Opinion
Case No. 1:11-cv-871
January 22, 2014, Decided. January 22, 2014, Filed
For Ethicon Endo-Surgery, Inc., Ethicon Endo-Surgery, LLC, Plaintiffs, Counter Defendants: David Edward Schmit, LEAD ATTORNEY, Frost Brown & Todd — 1, Cincinnati, OH; Chad Johnson Peterman, Jeremy A Weinberg, William F Cavanaugh, PRO HAC VICE, Patterson Belknap Webb & Tyler LLP, New York, NY; Charles D Hoffmann, PRO HAC VICE, Hoffmann Marshall Strong LLP, New York, NY.
For Covidien, Inc., Covidien LP, Defendants: James Francis McCarthy, III, LEAD ATTORNEY, Katz Teller Brant & Hild, Cincinnati, OH; Robert Alexander Pitcairn, Jr, LEAD ATTORNEY, Katz, Teller, Brant & Hild - 1, Cincinnati, OH; Darius C Gambino, PRO HAC VICE, DLA Piper, LLP, Philadelphia, PA; Drew M Wintringham, Francis William Ryan, IV, PRO HAC VICE, DLA Piper, New York, NY; Edward H Sikorski, PRO HAC VICE, DLA Piper, LLP, San Diego, CA; Erica J Pascal, PRO HAC VICE, DLA Piper, San Diego, CA; Joanna Sykes-Saavedra, PRO HAC VICE, DLA Piper LLP (US), Atlantic City, NJ; Matthew Ganas, Melissa A. Reinckens, PRO HAC VICE, DLA Piper, LLP, New York, NY.
For Covidien LP, Counter Claimant: James Francis McCarthy, III, LEAD ATTORNEY, Katz Teller Brant & Hild, Cincinnati, OH; Robert Alexander Pitcairn, Jr, LEAD ATTORNEY, Katz, Teller, Brant & Hild - 1, Cincinnati, OH; Darius C Gambino, PRO HAC VICE, DLA Piper, LLP, Philadelphia, PA; Drew M Wintringham, Francis William Ryan, IV, PRO HAC VICE, DLA Piper, New York, NY; Edward H Sikorski, PRO HAC VICE, DLA Piper, LLP, San Diego, CA; Erica J Pascal, PRO HAC VICE, DLA Piper, San Diego, CA; Joanna Sykes-Saavedra, PRO HAC VICE, DLA Piper LLP (US), Atlantic City, NJ; Matthew Ganas, Melissa A. Reinckens, PRO HAC VICE, DLA Piper, LLP, New York, NY.
For Covidien, Inc., Counter Claimant: James Francis McCarthy, III, LEAD ATTORNEY, Katz Teller Brant & Hild, Cincinnati, OH; Robert Alexander Pitcairn, Jr, LEAD ATTORNEY, Katz, Teller, Brant & Hild - 1, Cincinnati, OH; Darius C Gambino, PRO HAC VICE, DLA Piper, LLP, Philadelphia, PA; Drew M Wintringham, Francis William Ryan, IV, DLA Piper, New York, NY; Edward H Sikorski, PRO HAC VICE, DLA Piper, LLP, San Diego, CA; Erica J Pascal, DLA Piper, San Diego, CA; Joanna Sykes-Saavedra, PRO HAC VICE, DLA Piper LLP (US), Atlantic City, NJ; Matthew Ganas, Melissa A. Reinckens, PRO HAC VICE, DLA Piper, LLP, New York, NY.
This civil action is before the Court on Defendants' Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 5,989,275 (Doc. 101) and the parties' responsive memoranda (Docs. 111 and 119).
I. BACKGROUND
Plaintiffs assert infringement of independent claim 1 and dependent claim 3 of U.S. Patent No. 5,989,275 (the "'275 patent"). (Doc. 101-1 at ¶¶ 6-8). The '275 patent, entitled "Damping Ultrasonic Transmission Components," was filed on February 28, 1997, issued on November 23, 1999, and is assigned to Plaintiff. ( Id. at ¶ 1).
The ultrasonic surgical instrument described in the '275 patent converts electrical energy into mechanical motion, which results in high frequency longitudinal waves of ultrasonic energy that propagate down the length of the instrument's acoustic assembly to the end effector at the distal end. ( Id. at ¶¶ 2-4). The longitudinal waves of ultrasonic energy result in axial or longitudinal ( i.e., forward and backward) vibrational motion of the end effector at the distal end of the acoustic assembly. ( Id. at ¶¶ 3, 39). The end effector is placed in contact with the tissue of the patient to transfer ultrasonic energy to the tissue. ( Id. at ¶¶ 3-5). The transfer of vibrational ultrasonic energy from the end effector to the tissue causes, among other things, mechanical cutting of the tissue. ( Id. at ¶ 5).
Defendants now move for summary judgment on the basis that Plaintiffs have failed to raise any genuine issue of material fact with respect to alleged infringement of the '275 patent's only asserted claims: independent claim 1 and dependent claim 3. (Doc. 101 at 5). Independent claim 1, from which claim 3 depends, teaches a "damping member surrounding at least a portion of the transmission rod." ( Id.) The '275 patent also refers to the claimed "damping member" as a "damping sheath." ( Id.) According to the patent, the damping sheath dampens or "absorb[s] unwanted ultrasonic energy from the transmission rod," particularly "unwanted transverse vibrations." ( Id.) Defendants argue that no genuine issue exists as to whether the Sonicision sleeve meets the "configured to loosely contact" or "adapted to absorb undesired vibrations" limitation of claims 1 and 3, and that summary judgment of no infringement is therefore warranted. ( Id. at 7-8).
II. UNDISPUTED FACTS
( See Doc. 101-1 and Doc. 111 at 22-45).
1. The '275 patent, entitled "Damping Ultrasonic Transmission Components," was filed on February 28, 1997, issued on November 23, 1999, and is assigned to Plaintiff. (Doc. 102-1 at 2).
2. The '275 patent states that "[i]n a typical ultrasonic transmission device, a generator sends electrical energy to a transducer. The transducer converts electrical energy into mechanical motion at ultrasonic frequencies. The vibrational motion is transmitted to the distal end of an acoustical assembly of the transmission device." ( Id. at 10).
3. Referring to the surgical system illustrated in Figure 1, the '275 patent states, after "converting the electrical energy into mechanical motion":
The mechanical motion results in longitudinal waves of ultrasonic energy that propagate through the acoustic assembly 80 in an acoustic standing wave to vibrate the acoustic assembly 80 at a selected frequency and amplitude. An end effector 88 at the distal end of the acoustic assembly 80 is placed in contact with tissue of the patient to transfer the ultrasonic energy to the tissue. The cells of the tissue in contact with the end effector 88 of the acoustic assembly 80 will move with the end effector 88 and vibrate.
( Id. at 11).
4. In a section entitled "Description of the Preferred Embodiments," the '275 patent explains that after high frequency longitudinal waves of ultrasonic energy are produced, "the ultrasonic energy is transmitted through the acoustic assembly 80 to the end effector 88." ( Id. at 12).
5. In a section entitled "Description of the Preferred Embodiments," the '275 patent explains that "[t]he transfer of vibrational ultrasonic energy from the end effector to the tissue causes other effects including mechanical tearing, cutting, cavitation, cell disruption, and emulsification." ( Id. at 11).
6. When Plaintiffs' expert, Dr. Mark Schafer, was asked the following question at his October 7, 2013 deposition regarding the Expert Report of Mark E. Schafer, Ph.D., dated August 19, 2013 ("Schafer Infringement Report"): "is it correct that this is your expert report concerning infringement of the '27 — what I'm going to refer to as the '275 and '501 patents in this case?", Dr. Schafer testified: "Yes, ma'am." ( Id. at 26-28).
Plaintiffs admit only that No. 6 quotes a portion of the Schafer Dep. Tr.
7. Paragraph 21 of the Schafer Infringement Report states, in relevant part: "It is my opinion based upon the materials that I have reviewed, and my knowledge and experience, that Sonicision infringes the following claims of the following patents: '275 patent: claims 1 and 3." ( Id. at 37).
Plaintiffs admit only that No. 7 quotes a portion of the Schafer Infringement Report.
8. During the October 8, 2013 deposition of Defendants' expert, Dr. William Durfee, counsel for Plaintiffs stated the following: "And by asserted claims, Ethicon has asserted that Sonicision infringes Claims 1 and 3 of the '275 patent. So I just want to make sure you have that understanding." ( Id. at 54).
9. Asserted claim 3 of the '275 patent depends from independent claim 1 and incorporates all the claim limitations of independent claim 1. ( Id. at 17-18).
10. Independent claim 1 of the '275 patent requires a "damping member surrounding at least a portion of the transmission rod." ( Id.)
11. The '275 patent refers to the claimed "damping member" as a "dampening member" or "damping sheath." ( Id. at 14).
12. In describing ultrasonic surgical instruments, the Schafer Infringement Report states that "[o]ther physical components such as an extender (also referred to as a transmission rod or waveguide) are coupled to the horn section to deliver the vibrational waves to the blade/waveguide, causing the blade to vibrate ultrasonically." ( Id. at 38).
Plaintiffs admit only that No. 12 quotes a portion of the Schafer Infringement Report.
13. The '275 patent states the following:
Conventional ultrasonic devices may also dampen unwanted vibration by the use of a water layer between a transmission component and a sheath. For example, U.S. Pat. No. 5,248,296 discloses an ultrasonic device having sheath that surrounds a wire. A small annular space or passageway is formed between the sheath and the wire. The passageway is filled with a pressurized fluid, such as water or saline solution. Although the fluid may effectively dampen unwanted vibrations of the wire, the fluid usually tends to cause dissipation of desired longitudinal vibration.
( Id. at 10).
14. The '275 patent states the following:
The damping sheath 160 is more effective than using silicone rubber rings located only at nodes of longitudinal vibration because the damping sheath 160 can dampen transverse motion occurring near multiple antinodes of the unwanted vibration which are located randomly along the length of the transmission rod 86 relative to the nodes and antinodes of the desired longitudinal vibration. The damping sheath 160 can also effectively absorb the unwanted ultrasonic energy without using a damping fluid, which is more efficient and is advantageous in situations where the use of fluid may be inconvenient or impractical.
( Id. at 14).
15. The Schafer Infringement Report includes a claim chart setting forth Dr. Schafer's opinions regarding infringement of the '275 patent, which states: "Sonicision's transmission rod is surrounded by a damping sheath (sleeve)." ( Id. at 41).
Plaintiffs admit only that No. 15 quotes a portion of the Schafer Infringement Report.
16. In referring to the Sonicision, the Schafer Infringement Report states that
the nominal clearance between the flexible sheath and the transmission rod is small. The inner diameter of the flexible sheath is 0.16 inches (Dep. Exs. 2005, 2100) and it is made of extruded PTFE; and the outer diameter of the semi-flexible, titanium transmission rod varies between 0.157 at the nodes/flanges, and 0.145 in between the flanges (Dep. Exs. 2004, 2101).
Plaintiffs admit only that No. 16 quotes a portion of the Schafer Infringement Report.
17. The '275 patent's independent claim 1 requires a "damping member configured to loosely contact the transmission rod over a portion of the transmission rod." ( Id. at 17-18).
18. In its April 25, 2013 Order on Claim Construction ("Claim Construction Order"), the Court construed the claim term "configured to loosely contact" to mean "structured to have contact other than at fixed support points, but not tightly fitted." (Doc. 81 at 14-15).
19. In its Claim Construction Order, the Court stated: "The Court agrees with Defendants that their proposed construction is appropriately consistent with the patent specification by distinguishing loose contact from attachment at fixed support members, and tracks the claim language by making clear that the damping member makes actual contact with the transmission rod." ( Id. at 15).
20. In referring to the embodiments shown in Figures 5 and 6, the '275 patent states that "the damping sheath 160 of the surgical instrument 150 loosely surrounds at least a portion of the transmission rod 86." (Doc. 102-1 at 14).
21. In referring to the embodiments shown in Figures 5 and 6, the '275 patent states that the damping sheath is "coupled or attached to the transmission rod 86 near one or more nodes." ( Id.)
22. In referring to the embodiments in Figures 5 and 6, the '275 patent specification states that "the damping sheath 160 is coupled to or maintained on the transmission rod 86 by compliant members such as, for example, fenders or O-rings" and that "[t]he compliant members 190a, 190b, and 190c are preferably disposed around the transmission rod 86 near nodes in order to minimize damping of the desired longitudinal vibration energy." ( Id. at 15).
23. The '275 patent defines a node as "[a] minimum or zero crossing in the vibratory motion standing wave," "where axial motion is usually minimal." ( Id. at 12).
24. Plaintiffs' expert, Dr. Schafer, testified at his deposition that "nodal locations are points at which there is minimal longitudinal vibration." ( Id. at 30).
Plaintiffs admit only that No. 24 quotes a portion of the Schafer Dep. Tr.
25. Plaintiffs' expert, Dr. Schafer, testified at his deposition that a "fixed support point" is "fixed in terms of its location." ( Id. at 29).
Plaintiffs admit only that No. 25 quotes a portion of the Schafer Dep. Tr.
26. Plaintiffs' expert, Dr. Schafer, testified at his deposition that nodal points are "well-established" and "fixed locations." ( Id. at 30).
Plaintiffs admit only that No. 26 quotes a portion of the Schafer Dep. Tr.
27. In referring to the Sonicision, the Schafer Infringement Report states that "the outer diameter of the semi-flexible, titanium transmission rod varies between 0.157 at the nodes/flanges, and 0.145 in between the flanges." ( Id. at 48).
Plaintiffs admit only that No. 27 quotes a portion of the Schafer Infringement Report.
28. Engineering Change Form, EC Title: Issue of new revision of DRW, RTS, and MNP's for the Milwaukee Disposable (DRW-00223-00R06, RTS-00223-00R09, MNP-00011-00R07, MNP-00022-00R08, MNP-00023-00R06 and MNP-00024-00R08), dated December 7, 2010 (Bates numbered COV0374362-454) ( Id. at 60-61) depicts the following diagrams, at COV0374363-64:
29. The Schafer Infringement Report contends that "Figure 9(d) of the MTR is an example of an image showing contact between the sheath and the transmission rod at a raised nodal location." ( Id. at 49).
Plaintiffs admit only that No. 29 quotes a portion of the Schafer Infringement Report.
30. When asked about CT Scan 9(d) from Exhibit A of the Schafer Infringement report, taken at a nodal rib location, Dr. Schafer testified that "it was not my point to show contact at the rib. That's not what the patent requires in terms of lose [sic] contact. It has to have contact other than fixed locations." ( Id. at 32).
Plaintiffs admit only that No. 30 quotes a portion of the Schafer Dep. Tr.
31. Defendants' expert, Dr. Durfee, states the following in the Rebuttal Expert Report of William Durfee, Ph.D, dated September 23, 2013 ("Durfee Rebuttal Report"): "Dr. Schafer's report identifies at least one CT scan taken at location (d) in Figure 9(f) of his Exhibit A, which is the location of the furthest nodal rib on the Sonicision waveguide. Specifically, Dr. Schafer in his Paragraph 64 points to location (d) and the corresponding CT scan '(d) Run #4 on Unit CT-2 (Y_005)' at page 10 of his Exhibit A as evidencing contact between Sonicision's sleeve and waveguide." ( Id. at 152).
32. The '275 patent's independent claim 1 requires a "damping member adapted to absorb undesired vibrations along the transmission rod without the use of fluid." ( Id. at 17-18).
33. The Schafer Infringement Report states that "[t]ransverse vibration modes are generally undesirable in ultrasonic cutting systems as they can lead to blade damage, and the generation of excessive heat and noise." ( Id. at 40).
Plaintiffs admit only that No. 33 quotes a portion of the Schafer Infringement Report.
34. The Schafer Infringement Report states that "transverse modes" are "vibrations that occur perpendicular to the longitudinal axis of desired motion." ( Id.)
Plaintiffs admit only that No. 34 quotes a portion of the Schafer Infringement Report.
35. The Schafer Infringement Report states that "[l]ongitudinal vibration is the desired vibratory mode." ( Id.)
Plaintiffs admit only that No. 35 quotes a portion of the Schafer Infringement Report.
36. The '275 patent distinguishes between transverse vibrations and longitudinal vibrations. ( Id. at 10, 14).
37. The '275 patent describes transverse vibrations as "non-axial" and "unwanted." ( Id. at 14).
38. The '275 patent describes longitudinal vibrations as "desired." ( Id. at 10, 14).
39. The '275 patent states that "unwanted transverse motion may reduce axial (i.e. forward and backward) motion of the distal end of the acoustic assembly and may produce fatigue in the assembly." ( Id. at 10).
40. The '275 patent states that "the damping sheath 160 is preferably in light contact with the transmission rod 86 to absorb unwanted ultrasonic energy from the transmission rod 86." ( Id. at 14).
41. The '275 patent states that "the damping sheath 160 may be positioned around the transmission rod 86 to dampen or limit transverse side-to-side vibration of the transmission rod 86 during operation." ( Id.)
42. The '275 patent states that "[t]he damping sheath 160 reduces the amplitude of non-axial vibrations of the transmission rod 86, such as unwanted transverse vibrations associated with the longitudinal frequency of 55,500 Hz as well as other higher and lower frequencies." ( Id.)
43. The '275 patent states that "the present invention relates to a surgical instrument that effectively dampens undesired or unwanted vibration of a transmission component while allowing desired ultrasonic energy to propagate to the distal end of the transmission component." ( Id. at 10).
44. The '275 patent states that "[t]he damping sheath 160 is constructed of a polymeric material, preferably with a low coefficient of friction to minimize dissipation of energy from the axial motion or longitudinal vibration of the transmission rod 86." ( Id. at 14).
45. The '275 patent states that "[t]he damping sheath 160 is more effective than using silicone rubber rings located only at nodes of longitudinal vibration because the damping sheath 160 can dampen transverse motion occurring near multiple antinodes of the unwanted vibration which are located randomly along the length of the transmission rod 86 relative to the nodes and antinodes of the desired longitudinal vibration." ( Id.)
46. When asked at his deposition: "With regard to your prior experience, do you have experience with measuring transverse ultrasonic vibrations?", Dr. Schafer testified: "Yes. I have measured transverse ultrasonic vibrations. ( Id. at 22-23).
Plaintiffs admit only that No. 46 quotes a portion of the Schafer Dep. Tr.
47. When asked at his deposition: "What methods have you used in your prior experience to measure transverse vibration of an ultrasonic instrument?", Dr. Schafer testified: "We've used optical methods. You can use, again, laser vibrometer. Some devices are actually designed to use transverse vibration as their — part of their mechanism of action. And I've worked on several devices like that where we used either vibrometer; we used high-speed camera — I have a high-speed camera set up in my laboratory, and we can actually — with a proper magnification, you can actually detect transverse motion. But, again, typically, laser vibrometer would be one way and high-speed cameras." (Id. at 23-24).
Plaintiffs admit only that No. 47 quotes a portion of the Schafer Dep. Tr.
48. When asked the following questions at his deposition, Dr. Schafer provided the following testimony: Question — "And you — am I correct that you mentioned you have the high-speed camera set up in your laboratory now?"; Testimony — "It's packed up at the moment. But, yes, I have one"; Question — And what about the laser vibrometer; do you have access to that technology?"; Testimony — "I do not have it, but I have colleagues who do, and I've used — called them up and said, 'Hey, can you do a laser vibrometer test for me?' And they say, 'Sure. Bring it in.'" (Id. at 25).
Plaintiffs admit only that No. 48 quotes a portion of the Schafer Dep. Tr.
49. When asked at his deposition: "Is it correct that, in the context of the '275 patent analyses you did with respect to Sonicision, you did not test for the appearance of any transverse vibrations?", Plaintiffs' expert, Dr. Schafer, testified: "That is correct, nor did I feel that I needed to. But I did not test for it." (Id. at 31).
Plaintiffs admit only that No. 49 quotes a portion of the Schafer Dep. Tr.
50. The Durfee Rebuttal Report explains that Defendants performed water and glycerin droplet tests in an effort to detect the existence of transverse vibrations in the Sonicision device. (Id. at 154-55).
51. When asked at his July 18, 2013 deposition why he thinks the Sonicision device has not experienced problems of transverse vibration, Defendants' engineer, Robert Stoddard, testified: "By design — there are several things that were put in the design to prevent it from happening, and so I think the design considerations that were put in made it work." (Doc. 102-2 at 4-5).
52. When asked at his deposition to identify the "design considerations" associated with preventing transverse vibrations, Stoddard testified: "Primarily symmetry of the transducer and waveguide, and a second is making sure that the system only drives at the longitudinal resonant frequency." ( Id. at 5).
53. The Schafer Infringement Report states that "[t]ransverse modes occur for a variety of reasons, including driving the waveguide at an inappropriate frequency, and imbalances (e.g., asymmetry, curvature, loading) in the waveguide/blade of the system." (Doc. 102-1 at 40).
Plaintiffs admit only that No. 53 quotes a portion of the Schafer Infringement Report.
54. Engineering Change Form, EC Title: Issue of Disposable DFMEA, dated December 3, 2010 (Bates Numbered COV0531844-918) (Doc. 102-2 at 27), includes a "Failure Modes and Effect Analysis," which depicts the following chart at COV0531863:
55. The "Failure Modes and Effects Analysis" chart depicted on COV0531863 lists "Dampens waveguide" as a "Failure Mode" of "Sleeve-DRW00175." ( Id.)
56. The "Failure Modes and Effects Analysis" chart depicted on COV0531863 lists an "Item Function" of "Sleeve-DRW00175" as "Prevents waveguide from touching inner tube." ( Id.)
57. When asked at his July 18, 2013 deposition: "What's the purpose of the sleeve?", Stoddard testified: "Primarily to prevent contact of the nodal ribs directly with the inner tube to prevent squealing or rubbing of those two parts where it became an audible — an audible nuisance to the user." ( Id. at 3).
58. In Plaintiffs' Supplemental Response to Interrogatory No. 2, Plaintiffs identified the following Harmonic ACE "curved shears" products as being covered by one or more claims of the '275 patent:
( Id. at 105).
59. When asked the following question at his June 13, 2013 deposition: "And the damping sheath, is that used to dampen transverse vibrations, longitudinal vibrations, or both -- according to the patent?", Plaintiffs' 30(b)(6) witness, Mr. Kevin Houser, testified: "as I understand it, it's used to dampen out transverse vibrations without damping out longitudinal vibrations. And the whole — the whole idea behind this is to allow the device to work in the intended manner, which is longitudinally, and prevent spurious transverse modes from absorbing energy." ( Id. at 140).
Plaintiffs admit only that No. 59 quotes a portion of the Deposition of Kevin Houser.
60. Defendants' Interrogatory No. 11, contained in Defendants' First Set of Interrogatories Propounded on Ethicon Endo-Surgery, Inc. and Ethicon Endo-Surgery, LLC, dated September 6, 2012, Interrogatory No. 11 requests:
Describe the circumstances of the testing, evaluation and inspection of the Sonicision device with regard to the absorption of undesired vibrations along the transmission rod by the damping sheath, including but not limited to Ethicon's basis for its statements in its initial infringement contentions that the transmission rod includes raised nodes that contact the clear damping sheath and that the damping sheath absorbs undesired vibrations along the transmission rod without the use of a fluid, including but not limited to protocols and methods for testing, evaluation and inspection, person(s) performing such tests, evaluations and inspections, the data and results of the tests, evaluations and inspections, other devices and/or prototypes used as comparison or control for such testing, evaluation and inspection and the data and results thereof.
( Id. at 149).
61. Plaintiffs' Objections and Responses to Defendants' First Set of Interrogatories, dated October 18, 2012, provided the following Response to Interrogatory No. 11, in relevant part:
Subject to and without waiving its General or Specific Objections, or any applicable privilege or protection from disclosure, Plaintiffs respond that counsel for Plaintiffs, with assistance from an EES engineer, inspected the Sonicision device and concluded, on the basis of basic scientific principles and its knowledge of ultrasonic devices, that the Sonicision's damping sheath absorbs undesired vibrations along the transmission rod. This conclusion is supported by the physical characteristics of the Sonicision device including, among other things, the length of the transmission rod, the frequency of ultrasonic vibrations, and the placement of the nodes.
( Id. at 167-68).
62. Plaintiffs' Supplemental Responses to Interrogatory Nos. 3, 6, 10 and 11, dated December 10, 2012, provided the following Supplemental Response to Interrogatory No. 11:
In addition to its objections and responses set forth in Plaintiffs' original response to this Interrogatory, Plaintiffs state that prior to submitting its initial infringement contentions, Plaintiffs' counsel, with assistance from Kevin Houser, an EES engineer, inspected the Sonicision device both assembled and disassembled (including inspection of the transmission rod and damping sheath). By visual inspection, it can be seen that Sonicision's transmission rod includes raised nodes and that the raised nodes contact the clear dampening sheath when the device is assembled. Visual inspection also confirmed the absence of fluid in the device. During operation of the device, in both clamping an object and without contact with an object, minimal undesired vibrations were observed. Based on scientific principles and experience in design of ultrasonic devices, it is clear that Sonicision's damping sheath absorbs undesired vibrations along the transmission rod.
( Id. at 178-79).
63. When asked the following question at his July 16, 2013 deposition: "So other than what has been provided in interrogatory responses, you're not going to testify about the testing done on the sheath today?", Houser, testified: "No." ( Id. at 182).
Plaintiffs admit only that No. 63 quotes a portion of the Deposition of Kevin Houser.
64. Exhibit D to Plaintiffs' Disclosure of Asserted Claims and Infringement Contentions, dated June 13, 2012, includes a claim chart that provides the following contentions with respect to claim 1 of the '275 patent:
( Id. at 215).
65. Exhibit B to Plaintiffs' Supplemental Disclosure of Asserted Claims and Infringement Contentions, dated June 10, 2013, includes a claim chart that provides the following contentions with respect to claim 1 of the '275 patent:
( Id. at 245).
66. Figure 5 of the '275 patent depicts the following, which includes transmission rod (86) and damping sheath (160):
III. STANDARD OF REVIEW
A motion for summary judgment should be granted if the evidence submitted to the Court demonstrates that there is no genuine issue as to any material fact, and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). The moving party has the burden of showing the absence of genuine disputes over facts which, under the substantive law governing the issue, might affect the outcome of the action. Celotex, 477 U.S. at 323. All facts and inferences must be construed in a light most favorable to the party opposing the motion. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986).
A party opposing a motion for summary judgment "may not rest upon the mere allegations or denials of his pleading, but . . . must set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 248 (1986).
Summary judgment of non-infringement consists of two steps. The Court must (1) first interpret the claim, and (2) then compare the properly construed claims to the alleged infringing device. SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1268 (Fed. Cir. 2007). To establish literal infringement, a plaintiff must prove that each and every limitation in a claim is literally met by the accused product. DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1331 (Fed. Cir. 2001). Thus, if the accused product fails to meet even a single claim limitation, then there can be no literal infringement as a matter of law. Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000).
IV. ANALYSIS
The Sonicision sleeve is not configured to loosely contact portions of the transmission rod other than at fixed support points, as required by the '275 patent's independent claim 1 and dependent claim 3 under the Court's claim construction. (Doc. 101-1 at 3-4).
Before bringing suit and throughout fact discovery, Plaintiffs made no effort to determine whether the Sonicision sleeve contacts the waveguide anywhere besides the nodal ribs and offered no evidence to demonstrate contact elsewhere. ( Id. at 14-16). Defendants do not dispute that contact between the sleeve and waveguide occurs at the nodal ribs. ( Id. at 8). Under the Court's claim construction, contact only at the waveguide's nodal rib locations, and nowhere else, cannot satisfy the limitations of independent claim 1 and dependent claim 3. ( Id. at 4-8). That is because the nodal ribs constitute fixed support points for the sleeve. Indeed, Plaintiffs' expert, Dr. Mark Schafer, conceded this point for the first time at his deposition, admitting that contact between the sleeve and a nodal rib "is not what the patent requires in terms of lose [sic] contact," because "[i]t has to have contact other than fixed locations." ( Id. at 8).
Because the Court has excluded fixed support points from the locations where loose contact must occur, and because Sonicision's nodal ribs are fixed support points for the sleeve, Plaintiffs must show, among other things, contact between the sleeve and waveguide at other locations to prove infringement. Plaintiffs cannot make this showing in light of the record evidence. Plaintiffs do not, because they cannot, dispute that, by design, there is a clearance between the sleeve and waveguide. ( Id. at 4). Plaintiffs also cannot dispute that the nodal ribs, where the sleeve makes contact, have an increased diameter in comparison to the rest of the waveguide. ( Id. at 4, 6). As a result of this design, the clearance between the sleeve and waveguide is greatest between the nodal ribs, and contact between the sleeve and other portions of the waveguide is thereby avoided. ( Id. at 4).
The evidence demonstrates an intentional lack of contact between the Sonicision sleeve and waveguide at locations other than the nodal ribs. Plaintiffs cannot prove otherwise through the record evidence. Low-resolution CT scan images, offered for the first time with Dr. Schafer's opening report, represent the only evidence of alleged contact between the sleeve and waveguide at locations besides the nodal ribs. Defendants' expert Dr. Durfee performed similar CT scans of the device, which confirm that the nodal ribs are the only portions of the Sonicision waveguide contacting the sleeve. (Doc. 102-2 at 153). At best, Dr. Schafer's blurry CT scans confirm contact at the waveguide's raised nodal ribs and are inconclusive on contact elsewhere. (Doc. 102-1 at 47). At worst, these images show an air gap between the sleeve and waveguide at locations other than the nodal ribs. (Doc. 102-2 at 152).
Even assuming there were some evidence to suggest that the Sonicision sleeve is capable of contacting the transmission rod other than at fixed support points under certain conditions, summary judgment of non-infringement is still appropriate because there is no proof that the Sonicision sleeve is "configured to" make this contact, as claim 1 requires. Plaintiffs contend that "Sonicision's sleeve meets this requirement because it contacts the transmission rod at points other than fixed support points and is not tightly fitted." (Doc. 111 at 8). Under this Court's claim construction, however, there cannot be infringement merely because the sleeve might make some incidental contact with the waveguide at locations other than the nodal ribs. Rather, the sleeve must be "structured to have contact" at those locations. ( Id. at 28). SIPCO, LLC v. Abb, Inc., No. 6:11-CV-0048 LED-JDL, 2012 U.S. Dist. LEXIS 106659, 2012 WL 3112302, at *11 (E.D. Tex. July 30, 2012) ("Interpreting 'configured to' as requiring only mere capability would eliminate any meaningful limits to the claims").
There is no evidence to suggest that the Sonicision sleeve is structured to have contact with the waveguide other than at the nodal ribs. In fact, the evidence demonstrates that the sleeve is structured to contact the waveguide only at the raised nodal ribs. (Doc. 111 at 39-40). Documents reflect that the sleeve is designed to avoid dampening the waveguide. ( Id.) If the sleeve were actually structured to loosely contact the waveguide at points other than the nodal ribs, then this dampening effect could not be avoided. To prevent dampening of desired longitudinal vibrations along the waveguide, the sleeve is structured to have contact with the waveguide only at the nodal ribs, where amplitudes of longitudinal vibration are minimal. ( Id. at 29). By configuring the sleeve in this way, the sleeve acts as a buffer that prevents direct metal-to-metal contact between the waveguide's raised nodal ribs and the surrounding inner tube, without unnecessarily absorbing longitudinal vibrations along the waveguide that are essential to the effective operation of the device. ( Id. at 29, 31, 33-34, 40).
Plaintiffs contend that design considerations with respect to the sleeve's contact points are irrelevant, because intent is not an element of direct infringement. ( Id. at 12). Defendants are not relying on evidence of design consideration to argue that there is no infringement because Defendants do not intend to infringe, however. Here, elements of design purpose and function are inherent in the claim language ( i.e., "configured to loosely contact") and reflected in this Court's claim construction ( i.e., "structured to have contact"). Evidence demonstrating that the Sonicision sleeve is specifically designed to avoid contact with the transmission rod at points other than the nodal ribs and to perform a particular function is essential to determining whether the sleeve is "structured to have contact other than at fixed support points" as the asserted claims require. SIPCO, 2012 U.S. Dist. LEXIS 106659, 2012 WL 3112302 at *11 ("the claims mandate that the devices are 'configured to' perform particular functions. . . . Accordingly, the Court finds that 'configured to' means 'actually programmed or equipped with hardware or software to'").
In sum, even if the evidence suggests that the Sonicision sleeve is capable of contacting the waveguide at the requisite locations under certain conditions, Plaintiffs have failed to raise any genuine issue of fact as to whether the Sonicision sleeve is actually "structured to" do so. Rather, the evidence demonstrates that, by design, contact between the sleeve and portions of the waveguide other than the nodal ribs is purposely avoided. Therefore, under the Court's claim construction, and in light of the record evidence, Sonicision does not literally infringe claims 1 and 3 of the '275 patent as a matter of law.
B. "Adapted to Absorb Undesired Vibrations"
Even if Plaintiffs could show evidence that the Sonicision sleeve is structured to contact the transmission rod "other than at fixed support points," Sonicision still does not infringe the '275 patent's claims 1 and 3 as a matter of law, because the sleeve is not "adapted to absorb undesired vibrations along the transmission rod" ( i.e., waveguide). There is no evidence to show that contact between the sleeve and the waveguide — anywhere along the waveguide's length — would result in the absorption of unwanted transverse vibrations, as described in the patent. Plaintiffs have failed to measure any degree of transverse vibrations in the Sonicision device or identify any point along the waveguide where such vibrations might occur — through testing, experimentation, or otherwise. (Doc. 101-1 at 11, 14-16).
The evidence shows that the Sonicision device is actually designed to avoid generating any transverse vibrations. Because asymmetry results in the occurrence of transverse vibrations, the Sonicision waveguide is designed to be symmetrical. ( Id. at 11-12). Thus, by mechanical design, Sonicision avoids the transverse vibrations that the patent describes as "unwanted." Electrically, the Sonicision system is designed to only resonate at its longitudinal mode, which also serves to avoid unwanted transverse vibrations. ( Id. at 11-12). Defendants performed water and glycerin droplet tests in an effort to detect the existence of transverse vibrations along the Sonicision waveguide where Dr. Schafer contends that the sleeve contacts. ( Id. at 11). The results of those tests support the testimony of Defendant's engineer Stoddard, that the Sonicision device does not experience any problems with transverse vibrations. ( Id.) Plaintiffs have failed to contradict this evidence with any showing that transverse vibrations actually occur in the Sonicision. ( Id. at 11, 14-16).
Plaintiffs submit the Schafer Declaration in support of their opposition in which Dr. Schafer states that he recently performed tests, after his deposition, which "evidence" undesired vibrations in Sonicision. (Doc. 111 at 174). Dr. Schafer's declaration does not attach or reference any corroborating documentation or data relating to these purported tests. Dr. Schafer's unsupported statement is thus insufficient to create an issue of material fact on summary judgment. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1080-81 (Fed. Cir. 2005) ("A party does not manufacture more than a merely colorable dispute simply by submitting an expert declaration asserting that something is black when the moving party's expert says it is white; there must be some foundation or basis for the opinion").
See also Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1184 (Fed. Cir. 2009) (affirming grant of summary judgment of non-infringement where expert declaration contained "no more than an unsupported conclusion of infringement that is not sufficient to raise a genuine issue of material fact"); Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046 (Fed. Cir. 2000) ("it is well settled that an expert's unsupported conclusion on the ultimate issue of infringement is insufficient to raise a genuine issue of material fact"); Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 876 (Fed. Cir. 1998) (affirming summary judgment of non-infringement over expert declarations found "wholly conclusory, devoid of facts upon which the affiant[s'] conclusions, as experts, were reached"); FTC v. Publishers Clearing House, Inc., 104 F.3d 1168, 1171 (9th Cir. 1997) ("A conclusory, self-serving affidavit, lacking detailed facts and any supporting evidence, is insufficient to create a genuine issue of material fact").
Consistent with Plaintiffs' position throughout fact discovery, and at all times prior to Dr. Schafer's deposition, the '275 patent's asserted claims call for the actual presence and absorption of undesired ( i.e., unwanted transverse) vibrations. If claim 1 is not specifically directed to a device that experiences undesired vibrations, then there is no sense in requiring that the claimed damping sheath be "adapted to" absorb them. Furthermore, by arguing that undesired vibrations are not required by the claims, Plaintiffs raise a legal question rather than any genuine issue of fact sufficient to overcome summary judgment. Plaintiffs' position is legally unsustainable, however, because it improperly ignores the claim's functional limitation — to absorb undesired vibrations. "Th[is] functional language is, of course, an additional limitation in the claim." K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (citing Wright Medical Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443-44 (Fed. Cir. 1997)).
When claims include such functional language, that function must be interpreted as a limitation of the claim that must be met for infringement to occur. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011) (affirming district court's holding that that the "'processor for executing said data collection application' requires that 'the recited function must be performed'").
Absorbing undesired vibrations is therefore a functional limitation of the claimed damping sheath. As such, it is an additional claim limitation that the Sonicision sleeve must actually satisfy to infringe. ( See id.) Without the existence of undesired vibrations, this required function cannot be performed. Because there is no proof that Sonicision even experiences unwanted transverse vibrations, there is no proof that Sonicision actually absorbs undesired vibrations as the claims require. Accordingly, there can be no infringement as a matter of law.
Even if the Court accepts Plaintiffs' theory that the claims do not require proof of undesired vibrations, summary judgment of non-infringement is still appropriate, because without such proof, there is no evidence that the Sonicision sleeve is "adapted to absorb undesired vibrations" as the claims require. Plaintiffs contend that to infringe, the sleeve only needs to be able to absorb undesired vibrations, upon loose contact, should they occur. (Doc. 111 at 13). This position is legally untenable, however, because the claims require that the damping sheath be specifically designed or "adapted to" absorb undesired vibrations, not merely capable of absorbing them. Just as the sleeve is not "structured to have contact other than at fixed support points," the sleeve is not "adapted to absorb undesired vibrations." Indeed, courts have interpreted the term "adapted to" to mean "designed to" or "configured to" — rather than "merely capable of" — when, as here, the patent claims and written description describe a particular objective to be accomplished.
See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) ("Amended claim 23 refers to the arms and magnetic members as 'adapted to extend across respective side portions' of a primary frame. In that context, the phrase 'adapted to' is most naturally understood to mean that the arms and magnetic members are designed or configured to accomplish the specified objective, not simply that they can be made to serve that purpose"); Boston Sci. Corp. v. Cordis Corp., No. 02-01474 JW, 2006 U.S. Dist. LEXIS 94329, 2006 WL 3782840, at *2-3 (N.D. Cal. Dec. 20, 2006) (interpreting "adapted to" to mean "configured to" because that definition "embraces the concept of a device intentionally and specifically made to act in a certain way," consistent with the patent's "written description . . . [which] discloses embodiments in which specific types of materials and wire dimensions are used to make coils that act in certain ways"); Sta-Rite Indus., LLC v. ITT Corp., 682 F. Supp. 2d 738, 753 (E.D. Tex. 2010) (construing "the term 'adapted to' to mean 'designed or configured to'" rather than "having the capacity to").
Here, the '275 patent's asserted claims and written description identify and describe a particular objective that the claimed damping sheath is designed to accomplish — absorbing undesired vibrations. (Doc. 111 at 26, 34-36). As such, the Sonicision sleeve must be configured or structured to absorb undesired vibrations in order to meet the "adapted to absorb undesired vibrations" claim element. See Aspex Eyewear, 672 F.3d at 1349. There is no proof that the sleeve is configured or structured to absorb undesired vibrations. Indeed, the proof is to the contrary. The Sonicision sleeve is structured to have contact at the raised nodal ribs where contact, as conceded by Plaintiffs' expert, is not relevant to these claims. (Doc. 111 at 32, 39-40, 166-75).
In any event, for the sleeve to be adapted ( i.e., structured or configured) to absorb undesired vibrations, such unwanted vibrations have to actually exist. But the record evidence, such as Defendants' water droplet testing, demonstrates that Sonicision does not experience significant unwanted transverse vibrations to be absorbed. It is not Defendants' burden to demonstrate the absence of undesired vibrations in Sonicision devices; it is Plaintiffs' burden as the patentee to prove their existence, which they have failed to do. Because Sonicision does not experience problems with "unwanted transverse vibrations," even if there were contact between the sleeve and waveguide other than at the nodal ribs, such contact would not result in the absorption of undesired vibrations. Rather, such contact could have the adverse effect of absorbing desired, longitudinal vibrations essential to the proper functioning of the device. That is why dampening the waveguide is identified as a "failure mode" of the sleeve component. ( Id. at 12). Thus, the Sonicision sleeve is specifically designed to avoid absorbing any vibrations along the waveguide.
Based on the foregoing, absent evidence of significant unwanted transverse vibration interrupting the device's operation, the Sonicision sleeve cannot be "adapted to absorb undesired vibrations along the transmission rod," regardless of whether the sleeve contacts the transmission rod other than at fixed support points. The evidence fails to show that the Sonicision experiences any transverse vibrations, let along undesired vibrations affecting the operation of the device. What the evidence does show, however, is that Sonicision is purposefully designed to avoid unwanted transverse vibrations, and that the device is constructed to avoid the sleeve's absorption of any vibrations along the waveguide. Therefore, in light of the record evidence, Plaintiffs have failed to raise any genuine issue as to whether the Sonicision sleeve is "adapted to absorb undesired vibrations along the transmission rod," and Sonicision does not literally infringe claims 1 and 3 of the '275 patent as a matter of law, for this reason as well.
V. CONCLUSION
Accordingly, for the reasons stated here, there being no genuine issues of material fact in dispute, and Defendants being entitled to entry of judgment as a matter of law, Defendants' Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 5,989,275 (Doc. 101) is hereby .
IT IS SO ORDERED.
Date: 1/22/14
/s/ Timothy S. Black
Timothy S. Black
United States District Judge