narrower
broader,
Cir.
that
2011).
the
that:
separate
and
scope
independent
differentiation."
(Fed.
and
bus").
"multiplexing
this
clear
"bus"
demonstrated
meaning
of
it
a
claims.
1250-51
issue,
use
history
limited
doctrine
F.3d
patent
claim's
recently reiterated
of
from
a
prosecution
was
Circuit
distinct
can
construe
In
re
Accordingly,
prosecution
history
supports a broader interpretation of the term "covering."6
At
the
Markman
Circuit
recently
argument
in
(Fed.
Cir.
"body"
piece
In
read
by
the
recited
body".
that
Id.
"body"
while
The
Court
Inc.
was
not
that
be
The
differentiation
others
held
653
argued
should
specifically
that
because
the
Federal
differentiation
Becton,
1304-1305.
claim
that
claim
v.
it
and
at
of
argued
similar
case
broadly
doctrine
Id.
a
Techs.,
structure.
supported
claims
2011) .
be
Medtronic
rejected
Retractable
should
one-piece
hearing
F.3d
1296
the
term
limited
a
argument
was
because
some
recited
the
to
"one-
specification
6 Furthermore, the use of the phrase "the present invention" does
not
automatically
language
and
F.3d
must
be
prosecution
1394,
1398
limit
read
in
the
the
history."
(Fed.
Cir.
meaning
of
context
Netcraft
2008).
29
the
of
the
Corp.
claim
terms
entire
v.
and
"such
specification
eBay,
Inc.,
549
expressly
a
stated
single
body,
invention
from
at
similar
an
based
never
had
based
that
overcome
on
by
a
single-
distinguished
feature,"
the
of
the
intrinsic
claim
record.
("[A]lthough
ePTFE
confining
Int'l,
2010)
(noting
the
to
patent
to
is
in
many
ways
patent
at
issue
is
history
and
because
the
distinguish
it
invention,
to
their
invention
even
Inc.,
when
"courts
a
the
prior
art
by
different
we
have
595
not
30
it
1340,
only
limit
the
initial
asserting
(JA-83).
415
from
it
the
at
very
warned
Trading
1352
one
that
F.3d
repeatedly
uses
not
did
because
claim
describes
F.3d
^unless
an
a
embodiments."};
patent
applicants
limit
often
should
embodiment
to
Phillips,
those
in arguing against
was
used
broadly.
eSpeed,
claims
the
be
specification
the
that
that
from
more
not
claims
v.
examiner,
argued
of
the
Inc.
For example,
covering.
the
prosecution
should
the
embodiments
invention
Retractable
case,
the
"covering"
language
in
The fact that each example described in the patent
enable
they
used
uses
against
the
on
covering
specific
7
embodiments
art
present
ePTFE
clearly
to
constructed
"expressly
situation
the
prior art.7
Cir.
body
was
prior
the
to
applicants
Techs.
the
a
specification
argument
distinguishable
1323
the
of
had
1305.
Although
uses
"invention"
all
and
differentiation
Id.
the
structure,
structure
the
that
(Fed.
example
broader
patentee
has
claim rejection by
differentiate
used
ePTFE,
required
an
their
instead
exterior
demonstrated
words
a
clear
or expressions
Additionally,
"covering"
17
to
mean
presence
limitation
question
Claim
16
tubular
patent
the
been
not
present
col
is
less
PTFE."
(17;
finds
limitation
and
16
the
and
in
415
at
claim
it
said
at
that
1315
a
the
particular
mm
thick."
Claim
17
reads:
with
covering
its
wherein
"A
is
presumption
plain
said
(16;
of porous
Thus,
has
absent
and
*870
method
added).
"covering"
in
Independent
0.10
construe
that
limitation
15
(emphasis
Claim
(noting
claim").
differentiation
accordance
dependent
adds
that
tubular
using
construing
claim
10:25-26)
will
that
to
about
Dependent
scope
restriction.'").
render
F.3d
claim
claim
out
independent
than
Id.
would
according
wherein
or
points
presumption
the
method
claim
overcome
a
in
10:23-24) .
to
Court
to
"A
covering
expanded
dependent
rise
reads:
according
Phillips,
a
the
execution
material
See
of
limit
correctly
ePTFE
gives
is
to
of manifest
Gore
superfluous.
"the
intention
not
any
ordinary
meaning.
c. Definition
No
construction
needed;
"covering"
meaning
31
has
a
plain
and
ordinary
5. Affixing
a. Proposed
Definitions
Gore's definition:
plain and ordinary meaning
Medtronic's definition:
heat
or with an
"attaching through the use of
adhesive"
b. Discussion
The
includes
to
the
the
dispute
"suturing"
stent.
term
claims
also
do
notes
The
"adhered
('870
that
to
patent
would
be
explicitly
possible
should
the
by
plain
apply
by
may
surfaces
suturing
col
not
the
7:58,
improper
for
disclosed
in
and
a
ordinary
meaning
particular
be:
1)
by
an
open
the
stent
62-63).
Court
the
Thus,
to
specification
can
3)
3,
be
2)
"affixed
tube
together."
Gore
argues
exclude
from
Gore
adhered";
or
of
the
Example
coverings
adhesive";
of
of
method.
"thermally
ends
covering
language
particularly
the
"affixing"
affixing
that
which
this
the
for
term
any
to
60-61,
the
and
specification,
methods
stent
or
method
the
affixing
covering
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stent
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whether
proposes
limit
multiple
affixed.
the
Gore
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describes
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the
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embodiments
scope
of
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Medtronic
"affixing"
of
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covering
that
can
the
be
32
patent
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contemplates
only
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heat
the
or
through
language
the
use
of
a
separate
in the Summary of
adhesive.
Medtronic
Invention section that
points
to
states:
The porous expanded PTFE film may be affixed to the
stent
with
an
adhesive.
The
adhesive
may
be
a
thermoplastic
adhesive
and
more
preferably
a
thermoplastic
fluorinated
fluoropolymer
ethylene
propylene
perfluoroalkoxy
(hereinafter
second
coverings
tubular
affixed
to
openings
affixed
point
each
in
heating
the
thermally
(Id.
the
at
adhere,
2:58-67)
56)
the
exception
examiner
as
or
history
et
of
rejected
above
added).
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or
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invention
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pending
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adhesive") .
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expanded
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Where
alternatively
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defined
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prosecution
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PTFE
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of
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PFA).
other
through
stent wall,
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adhesive
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claimed
notes
claims,
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Gore
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responded
follows:
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thin,
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The
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66) .
Court
prosecution
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history
find
Medtronic's
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33
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argument
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the
any
construed
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the
demonstrated
using
possible
to
1352
language
patentee
thermally
34
here
"affixing"
restriction.'").
stent
art
heat.
claim
execution
to
thermal
broader
the
an
inconsistent
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595
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of
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13)
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39
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affixing
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40
(JA-33;
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claim
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63).
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limits
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reference
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3
encompass
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embodiment.
35
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3
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variations
7:54-55).
the
('870
the
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language
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2003)
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11).
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construction
skill
make
for
apparent
this
36
extrinsic
"affixing,"
term
even
would
to
are
as
the
The
firm
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(Merriam-Webster,
term
in
1318.
(Oxforddictionary.com);
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415
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history,
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to
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prosecution
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90
correct").
reviewed
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the
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into
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definition,
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term
the
[a]
it
claim
Court
"affixing"
and
and ordinary meaning.
c. Definition
No construction needed;
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has
a
plain and ordinary
meaning
6.
"Seam extending from the exterior surface
luminal
surface of the
a. Proposed
Gore's
to
the
Definitions
definition:
Medtronic's
the
through
tubular covering"
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exterior
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and
ordinary meaning
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surfaces
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of
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overlap
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tubular
covering"
b. Discussion
For
edges
of
extending
this
the
phrase,
the
covering
must
from
the
parties
"overlap"
exterior
in
surface
37
order
through
to
to
whether
create
to
the
a
the
"seam
luminal
surface."
*870
Both
patent
Gore
phrase
the
argues
to
to
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Medtronic
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limit
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which
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definition
language.
constructions
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intended
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described
to
scope
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of
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4:44-47).
the
provides
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phrase
created
illustration
is
by
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notes
edges"
the
that
in
and
its
argues
Medtronic
;7:20).
in
ambiguous
the
overlap
Medtronic
and
"overlapped
6:48
is
clarity.
surfaces."
5:38,54;
every
shown
meaning
of making
specification
specification
specifically
(Id.
are
col
interior
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in
figures
ordinary
method
broad
the
asserts
only
embodiments
into
and
construction
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Medtronic's
intraluminal
proposed
way
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and
believes
particular
language
invention
all
plain
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a
examples
examples."
the
examples
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insert
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following
agree
apply.
illustrated
points
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Medtronic
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require
claim
Court
agrees
construction.
limitations
that
with
"It
are
Gore
is
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and
finds
important
part
38
of
that
the
not
to
the
claim.
term does
not
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For
example,
a
particular
not
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870,
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read
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875
the
(Fed.
claims,
mandates
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a
to
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2004).
claim
v.
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broader
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DirecTV
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surface"
in
Corp.
Superguide
"seam
luminal
declines
into
appearing
358
F.3d
language
history
surface
overlap.
than
of
that
through
Thus,
the
to
Court
limitation.
c. Definition
No
construction
surface
through
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7.
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a. Proposed
Gore's
Definitions
definition:
plain
Medtronic's definition:
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the enlarged diameter"
and
ordinary meaning
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been
to
diametrically
the
adjusted
enlarged diameter"
b. Discussion
Gore
ordinary
argues
meaning
that
should
this
phrase
apply.
is
Gore
39
clear
states
and
that
its
plain
Medtronic
and
uses
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improperly
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form
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(emphasis
patent
*870
example
that
3,
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example
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3.4mm
10)
to
requires
diameter
relate
states
a
to
construction
.
.
was
enlarged
(emphasis
has
its
that:
Claim
A
('870
points
expanded
from
is
not
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its
require
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10:10-15)
the
claims
of
embodied
in
stent."
of
the
col
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They
the
note
balloon-
collapsed diameter
8.0mm."
it
other
eliminates
requires
that
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diameter.
40
does
which
its
adjust
out
the
stent
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balloon-adjustable
leaves
plain
patent
out
III,
diameter
to
that
15
adjusted
Palmez
adjusted
catheter
potentially
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less-
construction
"balloon-expandable
outside
added).
balloon
a
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Species
but
diameter
inserted
argues
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form.
diameter."
to
explained
be
and
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collapsed
can
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that
also
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that
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clear
Medtronic
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Claim
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Markman
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claim
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7:6-
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someone to make a self-expanding stent in this
making
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language
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F.3d
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41
in
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1276-1277
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173).
a
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514
clear
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169,
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them
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2:46-51).
diameter
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patentee
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358
description
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158
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c. Definition
No
construction
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Gore's
Definitions
definition:
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Medtronic's definition:
and
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b. Discussion
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luminal
Additionally,
argument
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43
would
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and
The
referenced
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to
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and
in
notes
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9:33-36)
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surface"
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in
contrast
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mean
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term.
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it
whether
various
"intraluminal,"
the
is
construe
the
hearing
"luminal
dispute
formally
that
Markman
having
having
.
.
briefing
of
an
.
a
")
and
"luminal
surface"
to
one
Brief.
26,
Court
will
surface."
of
skill
Docket
No.
construe
(PI.
Brief.
in
67;
the
Tr.
art
175,
"luminal
26,
is
"interior
Docket
No.
surface"
Docket
No.
67;
surface."
87).
to
Thus,
mean
Tr.
(PI.
175,
this
"interior
Docket
No.
87) .
c. Definition
"Interior
IV.
surface"
CONCLUSION
For
the
reasons
Opinion
and
Order
terms
the
'870
in
The
Order
to
It
Clerk
is
forth
the
above,
the
construction
of
Court
the
disputed
REQUESTED
of
record
to
for
send
the
a
copy
of
this
claim
Opinion
and
SO ORDERED.
Mark
UNITED
December
this
parties.
/s
Norfolk,
issues
patent.
is
counsel
as
set
Virginia
13
2011
44
S.
STATES
fflU&r
Davis
DISTRICT
JUDGE
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