United States: Must All Chocolate Be Brown? The Art Of Claim Construction, Unwrapped

Last Updated: July 9 2014
Article by Cam Phan

AngioScore, Inc. v. TriReme Medical, Inc., et al., Case No. 12-CV-3393 YGR (Judge Yvonne Rogers) (June 25, 2014)

Claim construction orders and non-infringement summary judgment rulings usually do not make headlines because they are case-specific and typically do not concern the general population.  But they can be instructive for litigants and parties involved in patent infringement suits.  Such is the case here.

Proposed Constructions Should Not Be Vague:

Judge Rogers recently construed three terms in a patent related to medical device.  On the first term ("end"), she rejected both parties' proposed constructions because they were "unclear and manifestly litigation-driven."  Specifically she found the parties' constructions "unacceptably vague" or overbroad. As expected, Judge Rogers reviewed the language of asserted claim, patent specification, and the figures in the patent to support her claim construction.  Noteworthy here, however, is Judge Rogers' examination of a claim not at issue in this case "for indicia of the disputed term's meaning" since a word used in one claim may elucidate a different claim's use of the same word.  She also rejected Plaintiff AngioScore's evidence purporting to show how Defendants and their defense expert witness used the term "end" in other patents as irrelevant since their uses of the term "end" in other contexts say nothing about the proper construction of "end" in this case.

Judge Rogers also rejected the parties' proposed constructions of "longitudinal expansion."  Both parties invoked the notion of lengthening in their constructions, but Judge Rogers concluded that the claim language does not support this notion and even noted that the stents are made of an alloy of nickel and titanium, which suggests that the stent cannot be increased in length. She also concluded that Defendants' position contradicted another claim in the patent (and rejected Defendants' explanation that "the language of [that claim] was a mistake").

Finally, Judge Rogers applied the ordinary and customary meaning to the term "attached" (again declining to accept the parties' constructions).  She found that there is no evidence to suggest that the patent uses the term "attached" as a technical term of art requiring "elaborate interpretation."  Even though Defendants pointed out that the specification refers to only one method of attachment—adhesion—Judge Rogers nevertheless stated that "the specification does not provide that attachment must occur via adhesion." Defendants also pointed to statements made during prosecution to show that the patentee only claimed direct attachment.  But again, the Court concluded that the patentee's use of the word "direct" does not clearly or unmistakably disavow all forms of attachments. The Court thus adopted the plain or ordinary meaning of attachment, which means connection and junction.

Plaintiff Must Sufficiently Plead Doctrine of Equivalents in its Infringement Contentions:

Having construed the terms, the Court next turned to Defendants' motion for summary judgment that its device, called Chocolate, does not infringe the patent. Of particular importance is the Court's discussion of the doctrine of equivalents.

With respect to the "end" limitation, the Court disagreed with Defendants' argument that Plaintiff failed to assert equivalence in its infringement contentions. The Court concluded that Plaintiff's "simple" theory—i.e., that while "a small portion of the strut has been removed" and that such removal is "unsubstantial"—is sufficient, "albeit minimally," to satisfy Patent Local Rule 3-1(e).

However, the Court agreed with Defendants that Plaintiff's infringement contentions failed to adequately disclose the doctrine of equivalents for the "attached" limitation.  Plaintiff's contention that "Defendant's argument that both ends of each strut are not attached to the catheter shaft is an insubstantial difference" is a conclusory recitation of the standard for equivalence and does not provide Defendants notice of why it believed Defendants infringed under equivalence.

Finally, the Court also barred plaintiff from invoking the doctrine of equivalents with respect to the "longitudinal expansion" limitation because it did not invoke that doctrine in its infringement contentions.

In conclusion, unwrap all your claims, not just the asserted claims, when presenting your claim construction position to the court. And if you want to rely on doctrine of equivalents, don't keep your theory under wraps.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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