Opinion
Civil Action No. 01-10269-GAO.
September 29, 2004
MEMORANDUM AND ORDER
Diro, Inc. is the assignee of the rights to U.S. Patent No. 5,749,731, entitled "Apparatus for Preserving Interdental Papilla and Method for Using," which claims a procedure and device to be used in restorative dentistry. Diro has granted Bicon, Inc. a license to practice under the '731 patent. Diro and Bicon jointly brought this action alleging that The Straumann Company and Institut Straumann AG (collectively "Straumann") have infringed claim 5 of the '731 patent. Straumann has brought counterclaims seeking a declaratory judgment that the '731 patent is invalid and that the defendants have not infringed.
After a two-day evidentiary hearing, I issued a Markman order construing the terms of claim 5 of the '731 patent. See Bicon, Inc. v. Straumann Co., 271 F. Supp.2d 368 (D. Mass. 2003) ("Markman Order"). The parties have since cross-moved for summary judgment on the issue whether certain of Straumann's products — in particular, its impression caps and burnout copings — infringe claim 5. Straumann also has moved to dismiss Bicon's claims, arguing that Bicon lacks standing. After hearing and consideration of the parties' submissions, I conclude that Diro's motion for summary judgment ought to be denied, and Straumann's motion for summary judgment ought to be granted because as a matter of law the accused devices do not infringe claim 5. In addition, Straumann's motion to dismiss Bicon's claims for lack of standing ought to be granted.
I. Standing
Straumann has moved to dismiss Bicon's claims, arguing that because Bicon is a nonexclusive licensee, it lacks standing to bring claims for infringement of the '731 patent. It is uncontroverted that Diro is the assignee of the original inventor's rights under the '731 patent and that Diro has granted Bicon a nonexclusive license to practice under that patent. The nonexclusive nature of Bicon's license means that Diro may grant licenses to others, and Bicon has no right to prevent others from practicing under the patent.
The law on standing is clear: "A holder of . . . a nonexclusive license suffers no legal injury from infringement and, thus, has no standing to bring suit or even join in a suit with the patentee." Ortho Pharm. Corp. v. Genetics Inst., Inc., 52 F.3d 1026, 1031 (Fed. Cir. 1995). "To have co-plaintiff standing in an infringement suit, a licensee must hold some of the proprietary sticks from the bundle of patent rights. . . ." Id.
There is no evidence on the record before me that Bicon has any proprietary rights under the '731 patent or any right to exclude others from practicing the invention. Rather, the record reveals that Bicon only has the right to practice as a licensee. "Thus, considering only this right, [Bicon like] Ortho is a bare, that is, nonexclusive, licensee and has no standing to bring or join a suit for infringement" against Straumann. Id. at 1034. Accordingly, Bicon's claims must be dismissed.
II. Infringement
A. Applicable law
Patent infringement cases proceed in two steps. "First, the claims of the patent must be construed to determine their scope. Second, a determination must be made as to whether the properly construed claims read on the accused device." Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1330 (Fed. Cir. 2001) (citation omitted).
The first step, claim construction, is purely a matter of law for the Court to decide, Markman v. Westview Instruments, Inc., 517 U.S. 370, 387-89 (1996), and my conclusions are reflected in the previously entered Markman Order. The second step, determining whether an accused device infringes, requires findings of fact. Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1369 (Fed. Cir. 2004). The patentee has the burden to prove by a preponderance of the evidence that every limitation of the asserted patent claim is present in the alleged infringing device. CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1161 (Fed. Cir. 1997). Summary judgment is proper at this stage if the record reveals no trial-worthy issues of fact on the question of infringement, and one party is entitled to judgment as a matter of law. Int'l Rectifier Corp., 361 F.3d at 1369.
In light of the Markman Order, Diro concedes that not every limitation of claim 5 of the '731 patent is literally present in each of the Straumann devices. Nevertheless, Diro asserts that the Straumann devices infringe under the doctrine of equivalents, which the Federal Circuit has summarized as follows:
A device that does not literally infringe a claim may nonetheless infringe under the doctrine of equivalents if every element in the claim is literally or equivalently present in the accused device. A claim element is equivalently present in an accused device if only "insubstantial differences" distinguish the missing claim element from the corresponding aspects of the accused device.Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997) (citations omitted). It has also been said that infringement may be found under the doctrine of equivalents if the accused device performs substantially the same function in substantially the same way to achieve substantially the same result. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 35 (1997).
The doctrine of equivalents is an exception to the literal infringement requirement and must necessarily be applied narrowly. The Supreme Court has explained that "the doctrine of equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirements." Id. at 29. When a patent contains "clear structural limitations, the public has a right to rely on those limits in conducting its business activities." Sage Prods., 126 F.3d at 1425. Courts, therefore, must "ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety." Warner-Jenkinson, 520 U.S. at 29. "Although equivalence is a factual matter normally reserved for a fact finder, the trial court should grant summary judgment in any case where no reasonable fact finder could find equivalence." Sage Prods., 126 F.3d at 1423; see also Warner-Jenkinson, 520 U.S. at 39 n. 8 ("[I]f a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court, as there would be no further material issue for the jury to resolve.").
B. Claim 5 of the '731 patent
The '731 patent generally describes a procedure and device for use during the implantation of dental prosthetics. Claim 5, in issue here, describes a device used to preserve the gum structure in the area where a dental prosthetic is to be implanted in a patient's jaw and reads as follows:
An emergence cuff member for use in preserving the interdental papilla during the procedure of placing an abutment on a root member implanted in the alveolar bone of a patient in which the abutment has a frusto-spherical basal surface portion and a conical surface portion having a selected height extending therefrom comprising
a generally annular member formed of biocompatible synthetic plastic having first and second ends,
a bore extending from the first to the second ends,
the bore having a taper generally matching that of the conical surface portion of the abutment, the larger end of the bore being at the first end,
the outer surface of the annular member forming a feathered edge with the bore at the first end of the annular member,
the distance between the first and second ends being less than the height of the conical surface,
the diameter of the cuff member increasing in the direction going from the first end to the second end, and
a radially inwardly extending flexible lip formed at the first end of the cuff member.
To prevail on its claim of infringement, Diro must demonstrate that Straumann's devices contain, either literally or by equivalence, each of the limitations of claim 5.
C. Straumann's devices
Diro has accused two types of Straumann devices of infringement: impression caps and burnout copings. The Straumann devices, like the device described in claim 5 of the '731 patent, are used in connection with dental implant procedures, although the Straumann devices are used in a different manner. The Straumann impression caps are used in a patient's mouth to assist in the process of taking an impression of the vacant space to be filled by a dental prosthetic. The Straumann burnout copings generally are used in a laboratory to assist in the process of fabricating a prosthetic device. As set forth below, Diro has failed to make a case sufficient to prove that each limitation of claim 5 reads on either or both of the accused devices.
1. Preamble
Claim 5 describes what the inventor called an "emergence cuff" that is used in restorative dentistry. The preamble is the introductory portion of claim 5 that precedes the word "comprising." As stated in the Markman Order, the preamble is an integral part of claim 5, and certain terms used in the limitations cannot be fully understood without reference to the structure described in the preamble. Bicon, 271 F. Supp. 2d at 372-73. In this way, the preamble serves as a further limitation of claim 5.
The preamble states that the emergence cuff is used with "an abutment [placed] on a root member implanted in the alveolar bone of a patient in which the abutment has a frusto-spherical basal surface portion and a conical surface portion having a selected height extending therefrom." I have previously found that the abutment is not any structure performing a certain function, but rather a specific structure having the characteristics indicated in the claim and specification. Id. at 373-74. In particular, the abutment is a structure separate and different from the "root member" or implant. The root member is implanted into the alveolar bone, and the abutment is placed on the implant. The portion of the abutment closest to the implant has a "frusto-spherical basal surface," which means that the base of the abutment has a convex surface. Id. at 375-76. Further, the abutment has a conical surface portion that extends away from the frusto-spherical basal surface, and implant, to a selected height.
Diro acknowledges that some of the characteristics of the abutment and cuff member described in claim 5 are not literally present in the Straumann devices. First, Diro concedes that the abutment in either Straumann device does not have a frusto-spherical basal surface. It argues, however, that the frusto-spherical surface, or its equivalent, may be found on the Straumann implant. Diro suggests that the trumpet-shaped neck surface of the Straumann implant satisfies this limitation.
In support of this argument, Diro suggests that one-to-one correspondence between the components of the accused devices and the structure of the device described in the claim limitations is not required. In other words, a would-be infringer cannot avoid infringement by having multiple limitations found in a single component of its device or a single claim limitation found in multiple components of its device. See Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 989 (Fed. Cir. 1989) ("One-to-one correspondence of components is not required, and elements or steps may be combined without ipso facto loss of equivalency."), overruled on other grounds by A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1038-39 (Fed. Cir. 1992); Intel Corp. v. United States Int'l Trade Comm'n, 946 F.2d 821, 831-32 (Fed. Cir. 1991) ("infringement under the doctrine of equivalents may be established even though the accused device requires a number of components to perform functions which the patented invention achieves by use of one component"). Applied here, Diro suggests that infringement may be found even though the frusto-spherical basal surface described in the claim is found on the implant rather than the abutment. Diro's argument is unconvincing.
While it is true that in some instances one-to-one correspondence of components is not required, that doctrine is not without limitations. The Federal Circuit has stated that application of the doctrine requires a case-specific inquiry and that "two physical components of an accused device may be viewed in combination to serve as an equivalent of one element of a claimed invention, as long as no claim limitation is thereby wholly vitiated." Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1320 (Fed. Cir. 1998) (emphasis added). Therefore, one-to-one correspondence between the location of a structure described in a limitation and its location on an infringing device is required when the limitation indicates a specific location and distinguishes it from others.
In Dolly, Inc. v. Spalding Evenflo Cos., 16 F.3d 394, 398-400 (Fed. Cir. 1994), a case concerning a patent that described the specific physical structure of a portable and adjustable child's booster seat and highchair, the Federal Circuit considered and rejected an argument in some respects similar to that which Diro has put forth here. In Dolly, the patent claim in issue described a chair that had a stable rigid frame in addition to a seat panel and a back panel. The patent holder argued that the accused device infringed by equivalents because it contained a stable rigid frame made up of parts that included the seat and back panels. The Federal Circuit reversed the trial court's finding that the accused device infringed under the doctrine of equivalents because "`[u]nder the doctrine of equivalents, the accused device and the claimed invention cannot work in `substantially the same way' if a limitation (including its equivalent) is missing.' The Snack Play chair lacks a stable rigid frame separate from the [seat and back] panels."Id. at 398 (citation omitted).
The Court went on to distinguish Sun Studs and Intel Corp., two cases on which Diro relies, and explained why they did not require a different result:
Sun Studs does not apply here because the claim in Sun Studs merely recited aligning and charging means without any additional limitation regarding the relationship of the two means to one another. In contrast, claim 16 specifically requires a stable rigid frame formed of components other than the seat and back panels. Such a stable rigid frame does not exist in the accused device. This court cannot "convert a multi-limitation claim to one of [fewer] limitations to support a finding of equivalency."Id. at 399 (citation omitted) (alteration in original); id. at 398 (finding Intel inapposite because in that case every limitation or its equivalent was present in the accused device). Accordingly, Dolly teaches that while "[t]he doctrine of equivalents does not require a one-to-one correspondence between components of the accused device and the claimed invention . . . [t]he accused device must nevertheless contain every limitation or its equivalent." Id. at 398. Further, "[a]n `equivalent' of a claim limitation cannot substantially alter the manner of performing the claimed function," and "the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims." Id. at 400.
I have already found as a matter of law that the abutment described in claim 5 is "not any structure that can serve the function of an abutment," but rather it is a specific discrete structure separate from the implant structure. Bicon, 271 F. Supp.2d at 373-34. Further, the abutment described in claim 5 must have a frusto-spherical basal surface. Id. Thus, a dental device that has a frusto-spherical basal surface not on the abutment but on the implant is not equivalent to the structure described in claim 5. To find otherwise would completely vitiate one of the claim limitations, i.e., that the abutment has a frusto-spherical basal surface. Having claimed within the scope of its patent a device having specific characteristics, including discrete implant and abutment structures and an abutment with a frusto-spherical basal surface, Diro cannot now re-write the claim to eliminate these specific structural limitations.
Diro has a second problem with its equivalence argument concerning the limitation requiring an abutment with a frusto-spherical basal surface. In the Markman Order, I found that the description of the abutment having a frusto-spherical basal surface portion requires that the abutment have a convex outer surface: "`Frusto-spherical' rather obviously refers to a solid having the shape of a frustum of a sphere — that is, a sphere the upper portion of which has been `cut off' by a plane. The remaining portion of the sphere would have, just as a full sphere would have, a convex surface." Id. at 375. In concluding that the surface must be convex, I rejected Diro's argument that a concave surface could be described as frusto-spherical: "Bicon has not shown that this alternate definition of `frusto-spherical' is the `ordinary and accustomed meaning' of the term as it would be understood by experts in the field of geometry — a highly dubious proposition to say the least." Id. Diro now argues that the trumpet-shaped surface of the implant neck, which it describes as concave, is equivalent to a convex, frusto-spherical basal surface. Again, its argument is unconvincing.
To prevail on its equivalence claim, Diro must prove that the trumpet-shaped surface of the implant differs only insubstantially from the limitation's requirement that the abutment has a convex surface. "Whether an element of the accused device is equivalent to a claim limitation depends on `whether the substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.'" Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998) (citation omitted). Not all claim limitations, however, are "entitled to an equal scope of equivalents." Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1106 (Fed. Cir. 2000). The "inherent narrowness of the claim language" limits the scope of possible equivalents, and consequently, "many limitations warrant little, if any, range of equivalents." Id.
Here, there is no infringement by equivalents because Diro's theory would completely vitiate the claim limitation. Tronzo, 156 F.3d at 1160 ("If a theory of equivalence would vitiate a claim limitation, . . . there can be no infringement under the doctrine of equivalents as a matter of law."). The patentee used clear language to impose a narrowing structural limitation in claim 5, and that language necessarily limits the scope of possible equivalents. Whatever the potential scope of equivalents, it cannot include the concave, trumpet-shaped neck of the implant. First, a concave surface is the opposite of, and thus cannot be equivalent to, a convex surface. Moore U.S.A., Inc., 229 F.3d at 1106 ("If a minority could be equivalent to a majority, this limitation would hardly be necessary. . . . Second, it would defy logic to conclude that a minority — the very antithesis of a majority — could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise."); see also Tronzo, 156 F.3d at 1160 (in prosthetic device used for hip replacement, hemispherical surface is not equivalent to "generally conical surface"; "[s]uch a result is impermissible under the all-elements rule ofWarner-Jenkinson because it would write the `generally conical outer surface' limitation out of the claims").
Further, the trumpet-shaped neck of the implant does not satisfy the function-way-result requirement. As stated in the Markman Order, the specification makes clear that when the claimed emergence cuff is seated on the abutment, "the bottom end of the cuff will `serve as a smooth continuation of the frusto-spherical surface of the basal portion of the abutment member. . . .' 2:51-53." Bicon, 271 F. Supp.2d at 377. Straumann's impression caps and copings do not form a smooth continuation of the neck of the implant. Rather, because of the undercut of the concave surface of the implant neck, there is a void between the bottom lip of the caps and copings and the implant neck.
Without having sought reconsideration of the Markman Order, Diro belatedly asks for as much in its opposition to Straumann's motion for summary judgment. In its brief, Diro argues that I erred in construing the phrase "frusto-spherical basal surface" to require a convex surface. In support, Diro attaches the declaration of Markus Zahn, a professor at the Massachusetts Institute of Technology who appears to have some expertise in geometry. Dr. Zahn opines that the term "frustospherical" should be understood to include both convex and concave surfaces:
[T]he term frusto-spherical is not limited to solid spherical bodies. It can be and is applied in geometry to hollow bodies that have a spherical shape. This is illustrated by a diagram attached as Exhibit 2. It depicts cutting a tennis ball by a plane into two segments. As a result, the exterior of each segment has a convex surface and the interior has a concave surface.
Zahn Declaration at 3.
Diro's renewed argument is fruitless for a number of reasons. First, Diro's newly offered evidence concerning acceptable uses of the term "frusto-spherical" is late, to say the least, as it comes several months after the claim construction opinion issued. There is no reason such evidence could not have been presented prior to the Markman hearing, and it does not qualify, therefore, as "newly discovered evidence," which might provide a reason for reconsideration. Second, Dr. Zahn's declaration does nothing to weaken the conclusion previously stated in the Markman Order,i.e., the ordinary and accustomed meaning of frusto-spherical is that, unless a different meaning is somehow required either by direct expression or inference from context, it describes a convex outer surface of a sphere. The patent does not disclose or even hint at a different use of the term.
Finally, even if the term "frusto-spherical" could be used to describe a concave surface, the Straumann implant neck does not have a "frusto-spherical basal surface portion." In other words, even if a frusto-spherical surface is created when a plane is passed through a hollow sphere, thus leaving a structure with a convex exterior and a concave interior, the Straumann device does not have such a surface. The concave surface on the neck of the Straumann implant is not created by passing a plane through a hollow sphere, but rather "the frustum would lie in the negative space adjacent to any point of the basal portion's exterior."Bicon, 271 F. Supp. 2d. at 375. Dr. Zahn's declaration implicitly supports this conclusion, and, notably, nowhere does Dr. Zahn offer the opinion that either of the Straumann devices has a frusto-spherical basal surface.
2. A generally annular member formed of biocompatible synthetic plastic, having first and second ends, a bore extending from the first to the second ends, the bore having a taper generally matching that of the conical surface portion of the abutment, the larger end of the bore being at the first end
It is uncontroverted that the Straumann impression caps and copings are annular, or ring shaped, and that they have first and second ends with a bore extending from the first to the second ends. The parties do dispute, however, where the first and second ends are to be found and whether the taper of the bore matches the conical surface of the abutment.
Diro argues that the first and second ends and the bore extending between them can be found on the bottom-most portion of each Straumann device, so that the second end is actually found at an internal point below the top of each device. The distance between the first and second ends is identified as item A in Dr. Reffner's sketches of the Straumann products that were submitted in support of Diro's motion for summary judgment. In support of this approach, Diro argues that Straumann, in an effort to avoid infringement, cannot design a device that otherwise infringes a patent claim and then add structural elements not found in the claim: "The rest of these products [the portion above the area identified as item A in Dr. Reffner's sketches] comprise additions or extensions of the claimed structure which Straumann has augmented in order to adapt the claimed subject matter to impression taking and crown fabrication." Diro Mem. at 20. See also A.B. Dick Co. v. Burroughs Corp., 713 F.2d 700, 703 (Fed. Cir. 1983) ("It is fundamental that one cannot avoid infringement merely by adding elements if each element recited in the claims is found in the accused device.").
I need not decide whether Diro's argument is correct because even assuming that the second end can be found at an internal point below the top of each Straumann device, the Straumann devices still do not infringe because other limitations in claim 5 do not read on the devices. For example, the internal bore of each device does not have a taper generally matching the taper of the conical surface of the abutment. With regard to this limitation, Diro again argues that one-to-one correspondence of components is not necessary, and the devices infringe because the taper of the bore on the lower portion of each device matches the taper of what it has identified as the conical surface of the implant shoulder, rather than the conical surface of the abutment. This argument is unconvincing because it too would vitiate a claim limitation. As explained in detail above, the patent claims that the abutment and the implant are separate structures and that the taper of the bore of the cuff matches the conical surface of the abutment, not the implant. The doctrine of equivalents cannot be applied to remove clear, narrowing structural limitations from the claim.
It should be noted that the taper of the bore of the Straumann copings does generally match the taper of the conical surface of the Straumann abutment. However, Diro has chosen to argue that the relevant bore and taper is at the lower portion of the copings and the implant shoulder, rather than that which matches the abutment, because, as discussed below, other limitations are found only in that lower portion of the copings.
3. The outer surface of the annular member forming a feathered edge with the bore at the first end of the annular member
The parties dispute whether the outer surface of each Straumann device forms a feathered edge. Diro argues that each device has a lip that extends from the bottom of the device, sits practically seamlessly on the implant shoulder, and forms a feathered edge "or its practical, real world equivalent." Diro Mem. at 17-18. Straumann presented declarations of several experts who opined that the each Straumann device does not have a feathered edge. Straumann Opp'n at 27-28. It is not necessary, or proper, to resolve this factual dispute at the summary judgment stage. Regardless whether the Straumann devices have feathered edges, they do not infringe because, as indicated, several other limitations are not present.
4. The distance between the first and second ends being less than the height of the conical surface
Diro's infringement argument is further hampered by its inconsistency. When it is dealing with the limitation comparing the taper of the bore to the conical surface of the abutment, Diro argues that the relevant conical surface should be found on the implant shoulder, not the abutment. But when confronted with the limitation that the distance between the first and second ends is less than the height of the conical surface, Diro argues that the relevant conical surface is that of the abutment, not the implant shoulder. Diro cannot have it both ways.
This limitation does not read on the Straumann devices. First, if the second end is at the top of each Straumann device, then the distance between the first and second ends is patently not less than the height of the conical surface of the abutment. Second, if the second end is at an internal point near the bottom of each Straumann device, as Diro has argued, and the relevant conical surface is that of the implant shoulder, as Diro has argued with regard to other claim limitations, then Diro has not proved that the distance between the first and second ends is less than the height of the conical surface of the implant shoulder. Diro has also not demonstrated why the relevant conical surface should be found on the abutment when analyzing this limitation but on the shoulder when analyzing the limitation requiring that the taper of the internal bore match the conical surface of the abutment.
5. The diameter of the cuff member increasing in the direction going from the first end to the second end
As indicated in the Markman Order, this limitation requires that "[t]he outside diameter of the surface of the emergence cuff is smaller at the first end than at the second end." Bicon, 271 F. Supp. 2d at 377. In reaching that conclusion, I rejected Straumann's argument that this limitation requires that "the diameter of the cuff continuously increases over a substantial portion of its entire height." Id. at 378. It is uncontroverted that this limitation, as construed, reads on the Straumann impression caps because the diameter at the first end is smaller than the diameter at the second end, regardless whether the second end is at the top of the device or at the internal point that Diro has suggested. This limitation does not, however, read on Straumann's copings.
Diro argues that this limitation is found in each coping because the second end is at an internal point near the bottom of the coping. Diro refers to the tracings provided by Dr. Reffner and indicates that the distance between the first and second ends is identified as item A. Diro Mem. at 17. The same tracings indicate that the smaller diameter, identified as item D1, is at the first end, but the larger diameter, identified as item D2, is not at what Diro has identified as the second end. Rather, the larger diameter is at a point between the first and second ends. These tracings suggest that the diameter at the second end, that point at the top of the distance marked as item A, is less than the diameter at the first end. Accordingly, this limitation does not read on Straumann's copings.
6. A radially inwardly extending flexible lip formed at the first end of the cuff member
It is uncontroverted that this limitation reads on the Straumann devices.
III. Conclusion
Straumann's motion to dismiss Bicon's claims for lack of standing is granted.
As to the summary judgment motions, Diro has not demonstrated a trial-worthy case of infringement because, as discussed above, it cannot prove that every limitation of claim 5 of the '731 patent reads on either of the Straumann devices, either literally or by the doctrine of equivalents, properly understood. Accordingly, Straumann's motion for summary judgment of noninfringement is granted, and Diro's cross-motion for summary judgment is denied.
It is SO ORDERED.