Opinion
File No. 1:00-CV-380.
January 24, 2001.
ORDER AND JUDGMENT
In accordance with the opinion entered this date,
IT IS HEREBY ORDERED that Plaintiff Minnesota Scientific Inc.'s, motion for summary judgment of literal infringement of U.S. Patent No. 5,020,195 (Docket # 25) is DENIED.
IT IS FURTHER ORDERED that Defendant Thompson Surgical Instruments, Inc.'s, motion for summary judgment of no infringement (Docket # 12) is GRANTED.
IT IS FURTHER ORDERED that Defendant's request for attorney fees is DENIED.
IT IS FURTHER ORDERED that a JUDGMENT OF NO INFRINGEMENT is entered in favor of Defendant Thompson Surgical Instruments, Inc., and this case is DISMISSED in its entirety.
OPINION
This patent infringement case is before the Court on cross-motions for summary judgment. Defendant Thompson Surgical Instruments, Inc., seeks a summary judgment of no infringement, and Plaintiff Minnesota Scientific, Inc., seeks a summary judgment of literal infringement.
I.
The underlying facts are not in dispute. In 1991 Minnesota Scientific, Inc. ("MSI"), was granted U.S. Patent No. 5,020,195 ("the '195 Patent"), entitled "Clamping Device For Use On A Retractor Support." The patent covers a device used for clamping a retractor to a support frame during surgical procedures. During surgery many clamping devices may be positioned on a support frame. The patented device allows the adding and subtracting of those clamping devices without sliding them off one end of the support frame and removing all intervening clamps. According to Bruce LeVahn, the inventor of the ' 195 Patent, the ability to add and remove a retractor to and from the retractor support without sliding the clamping member is the heart of this invention. LeVahn Dec. ¶ 5
Defendant Thompson Surgical Instruments, Inc. ("Thompson") competes with MSI in the field of surgical clamping devices. Thompson has been selling split clamps for use with surgical retractors since 1983. In 1996 and 1997 Thompson developed a surgical clamping device which uses a split clamp and a cam mechanism for tightening the clamping members of the clamp. In 1998 Thompson was granted a patent on its device, U.S. Patent No. 5,888,197 ("the `197 Patent"), entitled "Cam-Operated Universal Latch Joint Apparatus."
In this suit, Plaintiff alleges that Thompson's device literally infringes Claim 1 and Claim 6 of the ' 195 Patent. MSI contends that Thompson's device includes all the elements of the claims of the ' 195 Patent, because it is functionally identical to it and is structurally substantially similar or equivalent to the claims of the ' 195 Patent.
Claim 1 of the ' 195 Patent provides:
1. A clamping device for use in a surgical retractor support comprising: first clamping means for clamping a first rod, the first clamping means including
first and second clamping section pivotally attached to each other;
second clamping means for clamping a second rod;
means for providing a single force to bring the first and second clamping means
to a clamping position including a shaft pivotally attached to the first clamping section of the first clamping means, the shaft extending through the second clamping section of the first clamping means and through the second clamping means and further including means for engaging the shaft such that the clamping legs and the clamping sections are placed in clamping positions; and
wherein the first and second clamping sections of the first clamping means are pivotable from a clamping position to an open position.
(emphasis added).
Claim 6 of the '195 Patent provides:
6. A clamping device comprising:
a first clamping member having first and second clamping sections pivotally attached to each other and pivotal from a clamping to an open position and defining a first clamping bore disposed between the first and second clamping sections;
a second clamping member having a unitary body with spaced apart first and second resilient leg portions and a second clamping bore disposed between the first and second leg portions; and means for bringing together the first and second legs and the first and second clamping sections to a clamping position including a rod member attached to the first clamping section and extending through the second clamping section and through the first and second legs of the second clamping member and further including means for engaging the rod member to compress the first and second clamping sections and the first and second leg portions.
(emphasis added).
Thompson contends that its accused device does not infringe on the ' 195 Patent because it does not have each and every limitation required by the claims of the ' 195 Patent. Specifically, Thompson contends that its two clamp sections are not "pivotally attached" to each other, neither clamp section is "pivotally attached" to the shaft, and the device does not use a threaded nut and bolt arrangement to tighten the clamping members.
II.
This matter is before the Court on cross-motions for summary judgment. Summary judgment is proper if there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. FED. R. Civ. P. 56(c). In evaluating a motion for summary judgment the Court must look beyond the pleadings and assess the proof to determine whether there is a genuine need for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). If one party carries its burden of showing there is an absence of evidence to support a claim then the other party must demonstrate by affidavits, depositions, answers to interrogatories, and admissions on file, that there is a genuine issue of material fact for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324-25 (1986).
III.
"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Wes-View Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), affirmed, 517 U.S. 370 (1996). Claim construction is a matter of law within the exclusive province of the court. Markman v. Westview, 517 U.S. 370, 372 (1996); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998).
In interpreting a patent claim, "the court should look first to the intrinsic evidence or record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Claim construction begins with the words of the claims which define the scope of the patented invention. Id. Words in the claims are given their ordinary meaning unless evidence indicates that the inventor used the words differently. Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1580 (Fed. Cir. 1995). Thus, it is necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. Vitronics, 90 F.3d at 1582. The specification is "the single best guide to the meaning of a disputed term." Id. The court may also consider the prosecution history, if it is in evidence. Vitronics, 90 F.3d at 1582. The specification and the prosecution history may provide a context that will illuminate or clarify the meaning of the claim terms. Thermalloy, Inc. v. Aavid Engineering, Inc., 121 F.3d 691, 693 (Fed. Cir. 1997); York Products, Inc. v. Central Tractor Farm Family Center, 99 F.3d 1568, 1572 (Fed. Cir. 1996). In the absence of an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning. York, 99 F.3d at 1572.
After the claim is construed, the accused product is compared to the properly construed claim. Vitronics Corp., 90 F.3d at 1581-82. In order for an accused device to infringe a patent either literally or under the doctrine of equivalents "all of the claim elements or functions must be present in the accused device, literally or by an equivalent element or function." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998) (citing Warner-Jenkinson, 520 U.S. 27, 40 (1997).
IV.
Claim 1 of the '195 Patent describes a clamping device for use in a surgical retractor support comprising:
first clamping means for clamping a first rod, the first clamping means including first and second clamping section pivotally attached to each other . . .
Claim 1 (emphasis added). Claim 6 similarly describes a clamping device comprising:
a first clamping member having first and second clamping sections pivotally attached to each other . . .
Claim 6 (emphasis added).
Thompson contends that its accused device does not meet the requirement that the two clamping sections be "pivotally attached" to each other.
A claim limitation written in a means-plus-function form, reciting a function to be performed rather than definite structure in support of its function, is subject to the requirements of 35 U.S.C. § 112, ¶ 6. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). Section 112, ¶ 6 provides a mandatory procedure for interpreting means-plus-function claim elements: means-plus-function claim elements must "be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112, ¶ 6 ; Al-Site Corp. v. VSI Intern., Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999). "[I]f the word `means' appears in a claim element in combination with a function, it is presumed to be a means-plus-function element to which § 112, ¶ 6 applies." Al-Site Corp. v. VSI Intern., Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999). The procedures outlined in § 112, ¶ 6 "restrict a functional claim elements "broad literal language . . . to those means that are "equivalent" to the actual means shown in the patent specification.'" Al-Site, 174 F.3d at 1320 (quoting Warner-Jenkinson, 520 U.S. at 28).
With regard to means-plus-function claims, the Patent Act provides as follows:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.35 U.S.C. § 112, ¶ 6.
There is no dispute that Claims 1 and 6 are written in "means-plus-function" format and that they must therefore be construed according to 35 U.S.C. § 112, ¶ 6.
"Literal infringement of the § 112, ¶ 6 limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification." Odetics, Inc. v. Storage Technology Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). "Functional identity and either structural identity or equivalence are both necessary." Id. (emphasis in original).
Functional identity is not at issue in this case. The parties do not dispute that both devices serve the same function. Accordingly, whether or not there is infringement depends on whether the structures are identical or equivalent.
"[F]or a means-plus-function limitation to read on an accused device, the accused device must employ means identical to or the equivalent of the structures, material, or acts described in the patent specification." Valmont Industries, Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993).
[T]he statutory equivalence analysis requires a determination of whether the "way" the assertedly substitute structure performs the claimed function, and the "result" of that performance, is substantially different from the "way" the claimed function is performed by the "corresponding structure, acts, or materials described in the specification," or its "result." Structural equivalence under § 112, ¶ 6 is met only if the differences are insubstantial; that is, if the assertedly equivalent structure performs the claimed function in substantially the same way to achieve substantially the same result as the corresponding structure described in the specification.Odetics, 185 F.3d at 1267 (citation omitted). In other words, the question for this Court is whether the assertedly equivalent structures perform the claimed functions in substantially the same way to achieve substantially the same result as the corresponding structures described in the '195 Patent.
According to Claim 1, the first clamping section must be "pivotally attached" to the second clamping section. There is no special definition of the term "pivotally attached" disclosed in the '195 Patent. Accordingly this Court construes the term according to its plain meaning, as illuminated by the specifications and prosecution history. The ordinary meaning of "pivotally attached" is an arrangement where two sections are attached, but movable with respect to each other. The concept generally comprehends a hinged device, where the two sections are inseparably united, as with a pin. In fact, this is the arrangement described in the specifications of the '195 Patent:
The first clamping member 26 includes a first clamping section 32 and a second clamping section 34 pivotally attached to the first clamping section 32 by a pivot pin 36.
' 195 Patent, Col. 2, ll. 58-61 (emphasis added). The pivotal attachment of the two clamping sections by a pivot pin is also clearly depicted in Figures 2 — 5 of the '195 Patent. There is no question that the clamp disclosed in the '195 Patent is a hinged clamp. The prosecution history also reveals that the examiner was careful to distinguish between clamping sections that were pivotally attached and separate clamping sections.
The Thompson device does not have a hinged clamp. It has two separate clamping sections that can be held together with a third component, a latch member. The two clamping sections on the Thompson device are not attached. They are aligned by tabs and they have the capacity to pivot on the shaft, but they are not "pivotally attached" to each other by a pin or otherwise.
MSI contends that these differences are insubstantial. MSI notes the two tabs on the Thompson device that keep the two clamp sections in alignment and the elongated slot on the lower clamping section serves no function other than to enable the two clamping sections to pivot. Thompson's '197 Patent also recites that the lower portion of the clamp "pivots" downward from the upper portion of the second clamping member. According to MSI, this pivotal movement satisfies the requirement of pivotal attachment found in Claim 1 of the '195 Patent.
"This allows the lower portion 120 to pivot downward from the upper portion 115 of the second clamping member 112." '197 Patent, Col. 4, ll. 23-25.
Notwithstanding MSI's assertions, pivotal movement is not equivalent to pivotal attachment. The Thompson accused device has two separate clamping sections that are not pivotally attached. Accordingly, the Thompson device does not literally infringe Claim 1 of the '195 Patent.
Claim 1 further describes a "shaft pivotally attached to the first clamping section." MSI contends that because Thompson's accused device has an elongated cutout which allows for pivotal movement about the end of the shaft, the shaft is "pivotally attached" to the clamping means. Here again the Court finds no literal infringement. The '195 Patent specifications note that the "pivot pin 60 pivotally attaches the bolt 56 to the clamping member 26." '195 Patent, Col. 3, ll. 24-25 (emphasis added). Neither of the two clamping sections of the Thompson device is pivotally attached to the shaft. There is no pivot pin attaching either clamping section to the shaft. The two clamping sections of the Thompson device can be freely rotated about the shaft.
Claim 6 does not use the term "pivotally attached." Instead, it recites a "means for bringing together the first and second legs and the first and second clamping sections to a clamping position including a rod member attached to the first clamping section and extending through the second clamping section . . . ." ' 195 Patent, Claim 6 (emphasis added). The rod member in the Thompson device extends through both clamping sections. It is not separately attached to one clamping section.
Section 112, ¶ 6 of the Patent Act requires that the limitations of a claim be construed to cover the corresponding structure, material, or acts described in the specification "and the equivalents thereof." MSI contends that Thompson has focused only on the preferred embodiment disclosed in the '195 Patent, and has erroneously disregarded any equivalence analysis.
"An equivalent under the doctrine of equivalents results from an insubstantial change which, from the perspective of one of ordinary skill in the art, adds nothing of significance to the claimed invention." Valmont, 983 F.2d at 1043. The term "equivalents" as used in § 112, ¶ 6 is not identical to the doctrine of equivalents. It is "an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements." Al-Site, 174 F.3d at 1320 (quoting Warner-Jenkinson, 520 U.S. at 27 (1997)). "Thus, § 112, ¶ 6 procedures restrict a functional claim element's `broad literal language . . . to those means that are "equivalent" to the actual means shown in the patent specification.'" Al-Site 174 F.3d at 1320 (quoting Warner-Jenkinson, 520 U.S. at 28). Both equivalence analyses, however, apply similar analyses of insubstantiality of the differences. Al-Site, 174 F.3d at 1321. "Both § 112, ¶ 6 and the doctrine of equivalents protect the substance of a patentee's right to exclude by preventing mere colorable differences or slight improvements from escaping infringement . . . ." Chiuminatta Concrete Concepts v. Cardinal Industries, 145 F.3d 1303, 1311 (Fed. Cir. 1998).
The doctrine of equivalents is designed to prevent an unscrupulous copyist from making "unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim." Graver Tank Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, (1950).
Viewing the evidence in the light most favorable to MSI, it is clear that there is no structural equivalence between the clamping mechanisms of the Thompson device and the '195 Patent. There are no questions of fact for trial. The clamping mechanism on the accused device does not perform the clamping function in substantially the same way as the means described in the '195 Patent and its specifications. The hinged clamp differs materially from the two separate clamping sections with their latch. The difference is not merely colorable. Because the means used by the accused device for clamping on to the rod is not the substantial equivalent of the means described in the '195 Patent, there is no infringement.
V.
In addition to the substantial differences in the manner in which the clamping sections are connected to each other and to the rod, Thompson contends there is another difference that separately and independently precludes a finding of infringement. That difference concerns the means by which the clamping sections are brought to a clamping position.
Claim 1 of the '195 Patent describes a clamping device for use in a surgical retractor support comprising: means for providing a single force to bring the first and second clamping means to a clamping position . . .
'195 Patent, Claim 1. Claim 6 similarly provides for a "means for bringing together the first and second legs and the first and second clamping sections to a clamping position . . . '195 Patent, Claim 6.
Because the claims use means-plus-function language, the claims are limited by "the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112, ¶ 6. The '195 Patent specifications contain a detailed description of the means for engaging the shaft:
The mechanism 30 for providing a force to place the clamping members 26 and 28 in clamping engagement, preferably include a threaded bolt 56 and a bolt engaging handle section.
'195 Patent, Col. 3, ll. 18-21.
The bolt engaging handle section 58 includes an internally threaded nut portion 66 that engages a threaded end 68 of the bolt 56, as best illustrated in FIG. 3.
'195 Patent, Col. 3, ll. 35-37.
To facilitate turning the nut portion 66 and thereby providing a clamping or compressive force to the clamping members 26 and 28, a handle 76 is pivotally attached to the nut portion 66.
'195 Patent, Col. 3, ll. 45-48.
The handle 76 is then turned so that the nut portion 66 is threaded on to the bolt 56 providing a clamping force to the clamping members 26 and 28.
'195 Patent, Col. 4, ll. 5-8.
The two clamping sections on the Thompson device are forced together by a cam mechanism that is pivotally attached to the upper end of the shaft. Thompson's clamp does not use a threaded nut and bolt arrangement for bringing the clamping members into a clamping position.
MSI contends that Thompson's camming mechanism satisfies the '195 Patent's requirement of a means for providing a single force to the first and second clamping means. MSI contends that the camming mechanism is the equivalent of a threaded nut and bolt because the camming mechanism, like the threaded nut and bolt mechanism, effectively reduces the length of the shaft and applies a compressive force to the first and second clamps.
In support of its argument MSI notes that neither Claim 1 nor Claim 6 requires a threaded nut and bolt arrangement. According to MSI, the threaded nut and bolt arrangement is only inserted in Claim 4 as a best mode arrangement as the means of applying force, and Claim 1 cannot be limited to the arrangement described in Claim 4 because this would result in Claim 1 having the same scope as Claim 4, in violation of the doctrine of claim differentiation.
Under the doctrine of claim differentiation, claims are presumed to cover different inventions, so an interpretation of a claim should be avoided if it would make the claim read like another one. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991) (quoting Autogiro Co. of America v. United States, 384 F.2d 391, 404 (1967)). The doctrine is a guide, not a rigid rule. Id. This judicially developed guide to claim interpretation cannot override the Patent Act. Id. If MSI's argument were adopted, it would provide a convenient way of avoiding the express mandate of § 112, ¶ 6. "[O]ne cannot escape that mandate by merely adding a claim or claims specifically reciting such structure or structures." Id. "A means-plus-function limitation is not made open-ended by the presence of another claim specifically claiming the disclosed structure which underlies the means clause or an equivalent of that structure." Id. Because the specification of the '195 Patent describes only a very narrow structure corresponding to a claimed means-plus-function, the claim differentiation doctrine is inapplicable and Claim 1 should be read to have the same scope as the specific Claim 4.
MSI contends that camming mechanisms in the medical retractor field have been known since 1932, in the Arnold U.S. Patent No. 1,839,726, and that this known interchangeability of structure is a factor favoring equivalence. While the Court does not dispute that camming mechanisms were previously known in the field, the Court finds no evidence of interchangeability of function with threaded nuts and bolts. MSI asserts there is evidence that Thompson admitted in the prosecution of its application which resulted in U.S. Patent No. 5,897,087, that a camming mechanism is the equivalent of a threaded nut engaging a bolt. In support of this assertion MSI cites to Exhibit C, an exhibit containing more than 250 pages. MSI bears the burden of designating the relevant portions of the record with sufficient specificity to enable the court to readily identify the facts on which it relies. Guarino v. Brookfield Twp. Trustees, 980 F.2d 399, 404 (6th Cir. 1992). MSI has not done so.
Moreover the cam feature has been separately patented by Thompson in three patents, '197, '008 and '087. When the Patent and Trademark Office examined Thompson's patent application in the face of prior art, including MSI's '195 Patent, it found Thompson's clamp patentably distinct from MSI's '195 Patent.
"The fact of separate patentability presents no legal or evidentiary presumption of noninfringement." Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1582 (Fed. Cir. 1996). "The grant of a separate patent on the accused device does not automatically avoid infringement, either literal or by equivalency." National Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1192 (Fed. Cir. 1996). However, this does not mean that the '197 Patent granted to Thompson on the accused device is irrelevant. The fact of separate patentability is relevant to the issue of the substantiality of the differences. See Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1570 (Fed. Cir. 1996); National Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1192 (Fed. Cir. 1996); Mas-Hamilton Group v. Lazard, Inc., 21 F. Supp.2d 700, 733 (E.D.Ky. 1997) ("The fact that [an] accused device was found patentable over [an] asserted patent demonstrates the substantiality of the differences between the claimed and the accused device."). Thompson's '197 Patent is evidence that the separately patented cam feature is substantially different from and not equivalent to the nut and bolt arrangement of the '195 Patent.
As the Federal Circuit has explained:
Another reason sometimes advanced for supposing that the structure of the second does not infringe the claim of the first patent is that the Patent Office has declared that a patentable difference exists. The premise is sound, but not the conclusion. In examining the second application, the Patent Office has no concern with the scope of the claim of the first, and does not and must not pay any attention thereto. It is concerned only with the early disclosure by the specification and drawings. Patentable difference does not of itself tend to negative infringement. It may just as well be based upon infringement, plus improvement; and improvement may lie in addition, simplification, or variance.Atlas Powder Co. v. E.I. du Pont De Nemours Co., 750 F.2d 1569, 1581 (Fed. Cir. 1984) (an improvement in a step of a patented method, even if separately patentable, may not avoid infringement).
The Court is satisfied that there are no issues of fact for trial, and that based on the evidence of record no reasonable juror could find that the Thompson device infringes the MSI '195 Patent, either literally or by equivalents. Although MSI contends in its brief that an experienced surgeon could not discern any difference between the accused Thompson Surgical clamps and the MSI clamps, any attempt to operate the two devices immediately reveals substantial differences. The MSI clamp that embodies the '195 Patent is readily distinguishable from the accused device. Accordingly, Defendant Thompson's motion for summary judgment of no infringement will be granted and Plaintiff MSI's motion for summary judgment of infringement will be denied. Although the Court is denying MSI's motion for summary judgment of infringement, the Court does not find MSI's arguments so frivolous as to be sanctionable. Accordingly, the Court will deny Thompson's request for attorney fees.
An order and judgment consistent with this opinion will be entered.