Parins v. Slater
| Decision Date | 16 February 2001 |
| Docket Number | 190,Patent Interference 104 |
| Parties | DAVID J. PARINS and RICHARD K. POPPE Junior Party, [1] v. CHARLES R. SLATER Senior Party. [2] |
| Court | Patent Trial and Appeal Board |
This Opinion is Not binding Precedent of the Board.
FINAL HEARING: December 19, 2000
Counsel for Junior Party Parins: Thomas J. Nikolai Haugen & Nikolai
Counsel for Senior Party Slater: Albert J. Santorelli et al. Finnegan, Henderson, Farabow, Garrett & Dunner
Before CALVERT, PATE and HANLON, Administrative Patent Judges.
FINAL DECISION UNDER 37 CFR § 1.658(A)
PATE Administrative Patent Judge.
This is a final decision in Interference No. 104, 190. The junior party inventors are David J. Parins and Richard K Poppe[3] and their involved U.S. Patent No. 5, 540, 685 is assigned to Everest Medical Corporation. The filing date of the junior party involved patent was May 5, 1995, and the junior party has been accorded benefit of the filing date of application Serial No. 08/369, 379, filed January 6, 1995. The senior party inventor is Charles R. Slater. Senior party Slater is involved on his application Serial No. 08/806, 386, filed February 27, 1997, and assigned to Boston Scientific Corporation. The Slater applica- tion has been accorded the benefit of application Serial No. 08/354, 992, filed December 13, 1994. Slater is the senior party by 23 days. Both parties were represented by counsel in an oral hearing held December 19, 2000.
The subject matter of the interference is a bipolar electrosurgical scissors. As stated in the preamble of the count, such scissors are used to simultaneously cut tissue and coagulate severed blood vessels during surgery on a living animal. The count reads as follows:
Count 2
A bipolar electrosurgical instrument for cutting and coagulating tissue comprising:
The junior party has raised the following issues for final decision:
The senior party has raised the following issues in the senior party brief at final hearing:
As the junior party in an interference between co-pending applications, junior party Parins bears the burden of proving priority by a preponderance of the evidence. See Cooper v. Goldfarb, 154 F.3d 1321, 1326, 47 U.S.P.Q.2d 1896, 1900 (Fed. Cir. 1998)(quoting Scott v. Finney, 34 F.3d 1058, 1061, 32 U.S.P.Q.2d 1115, 1117 (Fed. Cir. 1994)).
The parties have raised the issue of the proper interpretation of the interference count. The proper interpretation of a count is a question of law. Credle v. Bond, 25 F.3d 1566 1571, 30 U.S.P.Q.2d 1911, 1915 (Fed. Cir. 1994)(citing Davis v. Loesch, 998 F.2d 963, 967, 27 U.S.P.Q.2d 1440, 1444 (Fed. Cir. 1993)). The established standard of count interpretation is that interference counts are to be given the broadest interpretation which they will reasonably support. Mead v. McKirnan, 585 F.2d 504, 507, 199 U.S.P.Q. 513, 515-516 (CCPA 1978). Terms in the count are to be given their ordinary and accustomed meaning. See Johnson Worldwide Assoc. Inc. v. Zebco Corp., 175 F.3d 985, 990, 50 U.S.P.Q.2d 1607, 1610 (Fed. Cir. 1999)(quoting Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1249, 48 U.S.P.Q.2d 1117, 1121 (Fed. Cir. 1998)). Resort to a specification from which a claim on which the count is based or resort to extrinsic evidence is only appropriate or necessary when an ambiguity exists in the count. If an ambiguity is found, resort may be had to the specification of the patent from which the claims originate to resolve the ambiguity. See In re Spina, 975 F.2d 854, 856, 24 U.S.P.Q.2d 1142, 1144 (Fed. Cir. 1992). Determination of the existence of an ambiguity requires consideration of both the language of the count and the reasonableness of the arguments indicating the count has different meanings. Kroekel v. Shah, 558 F.2d 29, 31-32, 194 U.S.P.Q. 544, 546 (CCPA 1977). The mere fact that the parties ascribe different meanings to a count or that the count is readable on more than one embodiment does not render the count ambiguous. See id. at 32, 194 U.S.P.Q. at 547.
Turning to the specific count at issue, the senior party directs our attention to subparagraph (a) of the count which reads as follows:
(a) first and second metal blades each having a cutting edge and shearing surface, said first metal blade supporting an insulative layer on a surface other than the cutting edge and shearing surface thereof and an electrically conductive electrode member on the insulative layer.
The senior party argues that the count expression "said first metal blade supporting an insulative layer . . . and an electrically conductive electrode member on the insulative layer," requires that the first metal blade be the layer that the other layers are affixed on, with the first metal blade extending back to the means for pivotally joining and carrying the other layers. The junior party argues that the above-referred to language merely requires that the first metal blade supports the other two layers by providing reinforcement or strengthening of the other two layers, as an additional metal ply applied to the laminate that is the first blade. This additional layer provides support in flexure, according to the junior party.
We have considered the language of the count and the respective arguments of the parties and we are of the view that both ascribed meanings are reasonable. Accordingly, we have reached the conclusion that the count is ambiguous, [4] and it is appropriate to construe the interference count in view of the specification from which the claim the count is based on originated and, if necessary, extrinsic evidence.[5]
When construing the meaning of a claim, we may consider both intrinsic and extrinsic evidence. Intrinsic evidence consists of the claim itself, the specification, and any prosecution history. Extrinsic evidence includes expert testimony, inventor testimony, dictionaries, treatises, and prior art not cited in the prosecution history. We turn to extrinsic evidence only when the intrinsic evidence is insufficient to establish the clear meaning of the asserted claim. Zodiac Pool Care Inc. v. Hoffinger Indus. Inc., 206 F.3d 1408, 1414, 54 U.S.P.Q.2d 1141, 1145 (Fed. Cir. 2000). See generally Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-84, 39 U.S.P.Q.2d 1573, 1576-78 (Fed. Cir. 1996).
It is noted that the claims as originally filed in the application Serial No. 08/435, 505, which matured into the junior party involved patent, did not include the contested "first metal blade supporting . . ." language. See claim 1 at SX-9 p30.[6] However, as pointed out by the senior party, the specification includes similar language in the description of the prior art. The prior art Rydell Patent No 5, 352, 222 is described as having "conductive metal blade supports to which sharpened metal cutting blades are affixed using a nonconductive epoxy bonding and spacing layer." SX-9 p14. The Rydell invention contrasts to the involved subject matter in that the supporting structure that extends back to the pivot and beyond and to which all layers of the scissors cutting and cauterizing structure are affixed is on the outside of the laminated member. This is opposite the disclosed subject matter of the involved junior party patent wherein the structure that extends back to the pivot for moving the laminated blade is on the inside surface--the surface that contacts the other pivoting or stationary blade for shearing tissue therebetween. Nonetheless, the description of the prior art that refers to the portion of the blade that extends back past the pivot point to the means for imparting movement as the portion of the blade which supports the other laminated layers is some evidence that the senior party's interpretation of the claim, and the count that corresponds exactly thereto, is the construction in agreement with the disclosure. Additionally, when the Parins patent discusses the prior art Rydell patent No. 5, 356, 408 similar language, i.e., "honed ceramic cutting and shearing surfaces on the opposed interior surfaces of metal...
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