10 I-FLOW LLC, ET AL., CASE NO. SACV 12-01064-AG (RNBx)...
Transcript of 10 I-FLOW LLC, ET AL., CASE NO. SACV 12-01064-AG (RNBx)...
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UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
I-FLOW LLC, ET AL.,
Plaintiff,
v.
PROGRESSIVE MEDICAL, INC.,
Defendant.
_________________________________
))))))))))))))))
CASE NO. SACV 12-01064-AG (RNBx)
ORDER CONSTRUING CLAIMS ANDDENYING PLAINTIFF’S MOTIONFOR SUMMARY JUDGMENT OFINFRINGEMENT OF U.S. PATENTNO. 5,284,481
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INTRODUCTION
Plaintiffs I-Flow, LLC, Kimberly-Clark Worldwide, Inc., and Kimberly-Clark Global
Sales, LLC (“Plaintiffs”) seek summary judgment that Defendant Progressive Medical, Inc.
(“Defendant”) has infringed claims 1 and 15 of U.S. Patent No. 5,284,481 (the “‘481 Patent”)
through sales of the AccuFlo infusion pump. To resolve the Motion, the Court must construe
three disputed terms. In this Order, the Court determines the proper construction of each
disputed term and DENIES the Motion.
LEGAL STANDARD
1. CLAIM CONSTRUCTION
Claim construction is an issue of law “exclusively within the province of the court.”
Markman v. Westview Instruments, 517 U.S. 370, 372 (1996). Such construction begins with an
analysis of the claim language itself, Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d
1323, 1331 (Fed. Cir. 2001), since the claims define the scope of the claimed invention. Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). In construing the claim language, the
Court begins with the principle that “the words of a claim are generally given their ordinary and
customary meaning.” Id. at 1312 (internal quotation marks omitted).
“The ordinary and customary meaning is the meaning that the [claim] term would have to
a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “[T]he
person of ordinary skill in the art is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the entire patent,
including the specification.” Id. Where the patent itself does not make clear the meaning of a
claim term, courts may look to “those sources available to the public that show what a person of
skill in the art would have understood the disputed claim language to mean,” including the
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prosecution history and “extrinsic evidence concerning relevant scientific principles, the
meaning of technical terms, and the state of the art.” Id. at 1314.
“In some cases, the ordinary meaning of claim language as understood by a person of
skill in the art may be readily apparent even to lay judges, and claim construction in such cases
involves little more than the application of the widely accepted meaning of commonly
understood words.” Id. “In such circumstances general purpose dictionaries may be helpful.”
Id. In other cases, claim terms will not be given their ordinary meaning because the
specification defines the term to mean something else. Novartis Pharms. Corp. v. Abbott Labs.,
375 F.3d 1328, 1334 (Fed. Cir. 2004); Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed.
Cir. 2003). For the specification to give a term a special meaning, it must set out the definition
in a manner sufficient to provide notice of that meaning to a person of ordinary skill in the art.
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
2. DIRECT INFRINGEMENT OF AN APPARATUS PATENT
Summary judgment is appropriate only where the record, read in the light most favorable
to the non-moving party, indicates that “there is no genuine issue as to any material fact and . . .
the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c); see Celotex
Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). Material facts are those necessary to the proof or
defense of a claim, as determined by reference to substantive law. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). A factual issue is genuine “if the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.” Id. In deciding a motion for
summary judgment, “[t]he evidence of the nonmovant is to be believed, and all justifiable
inferences are to be drawn in his favor.” Id. at 269.
Determining patent infringement is a two-step process. Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448, 1454 (Fed. Cir. 1998). “First, the court determines the scope and meaning of the
patent claims asserted . . . and then the properly construed claims are compared to the allegedly
infringing device.” Id. (citations omitted). “Whether an accused device or method infringes a
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claim either literally or under the doctrine of equivalents is a question of fact.” Schoell v. Regal
Marine Indus., Inc., 247 F.3d 1202, 1207 (Fed. Cir. 2001). A patentee claiming infringement
must present proof that the alleged infringing device meets “each and every claim limitation.”
Forest Labs., Inc. v. Abbott Labs., 239 F.3d 1305, 1310 (Fed. Cir. 2001). If a patentee meets this
initial burden, the burden shifts to the accused infringer to establish that summary judgment is
not proper “either by providing evidence that would preclude a finding of infringement, or by
showing that the evidence on file fails to establish a material issue of fact essential to the
patentee’s case.” Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir.
2001).
ANALYSIS
1. CLAIM CONSTRUCTION
The ‘481 Patent is titled “Compact Collapsible Infusion Apparatus.” The “liquid infuser
apparatus comprises an elastic reservoir comprising an elastic sleeve mounted on a substantially
cylindrical support member mounted within a spherical chamber of a collapsible housing.”
(‘481 Patent 1:63-66.) Figure 1 of the ‘481 Patent shows a preferred embodiment of the
invention:
(‘481 Patent, Fig. 1.) Element 12 in Figure 1 is an outer collapsible non-stretchable housing or
shell. (Id. 2:46-48.) Figure 2 of the ‘481 Patent shows a cross-section of the infusion apparatus:
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In Figure 2, the elastic membrane or bladder 20 is empty and unfilled, and thus flush with the
central support member 18. (Id. 2:63-66.) Collapsible housing 12 is depicted as being
substantially spaced apart from bladder 20 and support member 18, with coaxial openings
defined by tubular sleeve extensions 14 and 16, through which the ends of the support member
extend. (Id. 2:59-62.) A circular groove 22 and O-ring 26 work together to clamp the elastic
bladder 20 and collapsible housing 12 to the support member 18. (Id. 3:3-7.)
1.1 The Disputed Terms
The parties dispute the construction of three limitations that appear in claims 1 and 15.
Claims 1 and 15, with the disputed terms in bold, are as follows:
1. A compact portable apparatus for dispensing a liquid under pressure at a
substantially constant flow rate over a period of time comprising:
an elongated generally cylindrical support member; elongated elastic sleeve means
mounted and sealingly secured at fixed spaced longitudinal positions on
said support member for defining a substantially zero non-pressurized
volume pressure reservoir for holding a liquid in a pressurized state for
dispensing therefrom;
housing means comprising collapsible non-stretchable housing means for containing
said support member and said pressure reservoir for enabling said pressure
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reservoir to expand naturally and for confining said reservoir to fill
concentrically about said support member, said collapsible non-stretchable
housing means loosely positioned around said sleeve means and defining a
chamber between said sleeve means and said collapsible non-stretchable
housing means;
inlet means for introducing a liquid into said elastic pressure reservoir; and
outlet means for dispensing liquid from said pressure reservoir to a selected site.
15. A compact collapsible infusion apparatus for dispensing a liquid under pressure
at a predetermined substantially constant flow rate over a period of time
comprising:
an elongated generally cylindrical support member having inlet means including an
inlet port in one end of said member, and outlet means including an outlet port
in the other end of said member;
elongated elastic sleeve means mounted in non-stretched surface contact and
sealingly secured at fixed spaced longitudinal positions on said support
member for defining a substantially zero non-pressurized volume pressure
reservoir for holding a liquid in a pressurized state for dispensing therefrom;
first housing means including a collapsible shell enclosing said support member and
said pressure reservoir, said housing means having a size and shape for
enabling said pressure reservoir to expand naturally and for confining said
reservoir to fill concentrically about said support member, said collapsible
shell loosely positioned around said sleeve means and defining a chamber
between said sleeve means and said collapsible shell;
inlet means in one end of the said support member for introducing a liquid into said
elastic pressure reservoir; and
outlet means in the other end of said support member for dispensing liquid from said
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pressure reservoir to a selected site.
(‘481 Patent Ex Parte Reexamination Certificate (“‘481 Reexam Certificate”) (emphasis added).)
1.2 “mounted . . . and sealingly secured at fixed spaced longitudinal
positions on said support member”
Plaintiffs’ Construction Defendant’s Construction
“mounted and sealingly secured at positions
along the longitudinal axis of the support
member with space there between”
“mounted and sealingly secured on the
support member at spaced longitudinal
positions which are fixed relative to each
other”
This limitation has been construed twice before, and Plaintiff proposes that the Court
follow those previous constructions. In I-Flow Corp. v. Apex Med. Techs., Inc., No. 3:07-CV-
1200 DMS (NLS) (S.D. Cal.) (“Apex”) (filed June 29, 2007), the court construed “secured at
fixed spaced longitudinal positions” as “secured at positions along the longitudinal axis of the
support member with space there between.” (Apex Claim Construction Order (“Apex Order”),
Decl. of Boris Zelkin in Supp. of Pl.’s Mot. (“Zelkin Decl.”) Ex. 5.) But the Apex court noted
that the constructions proposed by each party were “substantially the same.” So, the Apex court
did not decide the dispute the parties present here. (Id.)
In I-Flow Corp. v. Wolf Med. Supply, Inc., No. 8:09-CV-0762 AG (MLGx) (C.D. Cal.)
(“Wolf”) (filed July 6, 2009), this Court, in granting the motion for preliminary injunction,
agreed with the Apex court’s construction, but clarified that “[t]his finding applies only for this
Motion, and shall not prevent the parties from requesting a different construction of claim terms
at a later time.” (Wolf Prelim. Inj. Order (“Wolf Order”), Zelkin Decl. Ex. 24 at 117). See Jack
Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (a district court may
issue “only a tentative claim construction and [ ] base its resolution of a preliminary injunction
motion upon that tentative claim construction”).
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Further, because the Federal Circuit stayed the preliminary injunction pending the
resolution of the Wolf defendant’s appeal of the injunction, and the parties settled the action
before the Federal Circuit reached the merits, the Court does not have the benefit of the Federal
Circuit’s analysis of its preliminary constructions from the Wolf action. For all of these reasons,
the Court will not give any preclusive weight to its own previous preliminary constructions.
In construing the claims, “the court should look first to the intrinsic evidence of record,
that is, the patent itself, including the claims, the specification and, if in evidence, the prosecution
history,” because the intrinsic evidence “is the most significant source of the legally operative
meaning of disputed claim language.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996). The specification “is the single best guide to the meaning of a disputed term.”
Id. at 1582. But, the court should not import limitations from the specification into the claims.
Phillips, 415 F.3d at 1320, 1323. Courts may also rely on extrinsic evidence, such as expert and
inventor testimony, dictionaries, and learned treatises. Id. at 1317. However, extrinsic evidence
is “less significant” and “less reliable” than the intrinsic record in construing a claim term. Id. at
1318.
The disputed phrase occurs in the claim limitation describing the elastic sleeve means.
There is a separate limitation describing the support member. That there are two separate
limitations is important because Defendant’s arguments focus on the structure of the support
member, and not the manner in which the elastic sleeve is mounted. The claim language itself,
“elongated elastic sleeve means mounted and sealingly secured at fixed spaced longitudinal
positions on said support member” (claim 1) and “elongated elastic sleeve means mounted in
non-stretched surface contact and sealingly secured at fixed spaced longitudinal positions on said
support member” (claim 15) supports Plaintiffs’ proposed construction. The term “fixed,” and
the terms “spaced” and “longitudinal,” modifies the term “positions,” rather than modifying
“spaced,” as Defendant argues. That is, the claim language does not say “secured at longitudinal
positions of fixed spacing.” The “fixed” in the claim language therefore requires only that the
housing and bladder be secured to the support member at fixed positions, such as through the
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groove and O-ring illustrated in figure 2, rather than being mounted in a manner that can move
relative to the support member, perhaps such as by a O-ring not seated in a groove.
Defendant argues that the specification also supports its position because it nowhere
describes or illustrates “attachment points of an elastic sleeve to a support member . . . being
variable in distance relative to one another,” as they would be on an “extensible support
member.” (Opp’n 10.) Defendant further argues that the specification implicitly requires fixed
spacing between the attachment points because it expressly describes a non-extendable support
member by incorporating by reference the description of the support members in two other
patents:
The infuser pump, designated generally by the numeral 10, is collapsible and
comprises an outer collapsible substantially non-stretchable housing or shell 12,
protectively mounted over a combined reservoir and support assembly constructed
substantially like that set forth in U.S. Pat. Nos. 5,080,652, dated Jan. 14, 1992 [“the
‘652 Patent”] and 5,105,983, dated Apr. 21, 1992 [“the ‘983 Patent”], both of which
are incorporated herein by reference as though fully set forth.
(Opp’n 10-11; ‘481 Patent 2:45-53). Neither the ‘652 nor ‘983 Patents are part of the same
family as the ‘481 Patent, but when a document is “incorporated by reference” into a patent, the
referenced document becomes part of the patent as if it were explicitly contained therein.
Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001) (citing
Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000).
Defendant argues, correctly, that neither the ‘652 nor ‘983 Patents disclose an extensible
support member or attachment points that are variable in distance relative to one another. The
specification of the ‘652 Patent states that “support member 28 is of a fixed length and holds the
ends of the [elastic] sleeves at a fixed position.” (Opp’n 11; ‘652 Patent 4:41-43 (emphasis
added); ‘983 Patent.) Figures 1 and 2 below illustrate the ‘652 Patent’s pump when unfilled (Fig.
1) and filled (Fig. 2):
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(‘652 Patent, Figs. 1 and 2.) Figures 1 and 2 illustrate inner sleeve 22 and outer sleeves 24 and
26 that expand, when filled, to conform to the shape of housing 12 and fold over at O-rings 76
and 78 on support member 28. (Id. 3:56-60, 4:32-41.)
Similarly, the other patent incorporated by reference, the ‘983 Patent, disclosed a fixed-
length support member. During the prosecution of the ‘983 Patent, the applicant distinguished
the invention over a cited prior art reference that had “a tubular member 56 and a piston member
58 which slides on or in the tubular member from a non-extended position . . . to the extended
position” when the bladder is filled with fluid. (U.S. Patent No. 3,961,725 to Clark (“Clark
‘725”) 5:16-19.) In response, the ‘983 Patent inventors distinguished that reference by arguing
that it “disclosed a ‘support member’ which ‘moves axially and telescopes’ into another member
‘when the bladder is pressured,’” unlike the fixed-length support member of the ‘983 Patent.
(Opp’n 11; ‘983 Patent Response to Office Action (“‘983 Response”), Decl. of Robert A. Conley
in Supp. of Def.’s Opp’n (“Conley Decl.”) Ex. 9 at 63 (emphasis added).
Thus, it is clear that the ‘481 Patent’s specification incorporates by reference the
description of a fixed length support member, but does not specifically either disclose or disclaim
an extensible support member. The ‘481 Patent does not incorporate by reference the disclaimer
from the unrelated ‘983 Patent’s prosecution history. So, Defendant’s deep dive into the
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incorporation by reference does not resolve the claim construction question. Again, the limitation
being interpreted primarily describes the elastic sleeve, not the support member. Modifying the
word “positions” with the adjectives “fixed” and “spaced” in a phrase describing where and how
the elastic sleeve is attached to the support member would be a curiously indirect way of
claiming a support member of fixed length, when it could have been done expressly in the claim
limitation concerning the support member.
And even if the disputed limitation called for deciding whether the support member was
fixed or extendable, the Federal Circuit has repeatedly cautioned against importing limitations
from the disclosed embodiments into the claims. Phillips, 415 F.3d at 1320, 1323; Nazomi
Communs., Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005) (“[T]he court may
conclude that the scope of the various claims may differ, some embracing different subject matter
than is illustrated in the specific embodiments in the specification.”); Gemstar-TV Guide Int’l,
Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1366 (Fed. Cir. 2005) (“[T]he disclosure in the
written description of a single embodiment does not limit the claimed invention to the features
described in the disclosed embodiment.”).
Returning our focus to the elastic sleeve that is the primary subject of the limitation in
dispute, the specification teaches that the bladder and housing are secured to the housing in a way
that prevents them from slipping or sliding along the support member. The specification states
that “[t]he central cylindrical support member or mandrel 18 includes circular grooves . . . at the
ends thereof into which portions of the sleeve 20 and housing 12 are biased by means of a pair of
O-rings . . . .” (‘481 Patent 3:3-7.) The specification further states that “[t]he ends of the central
support member include reduced diameter extension 30 and 32 . . . which extend over and
protectively cover the O-ring connections or clamping of the elastic bladder and collapsible
housing to the support member.” (Id. 3:21-26 (emphasis added).) This teaches that the
bladder/housing is fixed relative to its attachment points on the support member, but is silent on
whether the spacing between the points is fixed.
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Turning to extrinsic evidence, Defendant urges that the plain meaning of the word “fixed”
be adopted: “definitely and permanently placed or assigned; stationary or unchanging in relative
position; definite, permanent, lasting.” (Opp’n 10; The New Shorter Oxford English Dictionary,
1993 Edition (“Oxford English Dictionary”), Conley Decl. Ex. 13 (emphasis added).) Even
assuming the second part of the definition (“relative position”) applies, the question remains:
relative to what? Plaintiffs say fixed relative to the position on the support member; Defendant
says fixed relative to each other. The dictionary definition can support either proposed
construction, and is not helpful for choosing between them.
Defendant also proffers the testimony of Emil Soika, an inventor of the ‘481 Patent. Soika
states that, while developing the subject matter of the ‘481 Patent, he never considered
“developing or implementing an extensible support member” or “any configuration by which the
attachment points of an elastic sleeve to a support member would be variable in distance relative
to one another.” (Opp’n 11; Soika Decl. 6.) Soika further declared that “[s]uch features were not
part of my invention reflected in the ‘481 patent[.]” (Soika Decl. 6.) Soika testified that he never
intended to develop a non-extensible support member. Soika’s testimony is not material: “[t]he
subjective intent of the inventor when he used a particular term is of little or no probative weight
in determining the scope of a claim.” Markman, 52 F.3d 967, 985 (Fed. Cir. 1995).
Therefore, the Court rejects Defendant’s proposal to add a “fixed relative to each other”
limitation to the claims. To clarify the construction in light of the arguments raised, the Court,
rather than adopting verbatim the construction from Wolf as proposed by Plaintiff, construes the
phrase “secured at fixed spaced longitudinal positions on said support member” to mean:
“secured at positions on the support member such that they do not slip or slide along the support
member, and are spaced apart from each other on the lengthwise axis of the support member.”
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1.3 “for confining said reservoir to fill concentrically about said support
member”
Plaintiffs’ Construction Defendant’s Construction
“for confining the reservoir to fill evenly in a
spherical manner from the support member”
“for confining the reservoir in order to cause
the reservoir to fill concentrically about the
support member”
The context for the disputed phrase in claim 1 is “collapsible non-stretchable means for
containing said support member and said pressure reservoir for enabling said pressure reservoir to
expand naturally and for confining said reservoir to fill concentrically about said support
member[.]” (‘481 Reexam Certificate 1:35-39.) Claim 15 similarly provides that “first housing
means includes a collapsible shell enclosing said support member and said pressure reservoir,
said housing means having a size and shape for enabling said pressure reservoir to expand
naturally and for confining said reservoir to fill concentrically about said support member[.]” (Id.
2:27-31.)
The language of the parties’ proposed constructions does not capture the extent of the
disagreement reflected in their briefs. The heart of the dispute appears to be the nature of the
difference between Plaintiff’s “confining the reservoir to fill” and Defendant’s “confining the
reservoir in order to cause the reservoir to fill.” In other words, to what extent does the
confinement provided by the housing cause the reservoir to fill into a particular shape?
Plaintiffs argue that “[e]very embodiment of the ‘481 Patent shows the housing defining
the bounds of the reservoir within. There are no embodiments where the reservoir is shown
outside of the space defined by the housing.” (Id.) Plaintiffs’ argument, which adds a
minimizing gloss not immediately apparent from their proposed construction, attempts to demote
the disputed phrase to mean merely that the housing is outside of the reservoir. Plaintiffs’ attempt
to avoid any causation requirement is contradicted by the words of the claim itself: “confining the
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reservoir to fill concentrically” itself connotes some degree of causation. That does not mean
merely that the housing is outside of the reservoir. The specification uses the term “confining” in
this context:
The collapsible housing 12 has a substantially spherical configuration for confining
and guiding the inflatable reservoir or bladder into a concentric position around the
central support member, and enabling it to expand naturally in a spherical
configuration as will be described.
(‘481 Patent 2:54-59 (emphasis added).) Plaintiffs make a distinction between the terms
“confining” and “guiding,” arguing that “the patent teaches that in certain embodiments, the
housing can perform both of these distinct functions - 1) ‘confine’ and 2) ‘guide’ the reservoir,”
but that the inventors of the ‘481 Patent only chose to claim the “confining” function. (Opp’n 11,
12.) Plaintiffs analogize the housing “confining” the bladder to a fence “confining” an animal to
its pen, which “does not guide the movement of the animal within the pen[.]” (Id. 12.) Because
the “expanding reservoir does not even come into contact with the housing during a substantial
portion of the filling process[,]” Plaintiffs conclude that “a housing that does not contact the
filling reservoir cannot guide or cause that reservoir to fill in a particular manner.” (Id. (emphasis
added).)
It is true that if the housing never contacted the reservoir, it could not guide it, but it would
also not confine it in any meaningful sense. A fence “confines” not just by being outside of
something, but by preventing things from moving past the fence. Plaintiff in fact does not
contend that the housing never actively confines: it only contends that in the preferred
embodiment, the housing does not affect the shape of the reservoir during a substantial portion
of the filling process. And, that contention is correct. Consistent with the specification’s
description of the housing as both “collapsible” and “non-stretchable” (‘481 Patent 6:26-27),
figures 1 and 2 show substantial space between housing 12 and bladder 20 when unfilled, and it is
clear that the housing could not affect the shape of the reservoir until the reservoir has expanded
substantially:
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Turning to extrinsic evidence, Defendant points to the dictionary definition of “confine”:
“keep in a place, within or to limits or a defined area; restrict.” (Oxford English Dictionary,
definition 3 of “confine,” Conley Decl. Ex. M.) That definition connotes cause and effect,
consistent with the words of the claims and the specification. But to the extent Defendant’s “to
cause” language suggests that the housing needs to actively guide the reservoir through the entire
filling process, that contention must be rejected. As Plaintiffs note, and as follows from the
nature of the housing and the figures showing substantial space between the bladder and housing
when the bladder is unfilled, the “expanding reservoir does not even come into contact with the
housing during a substantial portion of the filling process.” (Reply 12.) Therefore, if
Defendant’s construction requires active confinement or guiding throughout the filling process, it
would exclude preferred embodiments, which is “rarely, if ever, correct.” Vitronics, 90 F.3d at
1583.
In sum, the text of the parties’ proposed constructions do not seem to adequately account
for the important nuance in the arguments they raise. The claims appear to describe a multi-stage
filling process insofar as the housing’s “confining to fill concentrically” function is concerned:
initial “natural expansion,” followed by confinement by the collapsible, non-stretchable housing
so that the bladder remains concentric around the support member. The Court interprets the
“confining” limitation to be directed to the terminal portion of the filling process: where, in its
substantially expanded position, the reservoir is in contact with, and confined by, the housing.
Therefore, the Court construes “for confining said reservoir to fill concentrically about said
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support member” to mean “for confining said reservoir to fill concentrically about said support
member when the reservoir is filled substantially to the volume of the housing.”
1.4 “loosely positioned around”
Plaintiffs’ Construction Defendant’s Construction
plain and ordinary meaning indefinite under 35 U.S.C. § 112, ¶ 2;
otherwise, “positioned within about one-
thousandths (0.001) of an inch around”
Fifteen years after the ‘481 Patent issued, Plaintiff amended the language in claims 1 and
15 to include the phrase “loosely positioned around.” (Opp’n 16; ‘481 Reexam Certificate 1:41-
42.) The phrase occurs in the following context: “said collapsible non-stretchable housing means
loosely positioned around said sleeve means and defining a chamber between said sleeve means
and said collapsible non-stretchable housing means” (claim 1) and “said collapsible shell loosely
positioned around said sleeve means and defining a chamber between said sleeve means and said
collapsible shell” (claim 15). (Id. 1:39-43, 2:31-34.) Plaintiffs propose that this limitation be
construed to have its plain and ordinary meaning, as it is not a technical or specialized term.
(Mot. 13.)
The Apex court previously rejected a construction that was similar to, although less
restrictive than, Defendant’s proposed construction: “positioned to surround the sleeve means in a
manner that is not tight fitting and that is considerably less tight fitting than a clearance of on the
order of about one-thousandth[] of an inch.” The Apex court held that this construction
“impose[d] unnecessary limitations on the claims.” (Mot. 13; Apex Reexam Claim Construction
Order (“Apex Reexam Order”), Zelkin Decl. Ex. 6 at 54-55.) Instead, the Apex court found that
“one of ordinary skill in the art would construe the amended claim language according to its plain
meaning” and adopted Plaintiffs’ construction. (Apex Reexam Order, Zelkin Decl. Ex. 6 at 55.)
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Defendant argues that because “loosely positioned around” is a term of degree, it must be
given definite limits or else be held indefinite. (Opp’n 16-17.) Defendant’s proposed “definite
limit” of about one-thousandth of an inch is derived from the ‘983 Patent (one of the patents
incorporated by reference into the specification of the ‘481 Patent). The ‘983 Patent discloses
that:
Upon assembly, the elastomeric tube 62 is preferably slide or slip fitted on the support
member 64 between surfaces 66 and 68, and clamped in place by means of clamps 100
and 102. The member 62 is preferably slip fitted somewhat loosely with about one-
thousandth[] (0.001) of an inch on support member 64, and not stretched either
radially or longitudinally.
(‘983 Patent 3:29-35 (emphasis added).) Thus, the ‘983 Patent—which again, is not an ancestor
or descendant of the ‘481 Patent—does define the term “loosely.” But, Defendant again attempts
to use a description of one part of a device from a patent incorporated by reference to limit a
different part of the device in the ‘481 Patent’s claims. The ‘983 Patent uses the term “loosely”
in the context of an elastomeric tube, or bladder, being “slip fitted” on a support member, not in
terms of a housing being positioned around the elastic sleeve / bladder, as in the ‘481 Patent.
(‘983 Patent 3:29-30; ‘481 Patent 2:63-68.) Figure 11 of the ‘983 Patent illustrates a plurality of
elastic sleeves “loosely positioned around” a support member:
Figure 11 depicts inner sleeve 152 and outer sleeve 202 (dashed lines), which are slip fitted
around support member 154 when unfilled. (‘983 Patent 5:55-59.)
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By contrast, the claim term under consideration describes the housing being loosely
positioned around the elastic sleeve, and the ‘481 Patent’s specification makes clear that the
housing is not slip fit on the elastic sleeve. See also ‘418 Patent Figs. 1 and 2. The housing in
the ‘481 Patent is described as “collapsible” and “non-stretchable.” (‘481 Patent 6:26-27.) This
suggests that the housing is uniformly very close to the reservoir only when the reservoir is filled
to the point where it is actively confined by the housing. By contrast, the ‘983 Patent teaches that
the bladder (again, an entirely different component) is one-thousandth of an inch away from the
support member when the bladder is completely empty. There is no basis to import a precise
numeral limitation from the specification of a different patent, when that numerical limitation is
not even describing the same structure as under consideration here, and there is no basis to
believe that a person of ordinary skill in the art would believe “loosely” would mean about a
thousandth of an inch in this context.
To support its alternative position, that the term is indefinite, Defendant submitted a
declaration from Freddie Lee (“Lee”), the inventor of the accused AccuFlo product. Lee argues
that in the field of the ‘481 Patent, there is no plain and ordinary meaning of “loosely positioned
around.” (Lee Decl. 14 (“the ‘481 Patent sheds no light on what the boundaries of that phrase
may be.”)) Lee asks: “How loose is loose enough? How loose is too loose?” (Id.) Lee does not
tie his opinions directly to any particular evidence about an understanding within the industry,
and does not account for the specification’s description of the housing. Despite his technical
knowledge Lee’s arguments are of the type an attorney would make. And they are being made by
an interested party. The Court accords them little weight. “[C]onclusory, unsupported assertions
by experts as to the definition of a claim term are not useful to a court.” Phillips, 415 F.3d at
1318.
Defendant also argues that the indefiniteness of “loosely positioned around”—a phrase
that was added to the claims fifteen years after the patent issued— is supported by the fact that
the specification does not use that phrase, or even the word “loose.” (Opp’n 18.) But the phrase
accurately describes the positioning of the housing as shown in the figures in the patent as
originally issued. Defendant notes that “[i]t is well established that patent drawings do not define
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the precise proportions of the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” (Mot. 18-19, n.6 (quoting Hockerson-
Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000).) That is so, but
Defendant ignores that the specification teaches that the housing is “collapsible” and
“substantially non-stretchable.” Such a housing must by its very nature fit loosely when the
reservoir is unfilled.
In Reply, Plaintiffs persuasively argue that Defendant’s proposed construction suggests
that “any distance greater than ‘about one-thousandth[]’ would still be ‘loosely positioned’” and
that 0.001 inch “appears to set a minimum.” (Mot. 15.) The Court agrees: if Defendants think
that clearance of 0.001 inch is loose, than anything greater than that is even looser.
Definiteness problems often arise when words of degree are used in a claim. That
some claim language may not be precise, however, does not automatically render a
claim invalid. When a word of degree is used the district court must determine
whether the patent’s specification provides some standard for measuring that
degree. The trial court must decide, that is, whether one of ordinary skill in the art
would understand what is claimed when the claim is read in light of the
specification.
Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Here,
the specification does provide a standard for defining “loosely positioned around,” although it is
not done with precise numerical measurements. The parameters of “looseness” are directly
related to the nature of the cover—collapsible and non-stretchable—as described and claimed. It
is loose enough to not interfere with the expansion of the reservoir until the reservoir is filled to
substantially the volume of the housing, at which point the housing confines the expanding
reservoir such that it must fill concentrically around the housing. Therefore, to the extent
“loosely positioned around” requires construction, the Court construes it to mean to mean
“positioned around with enough space between the housing and the reservoir such that the
housing does not interfere with the expansion of the reservoir until the reservoir is filled
substantially to the volume of the housing.”
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2. SUMMARY JUDGMENT OF INFRINGEMENT
The parties disagree about whether the accused AccuFlo infusion pump includes the three
disputed limitations in claims 1 and 15. Both parties spill ink on atmospherics not directly
relevant to the question of infringement. Plaintiffs argue that Defendant’s product is a “knock-
off” of Plaintiffs’ On-Q product. (Mot. 1.) But “[i]nfringement is determined on the basis of the
claims, not on the basis of a comparison with the patentee’s commercial embodiment of the
claimed invention.” ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1578 (Fed. Cir.
1984). Defendant argues that its product is a marked improvement over the ‘481 Patent. (Opp’n
2.) But “[m]aking improvements on a patented invention by adding features to a claimed device
beyond those recited in the patent does not avoid infringement.” Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1365 (Fed. Cir. 2004). The relevant question is simply
whether the accused device infringes the claims as construed. Cybor Corp. v. FAS Technologies,
Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998).
2.1 The AccuFlo Product
Lee stated that one of his goals for the AccuFlo was “to design an elastomeric infusion
pump which reduced the initial spike in flow rate that was typically encountered in existing
elastomeric infusion pump products.” (Lee Decl. 4.) To accomplish this goal, Lee configured the
support member “to expand longitudinally when fluid enters the bladder and to contract
longitudinally when fluid exits the bladder.” (Id. 5.) As a result, as “the overall length of the
support [member] varies, so too does the distance between the two points at which the bladder is
affixed to the support [member].” (Id.)
Lee testified that the structure of the AccuFlo is accurately reflected in U.S. Patent App.
Publ. No. 2012/0325320 (the “‘320 Publication”). (Lee Decl. 4.) It discloses a “bladder [that]
has a size and position that are substantially independent of the size and shape of the cover” and
that “a gap exists between an outer surface of the bladder and an inner surface of the cover when
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the bladder is filled with fluid.” (‘320 Publ., Ex. 1 to Lee Decl. ¶ [0009].) Figures 2A and 2B of
the ‘320 Publication are shown below:
(‘320 Publ., Ex. 1 to Lee Decl., Figs. 2A and 2B.) In figures 2A and 2B, the outer surface of the
bladder 36 does not touch the inner surface of the housing 38. (Id. ¶ [0025].)
//
//
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Lee also provided a photograph demonstrating how the AccuFlo support member expands when
the bladder is filled:
(Lee Decl. 7.) Lee provided another picture depicting AccuFlo with a filled bladder (dashed oval)
inside the housing:
(Id. 15.)
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Plaintiffs also submitted photographs of the AccuFlo product. The below photograph shows the
AccuFlo in its unfilled state with the housing over the bladder:
(Mot. 17.)
2.2 First Disputed Limitation: “mounted . . . and sealingly secured at fixed
spaced longitudinal positions on said support member”
The Court’s construction is “secured at positions on the support member such that they do
not slip or slide along the support member, and are spaced apart from each other on the
lengthwise axis of the support member.” Defendant’s position that this limitation is not present
in the AccuFlo device was based entirely on obtaining a construction requiring the positions at
which the bladder is mounted to be at fixed spacing relative to each other. As the Court has
rejected that construction, there is no dispute that the AccuFlo product meets this limitation.
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2.3 Second Disputed Limitation: “for confining said reservoir to fill
concentrically about said support member”
The Court’s construction is “for confining said reservoir to fill concentrically about said
support member when the reservoir is filled substantially to the volume of the housing.” Lee
declared that the AccuFlo’s housing “has no impact whatsoever” on the reservoir filling up
concentrically about the support member. (Lee Decl. ¶¶ 15-16.) If, as depicted in the photograph
from the Lee Declaration reproduced again below and described by Lee, there is always enough
space between the AccuFlo’s housing and bladder, such that the housing never “confines the
bladder to fill concentrically around the support member,” then AccuFlo does not meet this
disputed limitation.
On a motion for summary judgment, the non-moving party’s evidence must be believed,
and all inferences drawn in its favor. Anderson, 477 U.S. at 269. But plaintiffs argued at the
hearing that the Court should disregard Lee’s testimony on this point as fraudulent under Fed. R.
Civ. P. 56(h). Plaintiffs brought to the hearing two accused products that were filled such that the
housing and the reservoir were largely in contact. Defendant responded that Plaintiffs had not
provided the exemplars before the hearing, and that, among other potential issues, they might
have been filled beyond their normal operating parameters.
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This exchange between the parties also revealed a dispute about the extent of contact
between the housing and reservoir during “normal operation” of the accused products.
“[D]epending on the claims, ‘an accused device may be found to infringe if it is reasonably
capable of satisfying the claim limitations, even though it may also be capable of noninfringing
modes of operation.’” Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir.
2010) (quoting Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed. Cir. 2001)). For
example, “an automobile engine for propulsion exists in a car even when the car is turned off.”
Finjan, 626 F.3d at 1205. But “reasonably” is an important modifier of “capable” in this context:
“tests of an accused device under unusual conditions are not necessarily relevant to an
infringement analysis.” Hilgraeve, 265 F.3d at 1343.
Given the current state of the evidence, and the additional factual disputes revealed at oral
argument, the Lee Declaration cannot be rejected under Fed. R. Civ. P. 56(h). Therefore,
Defendant has raised a genuine issue of material fact as to whether the AccuFlo meets this
limitation.
2.4 Third Disputed Limitation: “loosely positioned around”
The Court’s construction is “positioned around with enough space between the housing
and the reservoir such that the housing does not interfere with the expansion of the reservoir until
the reservoir is filled substantially to the volume of the housing.” Based on this construction, the
AccuFlo product contains this limitation. Lee declares that “the AccuFlo infusion pump contains
an outer cover which is spaced apart from the product’s expandable bladder at a significantly
greater distance than one-thousandths of an inch.” (Lee Decl. ¶ 22.) The AccuFlo’s housing
allows the bladder to expand before being substantially filled without interference. In fact,
crediting the same evidence Defendant relies on for the “confining” limitation, it is so loose that it
never confines the bladder to fill concentrically around the support member—and unlike the
previous limitation, there is no requirement here that it ever do so. It therefore meets the “loosely
positioned around” limitation.
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DISPOSITION
The foregoing claim constructions shall govern this case.
Plaintiffs’ Motion for Summary Judgment is DENIED.
IT IS SO ORDERED.
DATED: August 21, 2013
_______________________________
Andrew J. Guilford
United States District Judge
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