United States District Court, E.D. Virginia, Norfolk Division
OPINION AND ORDER
G. DOMMAR SCNIOR UNITED STATES DISTRICT JUDGE
case concerns alleged infringements of a single patent owned
by Doctor Christopher .1. Walshe ("Dr. Walshe") and
for which Tissue Anchor Innovations LLC ("TAP) is the
exclusive licensee. This patent, titled "Tissue Anchor
System, 1' was issued on January 14. 2003 as United
Slates Patent No. 6.506.190 ('"the ' 190
Patent"). Presently before the Court is the claim
construction of several terms found within the claims of the
"190 patent. After careful consideration of the briefs
submitted by the parlies and the arguments advanced at the
Markman hearing held on June 20, 2016, the Court
issues the following Opinion and Order detailing the claim
constructions in this case.
FACTUAL AND PROCEDURAL HISTORY
'190 patent's abstract describes the invention at
issue in this case as "a tissue-anchoring system,
including a tissue-anchoring device and tissue anchors."
Compl., Ex. 1 at Abstract, ECF No, 1-1. The patent discloses
a system that "relates to a tissue anchor and applicator
for supporting a suture, sling member, or other device for
use in a surgical procedure. In particular, this invention
relates to tissue anchors for use in surgical treatment of
urinary incontinence." Id.. at 1:7-11. TA1
filed suit against defendant ASTORA Women's Health. LLC
("ASTORA") for patent infringement on October 28,
2015 alleging that a number of the medical devices ASTORA
designs and sells addressing women's health concerns
(collectively "ASTORA Systems"') directly and
indirectly infringe the '190 patent. See Compl.
¶¶ 11-15. ECF No. 1. On January 13. 2015. after an
extension of time granted by the United States Magistrate
Judge upon a consent motion tiled by ASTORA. ASTORA filed its
Answer, denying any infringement and asserting several
affirmative defenses, including non-infringement, invalidity
of the '190 patent, prosecution history estoppel, and
other legal and equitable defenses. See Answer
¶¶19-42, F, CT; No. 25. Additionally,
ASTORA alleges two counterclaims in its Answer, seeking
declaratory judgment that it has not infringed the 7190
patent and that the '190 patent is invalid, id. at
April 20, 2016. the parties filed a Joint Statement regarding
claim construction that identified claim terms which one or
both parties deemed necessary to construe. Joint Statement,
ECF No. 33. After the parlies fully briefed their positions
with respect to claim construction, the Court held a
Markman hearing on June 20. 2016 at which it heard
argument concerning the construction of the disputed claim
United States Supreme Court has explained that "a patent
must describe the exact scope of an invention and its
manufacture to "secure to [the patentee] all to which he
is entitled, [and| to apprise the public of what is still
open to them.'" Markman v. Westview Instruments,
Inc.. 517 U.S. 370. 373 (1996) (quoting McClain v.
Ortmayer, 141 U.S. 419. 424 (1891)). To that end, a
patent "contains a specification describing the
invention 'in such full, clear, concise, and exact terms
as to enable any person skilled in the art ... to make and
use the same'" and "one or more claims, which
"particularly poin[t] out and distinctly clai[m] the
subject matter which the applicant regards as his
invention."" Id. (quoting 35 U.S.C. §
112). The claims identified in a patent define the scope of a
patent grant and are central to resolving patent infringement
suits as "[v]ictory [for the Plaintiff] . . . requires a
finding that the patent claim 'covers the alleged
infringer's product or process, 7 which in turn
necessitates a determination of "what the words in the
claim mean."" Id. at 374 (quoting II.
Schwartz. Patent Law and Practice 80 (2d ed. 1995)}. "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
bane) (quoting Innoval Pure Water. Inc. v. Safari Water
Filtration Sys., 381 F.3d 1111. 1115 (Fed. Cir. 2004)).
the meaning of the words contained in a claim is a matter of
law to be determined by the Court. Id. at 388. The
purpose of such claim construction is to "dctermin[e]
the meaning and scope of the patent claims asserted to be
infringed." Markman v. Westview Instruments.
Inc.. 52 F.3d 967. 976 (Fed. Cir. 1995) (en banc),
aff'd 517 U.S. 370 (1996).
construing patent claims "there is a heavy presumption
that a claim term carries its ordinary and customary
meaning." 3M innovative Properties Co. v. Avery
Dennison Corp., 350 P.3d 1365. 1370 (Ped. Cir. 2003).
"[T|he ordinary and customary meaning of a claim term is
the meaning that the term would have to a person of ordinary
skill in the art in question at the lime of the invention,
i.e.. as of the effective filing date of the patent
application." Phillips, 415 P.3d at 1313.
Moreover, "the 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." Id.: see also Thorner v. Sony
Computer Entm't Am. LLC. 669 F, 3d 1362. 1365 (Fed.
Cir, 2012) ("The words of a claim are generally given
their ordinary and customary meaning as understood by a
person of ordinary skill in the art when read in the context
of the specification and prosecution history. There are only
two exceptions to this general rule: 1) when a patentee sets
out a definition and acts as his own lexicographer, or 2)
when the patentee disavows the full scope of a claim term
either in the specification or during prosecution.")
(internal citations omitted). "In some cases, the
ordinary meaning of claim language as understood by a person
of skill in the art may be readily apparent even to lay
judges, and claim construction in such cases involves little
more than application of the widely accepted meaning of
commonly understood words." Phillips. 415 F.3d
at 1314. As the Federal Circuit has repeatedly held, "a
district court is not obligated to construe terms with
ordinary meanings, lest trial courts be inundated with
requests to parse the meaning of every word in the asserted
claims." 02 Micro Int'l Ltd v. Beyond innovation
Tech. Co., Ltd.. 521 F.3d 1351, 1360 (Fed. Cir. 2008)
(footnote omitted); see also Id. at 1362
("|District courts are not (and should not be) required
to construe every limitation present in a
patent's asserted claims .... Claim construction "is
not an obligatory exercise is redundancy.7") (quoting
U.S. Surgical Corp. v. Ethicon. Inc.. 103 F.3d 1554,
1568 (Fed. Cir. 1997)) (emphasis in original).
other eases, however, "determining the ordinary and
customary meaning of the claim requires examination of terms
that have a particular meaning in a field of art."
Phillips. 415 F.3d at 1314. In such cases, the Court
must look to "those sources available to the public that
show what a person of skill in the art would have understood
disputed claim language to mean. Those sources include the
words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic
evidence concerning relevant scientific principles, the
meaning of technical terms, and the state of the art."
Id. (internal quotation marks omitted).
determining the meaning of disputed terms or phrases, the
Court must begin with the intrinsic record, which consists of
the claims, the specification, and the prosecution history.
Markman, 52 F.3d at 979. The Court looks first lo
the claim language, then "to the rest of the intrinsic
evidence, beginning with the specification and concluding
with the prosecution history, if in evidence."
Interactive Gift Express, Inc. v. CompuServe Inc.,
256 F.3d 1323. 1331 (Fed. Cir. 2001). "Such intrinsic
evidence is the most significant source of the legally
operative meaning of disputed claim language."
Vitrionics Corp. v. Conceptronic, Inc.. 90 F.3d
1576, 1582 (Fed. Cir. 1996).
Court, when examining the intrinsic record, first looks
"to the words of the claims themselves, both asserted
and nonasscrlcd, to define the scope of the patented
invention." Vitrionics. 90 F.3d at 1582. Both
asserted and nonasscrlcd claims can be "valuable sources
of enlightenment as to the meaning of a claim term"
because "claim terms are normally used consistently
throughout the paten\." Phillips, 415 F.3d at
1314. Superfluity is to be avoided if possible when
construing claim language. See Marine Polymer
Technologies, Inc. v. HemCon, Inc.. dl2 F.3d 1350, 1368
(Fed. Cir. 2012) ("Where a particular construction of an
independent claim would nullify claims that depend from it,
the doctrine of claim differentiation creates a presumption
that such a construction is improper."); Merck &
Co.. Inc. v. Teva Pharm. USA. Inc., 395 F.3d 1364. 1372
(Fed. Cir. 2005) ("A claim construction that gives
meaning to all the terms of the claim is preferred over one
that docs not do so.11); Coinark Commc'm, Inc. v.
Harris Corp.. 156 F.3d 1182. 1187 (Fed. Cir. 1998)
(recognizing that while "the doctrine of claim
differentiation is not a hard and fast rule of construction,
it does create a presumption that each claim in a patent has
a different scope"). "If the claim
language is clear on its face, then [the Court's]
consideration of the rest of the intrinsic evidence is
restricted to determining if a deviation from the clear
language of the claims is specified." Interactive
Gift Express, 256 F.3d al 1331. As the Federal Circuit
has reiterated, there are only two circumstances in which
claim interpretation may deviate from the ordinary and
customary meaning of the claim terms: "1) when a
patentee sets out a definition and acts as its own
lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during
prosecution." Thomer v. Sony Entm't Am.
LLC. 669 F.3d 1362. 1365 (Fed. Cir. 2012); see also
Phillips. 415 F.3d at 1316-17; Interactive Gift
Express. 256 F.3d at 1331. An "exacting"
standard must be met in order for an inventor to disavow the
full scope of a claim. Thorner, 669 F.3d at 1366.
"If however the claim language is not clear on its face,
then our consideration of the rest of the intrinsic evidence
is directed to resolving, if possible the lack of clarity.
Interactive Gift Express, 256F.3dat 1331.
Court looks next to the specification to resolve unclear
claim language and to "determine whether the inventor
has used any terms in a manner inconsistent with their
ordinary meaning.'" Vitrionics, 90 F.3d al
1582. "The specification contains a written description
of the invention that must enable one of ordinary skill in
the art to make and use the invention."
Markman, 52 F.3d at 979. The specification, as
required by statute, describes the claimed invention in
"full, clear, concise, and exact terms." 35 U.S.C.
§ 112(a). "For claim construction purposes, the
description may act as a sort of dictionary, which explains
the invention and may define terms used in the claims."
Markman. 52 F.3d at 979. aff'cd. 517
U.S. 370. The specification "may [also] reveal a special
definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess. In such cases,
the inventor's lexicography governs."
Phillips, 415 F.3d at 1316. "In other cases,
the specification may reveal an intentional disclaimer, or
disavowal, of claim scope by the inventor."'
Id. "[Although the specification often
describes very specifies embodiments of the invention, [the
Federal Circuit has] repeatedly warned against confining the
claims to those embodiments." Id. at 1323.
To avoid importing limitations from the specification into
the claims, it is important to keep in mind that the purposes
of the specification are to teach and enable those of skill
in the art to make and use the invention and to provide a
best mode for doing so. One of the best ways to leach a
person of ordinary skill in the art how to make and use the
invention is to provide an example of how to practice the
invention in a particular case. Much of the lime, upon
reading the specification in that context, it will become
clear whether the patentee is setting out specific examples
of the invention to accomplish those goals, or whether the
patentee instead intends for the claims and the embodiments
in the specification to be strictly coextensive.
Id. *"[T]hc 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. at 1315 (quoting
Vitrionics, 90 F, 3d at 1582).
addition to the claim terms themselves and the specification,
the Court "should also consider the patent's
prosecution history, if it is in evidence."
Markman, 52 F.3d at 980. The prosecution history
"consists of the complete record of the proceedings
before the PTO and includes the prior art cited during the
examination of the patent." Phillips, 415 F.3d
at 1317; Vitrionics, 90 F.3d at 15S2. "Like the
specification, the prosecution history provides evidence of
how the PTO and the inventor understood the patent, "
but "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." Phillips. 415
F.3d at 1317. "Nonetheless, the prosecution history can
often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise be." Id.
the Court may also examine extrinsic evidence, which includes
"all evidence external to the patent and prosecution
history, including expert and inventor testimony,
dictionaries, and learned treatises." Markman,
52 F.3d at 980. "[W]hile extrinsic evidence 'can
shed useful light on the relevant art, 1 [the Federal Circuit
has] explained that it is 'less significant than the
intrinsic record in determining the legally operative meaning
of the claim.'" Phillips: 415 F.3d at 1317
(quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858. 862 (Fed. Cir. 2004)) (internal quotations
these principles in mind, the Court proceeds with
construction of the disputed claim terms.
to the Markman hearing conducted hy the Court, the
parties filed a Joint Statement Regarding Claim Construction,
BCF No. 33. that included two agreed-upon claim term
constructions, an agreement that an element found in Claim 1
should he divided into two phrases and construed separately,
and ten disputed claim terms. The Court adopts the
parlies' stipulated construction of the agreed-upon terms
and the agreed-upon division of an element found in Claim 1
as the Court only need construe claims "to the extent
necessary to resolve ... [a] controversy." Vivid
Techs., Inc. v. Am. Science Eng'g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (internal citations omitted).
Accordingly, the term "shaft" as used in Claim 2 is
construed to mean "a structure attached to the barb end
of the tissue anchor11; the phrase "on said shaft distal
from said barb end" as used in Claim 2 is construed to
mean "located on the shaft in a direction opposite or
away from the barb end"; and the element "said
anchor having a barb end and a barb with a tip shaped to
penetrate soft tissue position thereon" is interpreted
separately as an anchor having a "barb end . ., with a
lip shaped to penetrate soft tissue . . .'" and a
"barb" positioned on the barb end. See
Joint Statement at I, ECF No. 33.
remaining ten disputed claim terms, TAI argues six do not
require construction. Although the Court may make a
determination based on the intrinsic and extrinsic evidence
that a claim term needs no construction and should be
understood by its plain and ordinary meaning, such a
determination "may be inadequate when a term has more
than one 'ordinary' meaning or when reliance on a
term's 'ordinary' meaning does not resolve the
parties' dispute." 02 Micro Int. Ltd. v, Beyond
Innovation Tech. Co.. 521 F.3d 1351, 1361 (Fed. Cir.
2008). If such a situation arises, the Court will follow the
Federal Circuit's instruction to construe claims
"that arc in controversy, and only to the extent
necessary to resolve the controversy." Vivid Techs.,
Inc. v. Am. Science Kng'g Inc., 200 F.3d 795. 803
(Fed. Cir. 1999} (internal citations omitted): see also
02 Micro, 521 F.3d at 1362 (noting that when "the
parties present a fundamental dispute regarding the scope of
a claim term, it is the court's duty to resolve
it."). The ten disputed terms are addressed individually
"tissue anchor" (Claims 1-8)
"190 patent discloses a tissue anchoring system, which
includes a tissue anchoring device and tissue anchors.
See '190 Patent at Abstract. The parties contest
the construction of a key part of this system - the
"tissue anchor" used in Claims 1-8 of the '190
contends that the proper construction of the learn
"tissue anchor" is "a rigid device to be
inserted into soft tissue to fixedly retain a separate item
with respect to the soft tissue." Joint Statement at 2,
ECF No. 33. In support of this construction. TAI argues its
proposed construction is consistent with the ordinary meaning
of the term "anchor as a device inserted into something
to retain a separate item to it" and that this ordinary
meaning is evident in the use of the term throughout the
'190 patent. PL's Opening Brief at 7-8, ECF No. 38
(internal quotations omitted). For example. TAI notes that
the '190 patent provides that the tissue anchor "has
a tip 130 adapted to penetrate soft
tissue.' that the "[t]ip 130 should be fairly
rigid to ease tissue penetration." that the anchor
may be "inserted in or thorough a tissue and anchored by
[the] barb. and that "the attachment member [may
include] holes]] for attaching sutures or other suitable
items." such as "'synthetic mesh [or] graft for
later suspension of the vaginal vault to the
contrast, ASTORA proposes the following construction for
"tissue anchor": "a device capable of
independently piercing intact soft tissue and being retained
after piercing." Joint Statement at 2, ECF No. 33. In
support of its construction, ASTORA first contends that the
'190 patent describes "tissue anchors" that arc
capable of independently piercing into or through intact soft
tissue and that the prosecution history
demonstrates Dr. Walshe. through counsel, disclaimed or
disavowed embodiments of the tissue anchor ...