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

• Decision Date: 29 August 1996
• Docket Number: INC,ENDO-SURGER,No. 96-1008,96-1008
• Citation: 93 F.3d 1572,40 USPQ2d 1019
• Parties: ETHICON, Plaintiff/Counterclaim Defendant-Appellant, and Ethicon, Inc., Counterclaim Defendant-Appellant, v. UNITED STATES SURGICAL CORPORATION, Defendant/Counterclaimant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1572

93 F.3d 1572

40 U.S.P.Q.2d 1019

ETHICON ENDO-SURGERY, INC., Plaintiff/Counterclaim Defendant-Appellant, and Ethicon, Inc., Counterclaim Defendant-Appellant, v. UNITED STATES SURGICAL CORPORATION,

Defendant/Counterclaimant-Appellee.

No. 96-1008.

United States Court of Appeals,

Federal Circuit.

Aug. 29, 1996.

Rehearing Denied Oct. 17, 1996.

Gerald Sobel, Kaye, Scholer, Fierman, Hays, and Handler, LLP, New York City, argued, for plaintiff/counterclaim defendant-appellant Ethicon Endo-Surgery, Inc. and counterclaim defendant-appellant Ethicon, Inc. With him on the briefs were Aaron Stiefel, Daniel P. DiNapoli, New York City, Robert A. Pitcairn, Jr., Cincinnati, OH, and Eric I. Harris, New Brunswick, NJ.

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 CLEVENGER, Circuit Judge, COWEN, Senior Circuit Judge, and SCHALL, Circuit Judge.

CLEVENGER, Circuit Judge.

Ethicon Endo-Surgery, Inc. (Ethicon) appeals a decision of the District Court for the Southern District of Ohio granting summary judgment of noninfringement to United States Surgical Corp. (U.S. Surgical) with respect to claims 6 and 24 of U.S. Reissue Patent No. 34,519 ('519). Ethicon Endo-Surgery v. United States Surgical Corp., 900 F.Supp. 172, 38 USPQ2d 1385 (S.D.Ohio 1995). We affirm-in-part, vacate-in-part, and remand.

I

Linear cutter staplers (staplers) are surgical instruments used to cut internal body tissue while simultaneously placing rows of staples along both sides of the incision in order to prevent excessive bleeding. It is important, therefore, that the stapler not be used when its staple cartridge is empty. The '519 patent discloses a "lockout mechanism" for ensuring that once the staple cartridge is emptied, the stapler cannot be used again before the spent staple cartridge is replaced. The '519 patent is a reissue of U.S. Patent No. 4,892,244 ('244).

The reissue patent discloses several embodiments which work similarly. Illustratively, Fig. 1 of the reissue patent, reproduced below, depicts a stapler 10 ¹ comprising an upper jaw 20, a firing means 30, a lower jaw 40 and a staple cartridge 50 which fits within lower jaw 40. During operation, firing knob 42 is pushed forward which causes both knife 34 and pusher bars 32 (also known as "cam bars") to advance. As knife 34 creates an incision, pusher bars 32 enter slots 33 (shown in Fig. 2 below) in the staple cartridge where they engage staple drivers and cause the staple drivers to eject staples along the two sides of the incision.

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

Also reproduced below is Fig. 2 of the reissue patent which is an elevation view of the lockout mechanism during firing of the stapler. As shown in Fig. 2, lockout mechanism 90 comprises a strip 92, a barrier lock 96 biased to enter slots 33, and a restraining member 98 to inhibit barrier lock 96 from entering slots 33. As the stapler is fired, pusher bars 32 slide forward until they reach and engage the front end 94 of strip 92, thus sliding strip 92 forward. As a result, restraining member 98 slides forward to a point where it no longer inhibits barrier 96. At this point in the firing, however, barrier 96 is still not able to enter slots 33 because of the presence of pusher bars 32. As the pusher bars 32 are retracted, however, barrier 96 enters slots 33 and prevents pusher bars 32 from reentering slots 33. In this way, barrier 96 prevents the stapler from being refired.

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

William D. Fox et al., assignors to Ethicon, applied for and received the '244 patent, which issued on January 9, 1990. Claim 6 of that patent, the only claim from the original patent which is at issue in this case, recites:

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 said surgical stapler,

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

(emphasis added).

Subsequently, Ethicon became concerned that this claim might not read on several lockout mechanisms employed by its competitor U.S. Surgical. As is illustratively shown in the trial exhibit drawings reproduced below, the lockout mechanism on U.S. Surgical's open staplers functions by impeding the cam bar retainer, rather than the pusher bars. ² In addition, U.S. Surgical's endoscopic staplers utilize a somewhat different lockout mechanism which engages another portion of the firing assembly called the "actuating channel." Arguably, then, U.S. Surgical's lockouts do not infringe claim 6 because they do not comprise a barrier which enters the longitudinal slots to prevent the pusher bars from reentering the staple cartridge.

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

Seeking to broaden its claims to cover U.S. Surgical's product, Ethicon put its patent into reissue. One of these broader claims, claim 24, is asserted by Ethicon against U.S. Surgical in this case. Claim 24 recites:

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 moveable 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 moveable 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 added).

Facially, 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.

One week after its patent was reissued on January 25, 1994, Ethicon sued U.S. Surgical for infringement asserting that several of U.S. Surgical's staplers infringed claims 6 and 24 of the '519 patent. Discovery was conducted and the case was set for jury trial on April 10, 1994. On the eve of trial, however, we issued our in banc decision in Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 USPQ2d 1321 (Fed.Cir.1995) (in banc), aff'd, --- U.S. ----, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461 (1996), in which we held that claim interpretation is for the judge, not the jury, to determine. As a result, the parties agreed that a pre-trial Markman hearing would be beneficial to determine the scope of the claims at issue.

A five day hearing was held, at the close of which the district court interpreted the claims. On the basis of the claim language and the prosecution history, the district court concluded that both claims 6 and 24 must be read narrowly as requiring the lockout mechanism to engage the pusher bars rather than any other portion of the firing assembly. Since U.S. Surgical's lockout barriers do not engage the pusher bars, but instead engage the cam bar retainer or other portions of the firing assembly, the district court proceeded to hold, as a matter of law, that U.S. Surgical's staplers do not literally infringe claims 6 or 24 of the '519 patent. In addition, the district court seems to have determined as a matter of law that U.S. Surgical's staplers do not infringe under the doctrine of equivalents since the judgment from the district court dismisses Ethicon's suit with prejudice. The district court, however, presented no findings to explain its doctrine of equivalents holding.

Ethicon appeals from the district court's judgment. With respect to literal infringement, Ethicon contends that the district court read claims 6 and 24 too narrowly and that those claims are broad enough to cover devices in which the lockout barrier engages portions of the firing assembly other than the pusher bars. Additionally, Ethicon asserts that it was inappropriate for the Court to grant judgment as a matter of law on the doctrine of equivalents at the close of the Markman hearing. Ethicon believes that disputed issues of...