Ethicon Endo-Surgery v. US Surgical Corp.

• Decision Date: 31 August 1995
• Docket Number: Civ. No. C-1-94-74.
• Citation: 900 F. Supp. 172
• Court: U.S. District Court — Southern District of West Virginia
• Parties: ETHICON ENDO-SURGERY, Plaintiff, v. UNITED STATES SURGICAL CORP., Defendant.

900 F. Supp. 172

ETHICON ENDO-SURGERY, Plaintiff, v. UNITED STATES SURGICAL CORP., Defendant.

Civ. No. C-1-94-74.

United States District Court, S.D. Ohio, Western Division.

August 31, 1995.

Gerald Sobel, Aaron Stiefel, Daniel P. DiNapoli, Kaye, Scholer, Fierman, Hays & Handler, New York City, Robert A. Pitcairn, Jr., Katz, Teller, Prant & Held, Cincinnati, Ohio, for the plaintiff.

Eric J. Lobenfeld, Drew M. Wintringham, Chadbourne & Parke, New York City, Gerald V. Weigle, Jr., Dinsmore & Shohl, Cincinnati, Ohio, for the defendant.

ORDER CONSTRUING CLAIMS 6 & 24 OF THE FOX PATENT, FINDING NO INFRINGEMENT, AND DISMISSING CASE

SPIEGEL, Senior District Judge.

This matter is before the Court for the purpose of construing the language of Claims 6 and 24 of United States Reissue Patent Number Re. 34, 519 (the "Fox Reissue Patent").

HISTORY OF THE LAWSUIT

Ethicon Endo-Surgery ("Ethicon") filed this lawsuit claiming that the Defendant United States Surgical ("U.S. Surgical" or "USSC") was infringing Ethicon's Fox Reissue Patent. U.S. Surgical counterclaimed asserting that the Fox Patent was invalid, that Ethicon's devices infringed U.S. Surgical's United States Patent Number 5,031,814 (the "Tompkins Patent"), and that Ethicon's devices infringed U.S. Surgical's United States Patent No. 5,156,315 (the "Green '315 Patent").

On March 21 and 22, 1994, the Court held a hearing on the Plaintiff's Motion for a Preliminary Injunction. Final arguments were heard on April 4, 1994. We denied the Plaintiff's motion. See Ethicon Endo-Surgery v. United States Surgical Corp., 855 F.Supp. 1500 (S.D.Ohio, 1994). The case was set for Summary Jury Trial on April 10, 1994. On the eve of the summary jury trial, the Court of Appeals for the Federal Circuit issued its opinion in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (holding that claim construction is a matter of law for the court to determine). The Parties agreed that the Markman decision significantly diminished the value of a summary jury trial. At the request of Ethicon, the Court agreed to conduct a hearing to aid in the interpretation of the claims at issue. That hearing was conducted during the week of August 7, 1995. The Court heard testimony for five days. Additionally, the Parties supplied the Court with proposed findings of fact and conclusions of law. Having had the benefit of this additional guidance, we remain convinced that our initial impression was correct. We determine that Claims 6 and 24 of the Fox Reissue Patent should be narrowly construed. Under this construction, we find no infringement on the part of U.S. Surgical's devices. Therefore, Ethicon's claim for infringement must be dismissed.

At the hearing held during the week of August 7, 1995, the Parties discussed the possible course of this case subsequent to the Courts decision concerning the meaning of Claims 6 and 24 of the Fox Reissue Patent. Counsel for the U.S. Surgical asserted that it was U.S. surgical's position that a finding that U.S. Surgical's devices did not infringe the Fox Reissue Patent would end this litigation, despite U.S. Surgical's Counterclaims. Since, the focus of the August hearing was the Fox Patent, we are not prepared to decide U.S. Surgical's counterclaims, at this point. However, in light of U.S. Surgical's express desire not to pursue its counterclaims, if we found no infringement of the Fox Patent, we will dismiss U.S. Surgical's Counterclaims, without prejudice.

At the very beginning of this lawsuit, even before the Preliminary Injunction Hearing, we summoned before the Court, top executives of the disputants. Ethicon was represented by Robert Croce, from Ethicon's parent company Johnson & Johnson. U.S. Surgical was represented by Bruce Lustman. The Court assured these gentlemen of its conviction that the United States District Courts should be freely available to resolve disputes. We acknowledged the sanctity of the patent system, and the right of a patent holder to assert, through the courts, its exclusive privilege to practice its invention. We confirmed the Court's willingness to dedicate its full resources to the resolution of this dispute. However, we suggested that these two companies, who have brought so many welcome advances in the surgical field, should explore the possibility of evolving a more efficient and dependable structure for resolving their disputes. The parties themselves are the true experts in this complex and sophisticated medical field. Litigation, though time proven and reliable from one point of view, can be a protracted and clumsy way of resolving disputes in a field where innovation and technology are moving forward at a staggering pace. The Parties discussed the creation of a mediation or arbitration system under the auspices of a mutually respected master or panel of masters. Such a system could provide swift and expert resolution of these litigants chronic patent disputes, with much less expenditure of resources. The Parties could structure such a dispute resolution mechanism to their liking, providing for a range of outcomes from strict enforcement of patents to cross licensing, with a variety of other options only they would be able to imagine so long as none violated the anti-trust laws. Both Ethicon and U.S. Surgical indicated an interest in exploring such a system and have reported to the Court on further discussions in that direction. However, they determined to proceed forward with this particular issue in the form of a traditional lawsuit, which of course is their absolute right. We hope that the seeds which were planted at the commencement of this suit may bear some fruit in the future.

MARKMAN V. WESTVIEW INSTRUMENTS INC.

In Markman, the Court of Appeals for the Federal Circuit stated that "the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim." Markman, 52 F.3d at 979. The Markman court proceeded to explain the method a district court should use:

"To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history." Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed.Cir.1991).... "Expert testimony, including evidence of how those skilled in the art would interpret the claims, may also be used." Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 631 (Fed.Cir.1987).

* * * * * *

Claims must be read in view of the specification, of which they are a part. The specification contains a written description of the invention that must enable one of ordinary skill in the art to make and use the invention. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims.... The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of the claims.

To construe claim language, the court should also consider the patent's prosecution history.... The court has broad power to look as a matter of law to the prosecution history of the patent in order to ascertain the true meaning of language used in the patent claims....

Markman, 52 F.3d at 979-80 (some citations omitted). At our August hearing, the Parties made in depth presentations, providing the Court with precisely the information suggested by the Federal Circuit.

DISCUSSION

This is a dispute concerning surgical linear cutter-staplers. These instruments are used by surgeons to simultaneously cut and staple tissue. In particular the Plaintiff, Ethicon, asserts that the linear cutter-staplers which are marketed by the Defendant, U.S. Surgical, infringe one of the Plaintiff's patents. The patent in question covers a lockout device. This device prevents a surgeon from inadvertently cutting tissue without having the cutter loaded with staples.

An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing.

Markman, 52 F.3d at 976.

In rendering our decision of this matter, we have considered the testimony of the witnesses, the documents admitted into evidence, the Plaintiff's proposed findings of fact and conclusions of law (doc. 160), and the Defendant's proposed findings of fact and conclusions of law (doc. 162), and joint proposed findings of fact and conclusions of law (doc. 42).

In weighing the testimony of the witnesses, we considered each witness' relationship to the Plaintiff or to the Defendant; his interest, if any, in the outcome of the trial; his manner of testifying; his opportunity to observe or acquire knowledge concerning facts about which he testified; and the extent to which his testimony was supported or contradicted by other credible evidence.

Under Federal Rule of Civil Procedure 52, we set forth our findings of fact and conclusions of law.

FINDINGS OF FACT

I. The Parties

1. Plaintiff Ethicon Endo-Surgery ("Ethicon") is a general partnership formed under the laws of the State of New Jersey with its principal place of business in Cincinnati, Ohio. Both the general partners are subsidiaries of Johnson & Johnson, Inc. Ethicon develops, manufactures and sells mechanical wound-management products.

2. Defendant United States Surgical Corporation ("U.S. Surgical") is a Delaware corporation with its principal place of business in Norwalk, Connecticut. U.S. Surgical is doing business in Ohio. U.S. Surgical develops, manufactures and sells mechanical wound-management products.

3. U.S. Surgical began selling mechanical wound-management products before Ethicon. U.S. Surgical first began selling surgical staplers in the late 1960's. The company has devoted significant resources to research and development and has regularly improved its products over the years. In addition U.S. Surgical has sponsored...