Desena v. Beekley Corp.

• Decision Date: 03 August 2010
• Docket Number: Civil No. 09-352-P-H
• Citation: 2010 Markman 3064403,729 F.Supp.2d 375
• Parties: Danforth S. DeSENA, DPM, and Solistice Corporation, Plaintiffs v. BEEKLEY CORPORATION, Defendant.
• Court: U.S. District Court — District of Maine

729 F.Supp.2d 375

2010 Markman 3064403

Danforth S. DeSENA, DPM, and Solistice Corporation, Plaintiffs

v.BEEKLEY CORPORATION, Defendant.

Civil No. 09-352-P-H.

United States District Court, D. Maine.

Aug. 3, 2010.

Andrea B. Reed, Jeffrey L. Snow, Christopher Centurelli, K & L Gates LLP, Boston, MA, Patricia M. Mathers, Bohan Mathers & Associates LLC, Kathryn K. Rowen, Taylor, McCormack & Frame, LLC, Portland, ME, for Plaintiffs.

Eric E. Grondahl, James E. Regan, Mark D. Giarratana, McCarter & English, LLP, Hartford, CT, John G. Osborn,Leonard M. Gulino, Bernstein, Shur, Portland, ME, for Defendant.^*

DECISION AND ORDER ON MOTIONS FOR CLAIMS CONSTRUCTION, SUMMARY JUDGMENT AND TO EXCLUDE EXPERT WITNESSES

D. BROCK HORNBY, District Judge.

This case is primarily a patent dispute. It involves skin markers that medical practitioners use to demarcate a particular area or feature of concern that will then be highlighted on subsequent x-rays. There are also accusations of trademark infringement, false advertising, false patent marking, and deceptive trade practices. After a hearing on June 3, 2010, I construe the claims of the two patents held by the warring patent holders, and rule upon their motions for claim construction, summary judgment, and exclusion of expert testimony.

The '106 Patent

The plaintiffs (they are Dr. Danforth S. DeSena, the inventor, and his company, Solstice Corporation (collectively "Solstice")) ask me to construe claims 1, 2, 3, 6, 7 and 10 of their U.S. Patent No. 5,193,106 (the '106 patent) and to grant them summary judgment on claims 1, 2 and 3. The defendant Beekley Corporation ("Beekley") moves for summary judgment of noninfringement on claims 1, 2, 3, 6, 7 and 10 of the '106 patent.

The '106 patent is entitled "X-Ray Identification Marker." According to Solstice's legal memorandum:

The '106 patent describes and claims a marker device. The device includes a tape with a pressure-sensitive adhesive backing on one side and a radiopaque material on the other non-adhesive side. The radiopaque material is disposed on the tape to form various shapes, e.g., triangles, squares, or circles, as shown in Figure 2 of the patent ...

These shapes are "designed to enclose small cutaneous landmarks," such as lesions or other palpable masses. The circle shape "is provided in sizes ranging from about 1.0 up to about 3.0 centimeters in inner diameter." The "radiopaque material may be in powder, wire, or paint form; metallic materials such as barium sulfate, aluminum, and lead, may be used." In use, the marker is affixed to a patient's skin such that the shape of radiopaque material surrounds the landmark. When the x-ray is taken, the radiopaque material's shape is superimposed upon the x-ray photograph, identifying the location of the skin landmark.

Pls.' Mot. For Summ. J. 1-2 (citations and figures omitted) (Docket Item 110).

What the patent actually says is:

I claim:

1. A marker device to be used in the x-ray examination of problematic deep structures of the foot, wherein said problematic deep structures of the foot are denoted by cutaneous landmarks, said marker device comprising:

a. A tape with pressure-sensitive adhesive on one surface thereof and a non-adhering surface on a side opposite, wherein said tape is suitable for attachment to the surface of the skin of the foot, and

b. A radiopaque material affixed to said non-adhering surface of said tape, wherein said radiopaque material is formed into a shape such that it completely surrounds a cutaneous landmark in a surrounding shape ofan internal size comparable to that of cutaneous landmarks of podiatric pathologies.

Claim 1, '106 patent col. 5-6 ll. 51-53 and ll. 1-13 (Docket Item 56-2) attached as Ex. A to Pls.' Mot. For Claims Construction. Claims 2 and 3 are dependent claims, deriving from Claim 1. Claim 6 is the same as Claim 1 through subpart a, but has a different subpart b and subpart c as follows:

b. radiopaque material, wherein said radiopaque material is deposited onto said non-adhering surface of said tape to form a plurality of circles, wherein each of said circles has an inner diameter of a dimension sufficient to completely surround cutaneous landmarks of podiatric pathologies, and

c. A plurality of sets of perforations incorporated into said tape, wherein each of said plurality of circles is affixed to said tape between each pair of adjacent sets of perforations.

Id. at col. 6 ll. 33-42. Claims 7 and 10 are dependent claims, deriving from Claim 6.

The major controversy between the parties on this patent is the significance of the repeated references in the patent to the foot and podiatry. Beekley says that its products do not infringe the '106 patent because it sells its allegedly infringing devices solely for mammography, not podiatry, and Solstice admits that there is no evidence that Beekley's mammography markers are used in podiatry. Pls.' Opp'n Statement of Facts and Additional Facts in Resp. to Def.'s Mot. For Summ. J. ¶ 1 (Docket Item 112-1); Flannery Aff. ¶¶ 13, 14 (Docket Item 67-1) attached as Ex. O to Wantek Aff. Solstice maintains that these are nevertheless infringing activities because, according to its reading of the '106 patent, it is not limited to podiatric uses. There are other disagreements, but that is the major point of controversy.

The Federal Circuit has prescribed the rules for construing a patent's claims. Specifically, "[i]t is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.' " Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)). The Federal Circuit has explained that a reason for this, quoting the Supreme Court, is that "it is 'unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.' " Id. (quoting White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed. 303 (1886)). The words of a claim "are generally given their ordinary and customary meaning," "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1312-13 (citations omitted). Sometimes, "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. at 1314.

That is the case here. On its face, the '106 claims are explicitly for a marker device that is to be used for x-rays of "problematic deep structures of the foot," with tape that can be attached to the "skin of the foot," where the size of the marker is related to "cutaneous landmarks of podiatric pathologies." These statements of the claims use commonly understood words with widely accepted meaning. They do not cover mammography.

But Solstice says that this conclusion places too much weight on the use that the inventor envisioned for the apparatus and on the claims' preamble (the portion of theclaims preceding the word "comprising"). Solstice says that a proposed use for an apparatus appearing in a preamble is not necessarily a limitation of a claim, and cites the following passage from Catalina Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002):

In general, a preamble limits the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claim. Conversely, a preamble is not limiting "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention."

Solstice says that for the '106 patent, the reference to "problematic deep structures of the foot" does not recite "essential structure or steps," or "give life, meaning or vitality to the claim." According to Solstice, the reference states only a "purpose or intended use for the invention." The invention, says Solstice, is an x-ray identification marker, as the patent title states; use in podiatry is merely one possible use. Pls.' Mot. for Claim Construction at 10-11 (Docket Item 56). Solstice also points to Catalina's language that where the patent is for an apparatus, as here, "preambles describing the use of an invention generally do not limit the claims because the patentability of apparatus ... claims depends on the claimed structure, not on the use or purpose of that structure." Catalina, 289 F.3d at 809.¹ Instead, an apparatus patent "grants the right to exclude others from making, using, selling, offering to sale, or importing the claimed apparatus ... for any use of that apparatus ..., whether or not the patentee envisioned such use." Id. (emphasis added). That is the case here, says Solstice. It is the apparatus that is patented, and even though the inventor contemplated podiatric use, the patent covers its use for other purposes, including mammography.

Catalina also says, however, that "statements of intended use or asserted benefits in the preamble may, in rare instances, limit apparatus claims, but only if the applicant clearly and unmistakably relied on those uses or benefits to distinguish prior art." Id. According to Catalina, "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation." Id. at 808 (speaking of patent claims generally, not just apparatus claims); accord Bass Pro Trademarks, LLC v. Cabela's, Inc., 485 F.3d 1364, 1369 (Fed.Cir.2007).² Unfortunately for Solstice's infringement claim, that is exactly what happened here.

Under "Description of the Prior Art," the initial 1990 application for the ' 106 patent discussed in detail the difficulties of x-rays for podiatrists, and the need to relate things like palpable...