Greenberg v. Ethicon Endo-Surgery, Inc.
| Decision Date | 08 August 1996 |
| Docket Number | No. 96-1023,ENDO-SURGER,INC,96-1023 |
| Citation | 91 F.3d 1580,39 USPQ2d 1783 |
| Parties | I. Melbourne GREENBERG, M.D., Plaintiff-Appellant, v. ETHICON, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Harry J. Roper, Roper & Quigg, Chicago, Illinois, argued, for defendant-appellee. With him on the brief were Raymond N. Nimrod and Aaron A. Barlow.
Before MICHEL, Circuit Judge, NIES, * Senior Circuit Judge, and BRYSON, Circuit Judge.
This appeal arises from a patent dispute involving surgical instruments. The district court granted the motion of appellee Ethicon Endo-Surgery, Inc. (Ethicon) for summary judgment against appellant Greenberg, the patentee. Concluding that the district court erred in construing the claim at issue in this case, we vacate and remand for further proceedings.
The instruments at issue in this case are used in surgical procedures in which it is undesirable or impossible to make large openings in the patient's body. In such procedures, the surgeon makes a small incision, inserts one end of a long, thin surgical instrument into the patient's body, and positions the instrument at the point of surgery. By manipulating the handles at the proximal end of the instrument located outside the body, the surgeon causes the surgical tool at the distal end of the instrument to perform the desired surgical function.
During such a procedure, the surgeon may need to rotate the surgical tool at the distal end of the instrument. Prior art devices required the surgeon to rotate the entire instrument in order to rotate the surgical tool, which required the surgeon to hold the handles of the instrument in awkward positions. To eliminate that problem, one prior art device featured a wheel that permitted the surgeon to rotate the shaft of the instrument (and thus the surgical tool at the distal end) while the handles of the instrument remained in a fixed position. A drawback of that design was that the wheel could rotate freely, so that the surgeon would have to hold the wheel in the desired position with one hand while simultaneously performing the surgical operation with the other.
On June 23, 1987, U.S. Patent No. 4,674,501 (the '501 patent) issued to appellant Greenberg. Dr. Greenberg's invention is similar to the prior art rotating wheel device, except that it includes a "detent mechanism" that inhibits the free rotation of the wheel by holding it in one of a number of predetermined positions until some force is applied to turn the wheel. The detent mechanism described in the '501 patent specification consists of a spring-loaded ball built into one of the handles of the instrument. The spring-loaded ball cooperates with a circular set of recesses on the face of the rotating wheel. The rotating wheel controls the rotation of the shaft of the instrument about its axis. As the rotating wheel turns relative to the handle, the spring-loaded ball seats sequentially in each of the recesses on the face of the wheel. As a result, the shaft of the instrument turns relative to the handles, but at each point at which the spring-loaded ball seats in one of the recesses, the shaft's orientation vis-a-vis the handles remains fixed until the surgeon again rotates the wheel.
In 1992, Dr. Greenberg filed suit against Ethicon, claiming that Ethicon had made and sold a number of devices that infringed his rights under the '501 patent. The accused devices fall into three categories. The "five millimeter instruments" feature a spring-loaded ball located in the handle. The spring-loaded ball cooperates with a set of longitudinal grooves in the circumference of the shaft. As the surgeon turns an indexing wheel attached to the shaft, the spring-loaded ball seats sequentially in each of the grooves until the surgical tool at the distal end of the shaft reaches the desired orientation, at which it remains until the surgeon again applies force to the wheel. The "ten millimeter instruments" feature cooperating sets of gear-like teeth, one on the handle and one on an indexing wheel attached to the shaft. The surgeon can orient the surgical tool by pushing the wheel forward to disengage the teeth, rotating the wheel, and then releasing the wheel to allow the teeth to re-engage when the surgical tool reaches the desired position. The "Liga-clip instruments" feature a plastic tab on the handle that cooperates with a set of recesses built into the inside of an indexing wheel. By exerting rotational pressure on the wheel, the surgeon can force a nib on the plastic tab to engage each of the recesses in turn until the surgical tool is brought to the desired orientation, where it remains until the surgeon again applies force to the wheel.
Following discovery, Ethicon moved for summary judgment. Ethicon's motion focused on the "detent mechanism" element of claim 1 of the '501 patent, the claim on which Dr. Greenberg's lawsuit was principally based. After briefing and argument, the district court granted the motion.
Claim 1 of the '501 patent reads as follows, with the "detent mechanism" element highlighted:
A surgical instrument comprising a pair of axially matable and relatively slidable shafts each having at their distal ends cooperating working tools, a sleeve mounted adjacent the proximal end of said shafts, one of said shafts being fixedly attached to said sleeve for conjoint movement therewith, the other of said shafts extending freely through said sleeve and being exposed at its proximal end, a pair of handle members pivotally attached to each other and arranged scissor-like for manipulation by one hand, one of said handles being attached to said sleeve for conjoint axial movement and relative free rotary movement therewith, said sleeve and said one handle being arranged so that said sleeve is manipulatable by a finger of the same hand simultaneous with the manipulation of said handle, a radially enlarged wheel on said sleeve and said wheel and said one handle having a cooperating detent mechanism defining the conjoint rotation of said shafts in predetermined intervals, said other handle being universally attached to the exposed proximal end of said freely extending shaft, said shafts being caused to reciprocate relative to each other on manipulation of said handle members and to rotate about their common axis by manipulation of said sleeve, whereby said tools may be operated and moved into selected rotary positions relative to the axis of said shafts.
After analyzing the term "detent mechanism" as used in the '501 patent, the district court concluded that the element containing that term set forth a means for performing a specified function and thus was subject to the provisions of 35 U.S.C. § 112, paragraph six (hereafter, section 112(6)). That statute permits a patent applicant to express an element in a combination "as a means or step for performing a specified function without the recital of structure ... in support thereof," but provides that when an applicant drafts a claim element in that fashion, the element will be construed to cover only "the corresponding structure ... described in the specification and equivalents thereof."
The district court determined that the detent-type mechanisms in each of the Ethicon devices performed the function set forth in the "detent mechanism" element: "defining the conjoint rotation of [the] shafts in predetermined intervals." The court concluded, however, that the evidence Dr. Greenberg proffered in response to Ethicon's summary judgment motion was inadequate to show that the detents found on Ethicon's devices were structurally equivalent to the detent mechanism disclosed in the specification of the '501 patent. According to the district court, the only evidence of structural equivalence appeared in an affidavit and accompanying materials submitted by Dr. Greenberg's expert, Dr. Joseph Dyro. The court ruled that Dr. Dyro's assertions of structural equivalence were "extremely conclusory" and that they were therefore insufficient to raise an issue of fact as to infringement under section 112(6).
The district court also rejected Dr. Greenberg's argument that Ethicon's devices infringed under the doctrine of equivalents. With respect to that issue, the court again found that Dr. Greenberg had failed to raise a genuine issue of fact, principally because in the court's view Dr. Dyro's evidence was insufficient to raise a triable factual question of equivalency.
Dr. Greenberg's principal contention on appeal is that the district court erred in construing the "detent mechanism" element of claim 1 of the '501 patent as a "means-plus-function" element within the meaning of 35 U.S.C. § 112(6). Dr. Greenberg argues that the "detent mechanism" element recites structure and is not in "means-plus-function" form. Accordingly, he contends that the "detent mechanism" element should not have been limited to the particular detent mechanism disclosed in the specification and its structural equivalents.
As this court has observed, "[t]he record is clear on why paragraph six was enacted." In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1849 (Fed.Cir.1994) (in banc). In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3, 71 USPQ 175 (1946), the Supreme Court held invalid a claim that was drafted in means-plus-function fashion. Congress enacted paragraph six,...
To continue reading
Request your trial
-
Mas-Hamilton Group v. LaGard, Inc.
...evidence that a "lever moving element" or "moving element" has a well-understood meaning in the art. Cf., Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed.Cir.1996) ("detent mechanism" had well-understood meaning in the field). 112. Statements made during the prosecution rel......
-
Allen Engineering Corp. v. Bartell Industries
...Watts v. XL Sys., Inc., 232 F.3d 877, 880-81, 56 USPQ2d 1836, 1838 (Fed. Cir.2000) (quoting Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786 (Fed.Cir.1996)). The mere use of the word "means" after a limitation, without more, does not suffice to make that lim......
-
Emerson Elec. Co. v. Spartan Tool, LLC
...that term into a `means for performing a specified function' within the meaning of" 35 U.S.C. § 112 ¶ 6. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed.Cir.1996). "To invoke this statute, the alleged means-plus-function claim element must not recite a definite structure wh......
-
Amgen, Inc. v. Hoechst Marion Roussel, Inc.
...by those skilled in the art, a relevant consideration in determining whether a term is an act. Cf. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1582 (Fed.Cir.1996); see also Watts, 232 F.3d at 881; Caterpillar, 961 F.Supp. at Second, dictionary definitions of "culturing" define th......
-
A Change In What 'Means' Means: The En Banc Federal Circuit Reverses Itself
...that the claims were to be analyzed by how they were understood by one of skill in the art. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). The new standard removes the "strong" presumption and loosens the tethers of the means- and step-plus-function analysis f......
-
En Banc Federal Circuit Abandons 'Strong' Presumption That A Limitation Is Not Subject To 35 U.S.C. § 112, Paragraph 6
...10 Id. 11 Id. at 15-16 (quoting Flo Healthcare Solutions, 697 F.3d at 1374). 12 Id. at 16 (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 13 Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). 14 See id. 15 See id. at 20. 16 Id. at 17. 17......
-
The Rosetta Stone for the doctrine of means-plus-function patent claims.
...used the term advisedly to invoke the statutory mandates for means-plus-function clauses"). In Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580 (Fed. Cir. 1996), the court confronted the issue of whether the last paragraph is invoked by a limitation that does not use the word "means" bu......