Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.

Decision Date30 June 1998
Docket NumberINC,No. 97-1574,ENDO-SURGER,97-1574
Citation47 USPQ2d 1272,149 F.3d 1309
PartiesETHICON, Plaintiff/counterclaim Defendant-Appellant, and Ethicon, Inc., Counterclaim Defendant-Appellant, v. UNITED STATES SURGICAL CORPORATION, Defendant/Counterclaimant-Appellee.
CourtU.S. Court of Appeals — Federal Circuit

Gerald Sobel, Kaye, Scholer, Fierman, Hays & Handler, LLP, New York City, argued for plaintiff/counterclaim defendants-appellants. With him on the brief Aaron Stiefel, and Daniel P. DiNapoli. Of counsel were Robert A. Pitcairn, Jr., Katz, Teller, Brant & Hild, of Cincinnati, Ohio; and Eric I. Harris, Johnson & Johnson, New Brunswick, New Jersey.

Eric J. Lobenfeld, Chadbourne & Parke, LLP, New York City, argued for defendant/counterclaimant-appellee. With him on the brief was Drew M. Wintringham. Of counsel were Thomas R. Bremer, and John C. Andres, United States Surgical Corporation, Norwalk, Connecticut.

Before LOURIE, CLEVENGER, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Ethicon Endo-Surgery, Inc. and Ethicon, Inc. (collectively, "Ethicon") appeal from the decision of the United States District Court for the Southern District of Ohio granting summary judgment that United States Surgical Corporation ("USSC") does not infringe claims 6 or 24 of U.S. Reissue Patent 34,519 under the doctrine of equivalents. See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., No. 94-CV-74, (S.D. Ohio June 30, 1997). Because the district court properly determined that claim 6 was not infringed, but erred in rejecting Ethicon's theory supporting infringement of claim 24, we affirm-in-part, reverse-in-part, and remand.

BACKGROUND

Ethicon owns the '519 patent, a reissue of U.S. Patent 4,892,244, directed to a "lockout mechanism" for use in linear cutter staplers ("staplers"). Such staplers allow a surgeon to make an incision in tissue while simultaneously stapling closed each side of the incision in order to prevent excessive bleeding. One object of the claimed lockout mechanism is "prevent[ing] the firing apparatus in a stapler from being used within a staple cartridge after the cartridge has been spent," '519 patent, col. 1, 11 53-56, thus making it impossible to use the stapler unless an unused cartridge has been inserted into it, see id. at col. 1, 11 30-31. An aspect of the invention, relevant to this appeal, is described in the following passage from the patent's Detailed Description of the Drawings, with reference to Figures 2, 3, and 4, shown below.

When the [pusher bar] 32 travels through the staple cartridge 50, and is activating drivers 52, it will come into contact with a lockout mechanism 90. This lockout mechanism 90 is comprised of a strip 92 which has a front end 94. This front end 94 is spring loaded and sits within a hollow 59 of the staple cartridge 50. When the [pusher bar] 32 advances far enough into the staple cartridge 50, the front end 94 of the strip 92 is activated so that it moves entirely within the hollow 59. ... When the strip 90 continues to move forward in the staple cartridge 50, a detent or restraining means 98 is moved away from the barrier lock 96, as seen in Fig. 3. When the [pusher bars] 32 are retracted from the staple cartridge 50, the barrier lock 96 is able to move into the path of the [pusher bar] 32, as seen in Fig. 4. At this point, therefore, the [pusher bar] 32 is no longer able to move through the longitudinal slots 33 of the staple cartridge, because it is blocked by the barrier lock 96. Thus, the lockout mechanism 90 prevents refiring of the spent staple cartridge 50.

Id. at col. 3, 11 2-25.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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Mlaim 6, which is identical to a claim of the original '244 patent, reads as follows:

In a staple cartridge insertable within a surgical stapler and containing staples and comprising an elongated body including one or more longitudinal slots for slidably receiving one or more longitudinal pusher bars comprising a firing mechanism of said surgical stapler and a plurality of drivers engageable by said pusher bars for ejecting the staples from the cartridge, said staple cartridge releasably fastened to a[sic] said surgical stapler,

the improvement comprising a lockout mechanism connected to said longitudinal slots for preventing said pusher bar from passing more than one time through said longitudinal slots.

(emphasis and paragraphing added). Claim 24, added during reissue, reads as follows:

A surgical stapler comprising

a frame,

a cartridge filled with staples and positionable in operative association with said frame and having one or more slots,

a firing assemblage including a pusher assembly movable relative to said frame, said pusher assembly comprising one or more pusher bars respectively extending through said slots to fire said staples,

a member operatively connected to said pusher assembly for moving the pusher assembly in a firing direction down a path to fire the staples, and in a direction opposite to said firing direction to a retracted position after at least a portion of the staples have been fired,

a lockout mechanism for preventing firing movement of the pusher assembly in the firing direction after the pusher assembly has been moved to the retracted position, said lockout mechanism including a barrier assemblage for preventing movement of the pusher assembly from said retracted position, said barrier assemblage comprising a resilient projecting member normally biased toward a position to engage said pusher assembly to prevent movement of said pusher assembly relative to said resilient projecting member after said pusher assembly has been moved to said retracted position, and

a restraining structure separate from said pusher bar for blocking said barrier assemblage to maintain said resilient projecting member out of the path of the pusher assembly during staple firing, said restraining structure being movable by said pusher assembly during movement of the pusher assembly in the firing position whereby the barrier assemblage is released to allow the resilient projecting member to move into the path of the pusher assembly to prevent firing movement of said pusher assembly after movement thereof to said retracted position.

(emphasis and paragraphing added). Thus, as this court has previously observed, "the primary distinction between claims 6 and 24 is that claim 6 seems to tie the location of the lockout mechanism to the slots through which the pusher bars pass, while claim 24 broadly describes the location of the lockout as anywhere in the path of the pusher assembly." Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 93 F.3d 1572, 1576-77, 40 USPQ2d 1019, 1022 (Fed.Cir.1996) (Ethicon II).

USSC produces the Multifire GIA 60 and GIA 80 open linear cutter staplers ("the USSC staplers") which employ a lockout mechanism that functions in accordance with USSC's U.S. Patent 5,031,814. This lockout mechanism consists of a barrier (or "hooking clip") for engaging a cam bar retainer, which although not a pusher bar, is part of the "pusher assembly." Also, rather than being in the staple cartridge, the barrier is located at the end of a self-contained "disposable loading unit" (DLU) opposite the staple cartridge. Thus, the USSC lockout does not physically obstruct the pusher bars' path into the cartridge, but rather prevents the bars from being pushed from behind by obstructing the movement of the cam bar retainer. As shown below in one of Ethicon's trial exhibits, the barrier of the USSC staplers' lockout moves into the path of the pusher assembly (the cam bar retainer plus the pusher bars) during the staple firing stroke. However, as Ethicon concedes and as shown in the first drawing, the barrier is held out of the path of the pusher assembly by the restraint (or "chock") only until just before the first staple is fired. As shown in the second drawing, by the time the first staple is fired, the barrier is in contact with the cam bar retainer. (The third drawing shows the position at which subsequent staples are fired.) As shown in the fourth drawing, after the cam bar retainer is retracted, the barrier rides up and over and hooks onto the cam bar retainer from behind and, as shown in the fifth drawing, prevents subsequent staple firing.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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In 1994, Ethicon sued USSC, asserting that the USSC staplers (as well as other staplers that are not at issue in this appeal) infringed claims 6 and 24 of the '519 patent. The district court conducted a Markman hearing, after which it construed claim 6 as requiring that the lockout be located in the staple cartridge, and both claims 6 and 24 as requiring that the lockout mechanism engage the pusher bars and thus prevent them from passing through the longitudinal slots. See Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 900 F.Supp. 172, 179-83, 38 USPQ2d 1385, 1391-94 (S.D.Ohio 1995) (Ethicon I). Because USSC's lockout is not in the cartridge and it comes into direct contact with the cam bar retainer rather than the pusher bars, the court entered summary judgment of non-infringement.

On appeal, this court affirmed the finding of lack of literal infringement of claim 6, agreeing with the district court's construction of that claim. Ethicon II, 93 F.3d at 1577-78, 40 USPQ2d at 1023-24. However, we disagreed with the court's interpretation of claim 24, and held that the term "pusher assembly" encompasses both the pusher bars and the cam bar retainer. Id. at 1581, 93 F.3d 1572, 40 USPQ2d at 1026. Nevertheless, because Ethicon admitted that USSC's restraint "releases the barrier prior to the firing of any staples," we affirmed the finding of lack of literal infringement of claim 24, based on our construction of the "during staple firing" limitation as requiring "that the barrier remain outside the path of the pusher assembly until...

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