Medical Instrumentation and Diagnostics v. Elekta

• Citation: 344 F.3d 1205
• Decision Date: 22 September 2003
• Docket Number: No. 03-1032.,03-1032.
• Parties: MEDICAL INSTRUMENTATION AND DIAGNOSTICS CORPORATION, Plaintiff-Appellee, v. ELEKTA AB, Elekta Instrument AB, Elekta Instruments, Inc., and Elekta Oncology Systems, Inc., Defendants-Appellants.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

344 F.3d 1205

MEDICAL INSTRUMENTATION AND DIAGNOSTICS CORPORATION, Plaintiff-Appellee, v. ELEKTA AB, Elekta Instrument AB, Elekta Instruments, Inc., and Elekta Oncology Systems, Inc., Defendants-Appellants.

No. 03-1032.

United States Court of Appeals, Federal Circuit.

Decided September 22, 2003.

Rehearing and Rehearing En Banc Denied October 30, 2003.

Paul Adams, Peacock, Myers & Adams, P.C., of Albuquerque, New Mexico, argued for plaintiff-appellee. With him on the brief was Rod D. Baker and Stephen A. Slusher. Of counsel was Andrea L. Mays.

Theresa M. Gillis, Jones, Day, Reavis & Pogue, of New York, New York, argued for defendants-appellants. Of counsel on the brief were John F. Sweeney and Harry C. Marcus, Morgan & Finnegan LLP, of New York, New York.

Before NEWMAN, CLEVENGER, and SCHALL, Circuit Judges.

Opinion for the court filed by Circuit Judge CLEVENGER. Dissenting opinion filed by Circuit Judge PAULINE NEWMAN.

CLEVENGER, Circuit Judge.

Elekta AB, Elekta Instrument AB, Elekta Instruments, Inc., and Elekta Oncology Systems, Inc. (collectively "Elekta") appeal the judgment of the United States District Court for the Southern District of California, which denied Elekta's motion for judgment as a matter of law ("JMOL") that its products do not infringe United States Patents No. 5,099,846 ("'846 patent") and No. 5,398,684 ("'684 patent"). Med. Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271 (S.D.Cal. Sept. 6, 2002) (Order denying JMOL). Elekta also appeals the district court's grant of partial summary judgment in favor of Medical Instrumentation and Diagnostics Corp. ("MIDCO") that the '846 and '684 patents are not invalid. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271 (S.D.Cal. Nov. 5, 2001) (Order granting partial summary judgment of noninvalidity). Because the district court erred in its construction of the "converting means" limitation and noninfringement is conceded under the correct claim construction, we reverse the district court's denial of JMOL of noninfringement. We also reverse the grant of summary judgment of noninvalidity because Elekta brought forth sufficient evidence to raise a genuine issue of material fact as to the validity of the '846 and '685 patents. We thus remand the case to the district court on that issue, and for judgment in favor of Elekta on the infringement issue.

I

MIDCO is the holder of the '846 and '684 patents, both of which relate to a system for planning surgical treatment using a presentation of images from multiple scanning sources. The '684 patent is a continuation of the application that matured into the '846 patent, and it is subject to a terminal disclaimer. The disclosure of both patents is particularly directed toward stereotactic surgery, which is a type of brain surgery that uses a three-dimensional coordinate system to locate the site on which the surgeon is to operate. Dorland's Medical Dictionary 1699 (29th ed.2000).

Performing surgery on the human brain is extremely complex, and pre-surgical planning is especially important because any surgical exploration of a patient's brain is very risky. Therefore, it is very advantageous if, prior to surgery, a surgeon can map out exactly where the problem areas are by using techniques to "visualize" the patient's brain. Stereotactic surgical techniques allow the surgeon to "explore" the brain structures that cannot be seen from the surface by determining their location using "a knowledge of their coordinates in space relative to known anatomical and topographical landmarks." '684 patent, col. 1, ll. 31-33. In order to avoid opening a patient's skull any more than is necessary, stereotactic surgery is essentially done "blind," using electrodes attached to certain target areas as landmarks. Id., col. 1, ll. 36-40. Although the location of the probes in the brain structures is very critical, it is difficult for the surgeon to conceptualize that location because the probe is out of sight and the position of the probe involves many complex angular variables. Id., col. 1, ll. 40-60.

The invention disclosed in the '846 and '684 patents attempts to enhance the surgeon's ability to conceptualize the structures inside the brain by combining stereotactic surgical techniques with various imaging technologies, including computerized axial tomography ("CT") and nuclear magnetic resonance ("NMR") scanning. The specification explains the goal as follows: "The present invention is primarily concerned with the use of computer-graphics techniques and scanning techniques for generating various composite images to better aid the stereotactic surgeon in localizing structures, such as subcortical structures, lesions, or abnormalities." Id., col. 2, ll. 31-36. The use of imaging techniques increases the resolution, which allows for direct rather than inferential identification of brain structures and therefore allows for more accurate performance of stereotactic surgery.

Both the '846 and the '684 patent describe a "method and apparatus for generating a video presentation of images from a variety of separate scanner imaging sources." '846 patent, col. 6, ll. 24-26; '684 patent, col. 6, ll. 25-27. The apparatus of the invention comprises a number of different structures that work together to create this presentation of images. The apparatus can acquire image data from different scanner sources, and then convert that image data into a selected digital format. To perform the conversion into the selected format, the apparatus takes the images from the different scanner sources and converts them into a format in which the images have the same number of pixels in the same arrangement (a one-to-one pixel arrangement), which allows them to be readily compared to one another. The apparatus also stores the images and is capable of selectively recalling and displaying at least two of them on a single screen. The images on the screen may be independently manipulated, and preferably also shaped and sized so that they conform to one another, allowing for optimum comparison. Furthermore, the apparatus of the invention can also perform various comparison techniques on the images and use the images to determine stereotactic coordinates.

The preferred use of the apparatus of the invention is in stereotactic surgery, such as tumor biopsies, thalamotomies, and treatment of other neurological disorders. '684 patent, col. 9, ll. 62-68. Not only may it be used to assist the surgeon in accurate planning of such surgical procedures beforehand, but the preferred embodiment may also be used by the surgeon during a surgical procedure to view and compare images. An infrared beam touch screen interface allows the surgeon to communicate directly with the system in a sterile manner while the surgeon is performing a procedure. Id., col. 10, ll. 10-17.

In 1997, MIDCO filed a patent infringement suit against Elekta in the United States District Court for the Southern District of California, alleging that Elekta's GammaKnife, GammaPlan, ScopePlan, and SurgiPlan products infringed the '846 and '684 patents. Elekta asserted affirmative defenses and counterclaims of noninfringement and invalidity. The only independent claims asserted by MIDCO in this litigation were claim 1 of the '684 patent and claim 9 of the '846 patent, both of which are apparatus claims. Claim 1 of the '684 patent reads as follows:

An apparatus for generating a presentation of images from a variety of imaging sources, the apparatus comprising:

means for acquiring a plurality of images from a plurality of separate imaging sources;

means for converting said plurality of images into a selected format;

means for storing said plurality of images;

means for selectively recalling and displaying at least two images of said plurality of images upon a single display device;

means for manipulating at least one of said at least two images independently of the other image;

means for comparing at least two images;

means for determining stereotactic coordinates and performing volumetric determinations from said at least two images; and

means for determining distances and areas from said at least two images.

'684 patent, col. 19, ll. 14-32. Claim 9 of the '846 patent is very similar, but it specifically claims only the use of brain images. '846 patent, col. 19, l. 55 col. 20, l. 11.

After holding a Markman hearing, the district court issued an order construing the claims and a later order granting in part and denying in part Elekta's motion for clarification of the claim construction. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271 (S.D.Cal. Apr. 4, 2001) (First claim construction order); Med. Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271 (S.D.Cal. July 13, 2001) (Partial clarification of claim construction). The district court construed the claims by analyzing claim 1 of the '684 patent, concluding that the analysis for the '846 patent would be essentially the same. The parties do not dispute this treatment.

The district court construed the function of the "means for converting said plurality of images into a selected format" to be converting multiple acquired images into a particular selected digital format. The court then found that the structures corresponding to this function were the VME bus based framegrabber video display board, the computer video processor ("CVP"), and "[s]oftware routines for converting digital-to-digital known to those of skill in the art." The framegrabber and the CVP both perform only the conversion of analog data into the selected digital format, known as analog-to-digital conversion. The accused devices do not perform analog-to-digital conversion, but rather only perform digital-to-digital conversion using software. The patentee concedes that the accused devices do not have a framegrabber or anything that could be considered an equivalent. The key dispute between the parties is...