W.L. Gore & Assocs., Inc. v. Medtronic, Inc., Civil Action No. 2:10cv441.

Citation834 F.Supp.2d 465,2011 Markman 6256982
Decision Date14 December 2011
Docket NumberCivil Action No. 2:10cv441.
CourtUnited States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
PartiesW.L. GORE & ASSOCIATES, INC., and Gore Enterprise Holdings, Inc., Plaintiffs, v. MEDTRONIC, INC., Medtronic USA, Inc., and Medtronic Vascular, Inc., Defendants.

OPINION TEXT STARTS HERE

Ahmed Jamal Davis, Fish & Richardson PC, Washington, DC, Juanita Rose Brooks, Fish & Richardson P.C., San Diego, CA, Robert M. Oakes, Susan Morrison Coletti, Timothy Devlin, Fish & Richardson, Wilmington, DE, for Plaintiffs.

Dabney Jefferson Carr, IV, Robert Armistead Angle, Troutman Sanders LLP, Richmond, VA, Daniel William McDonald, Karen Diane McDaniel, Rachel Clark Hughey, Thomas Joseph Leach, Merchant & Gould PC, Minneapolis, MN, James Joseph Elacqua, Skadden Arps Slate Meagher & Flom LLP, Palo Alto, CA, Peter Attila Gergely, Ryan James Fletcher, Merchant & Gould PC, Denver, CO, for Defendants.

OPINION AND ORDER

MARK S. DAVIS, District Judge.

On October 25, 2011, the Court conducted a Markman hearing for the purpose of construing the eight disputed claims in the patent at issue in this case. After careful consideration of the briefs submitted by the parties, the arguments advanced at the Markman hearing, and the record before the Court, the Court issues this Opinion and Order detailing the claim constructions adopted by the Court.

I. FACTUAL AND PROCEDURAL BACKGROUND

At issue in this case is Plaintiff's patent titled Intraluminal Stent Graft,” patent number 5,810,870 (“'870”). Plaintiffs, W.L. Gore & Associates, Inc. and Gore Enterprise Holdings, Inc. (collectively Gore) are manufacturing companies specializing in fluoropolymer products and are best known for their GORE–TEX fabrics. Defendants, Medtronic, Inc., Medtronic USA, Inc., and Medtronic Vascular, Inc. (collectively Medtronic) are manufacturing companies specializing in the medical products and technologies industry.

On September 3, 2010, Gore filed a complaint against Medtronic alleging patent infringement. Gore alleges that Medtronic's Talent Thoracic Stent Graft and its Talent Abdominal Stent Graft infringe claims 12, 16, and 19 of the ' 870 patent, which are directed to methods of making a tubular intraluminal stent graft. Pursuant to a scheduling order, the parties have timely filed the claim construction briefs at issue here. After carefully reviewing such filings, the court conducted a Markman hearing at which the court heard argument regarding the eight disputed claim terms.

II. CLAIM CONSTRUCTION PROCEDURE

In Markman, the United States Supreme Court succinctly explained the basis for, and importance of, claim construction:

The Constitution empowers Congress [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Art. I, § 8, cl. 8. Congress first exercised this authority in 1790, when it provided for the issuance of “letters patent,” Act of Apr. 10, 1790, ch. 7, § 1, 1 Stat. 109, which, like their modern counterparts, granted inventors “the right to exclude others from making, using, offering for sale, selling, or importing the patented invention,” in exchange for full disclosure of an invention, H. Schwartz, Patent Law and Practice 1, 33 (2d ed. 1995). It has long been understood that a patent must describe the exact scope of an invention and its manufacture to “secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them.” McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891). Under the modern American system, these objectives are served by two distinct elements of a patent document. First, it contains a specification describing the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the same.” 35 U.S.C. § 112; see also 3 E. Lipscomb, Walker on Patents § 10:1, pp. 183–184 (3d ed. 1985) (Lipscomb) (listing the requirements for a specification). Second, a patent includes one or more “claims,” which “particularly poin[t] out and distinctly clai[m] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112. “A claim covers and secures a process, a machine, a manufacture, a composition of matter, or a design, but never the function or result of either, nor the scientific explanation of their operation.” 6 Lipscomb § 21.17, at 315–316. The claim “define[s] the scope of a patent grant,” 3 id. § 11:1, at 280, and functions to forbid not only exact copies of an invention, but products that go to “the heart of an invention but avoids the literal language of the claim by making a noncritical change,” Schwartz, supra, at 82....

Characteristically, patent lawsuits charge what is known as infringement, Schwartz, supra, at 75, and rest on allegations that the defendant “without authority ma[de], use[d] or [sold the] patented invention, within the United States during the term of the patent therefor....” 35 U.S.C. § 271(a). Victory in an infringement suit requires a finding that the patent claim “covers the alleged infringer's product or process,” which in turn necessitates a determination of “what the words in the claim mean.” Schwartz, supra, at 80; see also 3 Lipscomb § 11:2, at 288–290.

Markman v. Westview Instruments, 517 U.S. 370, 373–74, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

It is well-settled that a determination of infringement requires a two-step analysis: “First, the court determines the scope and meaning of the patent claims asserted” and second, “the properly construed claims are compared to the allegedly infringing device.” Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd,517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)). In conducting this analysis, it must be remembered that [i]t is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’ Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996) ( [W]e look to the words of the claims themselves ... to define the scope of the patented invention.”).

A. Claim Construction Principles

The Federal Circuit has repeatedly stated that “the words of a claim ‘are generally given their ordinary and customary meaning,’ and that “the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312–13 (quoting Vitronics, 90 F.3d at 1582). This provides “an objective baseline from which to begin claim interpretation” and is based upon “the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art.” Id. at 1313. As noted by the Federal Circuit:

It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to describe the invention—the inventor's lexicography—must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the court starts the decisionmaking process by reviewing the same resources as would that person, viz., the patent specification and the prosecution history.

Id. (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed.Cir.1998)). However, [i]n some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Acumed LLC v. Stryker Corp., 483 F.3d 800, 805 (Fed.Cir.2007) (quoting Phillips, 415 F.3d at 1314). Finally, when construing claim terms and phrases, the Court cannot add or subtract words from the claims or appeal to “abstract policy considerations” to broaden or narrow their scope. See SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1339–40 (Fed.Cir.2005); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed.Cir.1995) ([I]t is well settled that no matter how great the temptations of fairness or policy making, courts do not redraft claims.”).

B. Types of Evidence to Be Considered

In determining the meaning of disputed terms or phrases, the Court should first examine the claim and the specification. The Federal Circuit has stated that “the claims themselves provide substantial guidance as to the meaning of particular claim terms,” and [b]ecause claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.” Phillips, 415 F.3d at 1314.

The claims, however, “do not stand alone” and ‘must be read in view of the specification, of which they are a part.’ Id. at 1315 (quoting Markman, 52 F.3d at 979);see also Vitronics, 90 F.3d at 1582 (stating that “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”); Multiform Desiccants, 133 F.3d at 1478 (stating that [t]he best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history...

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5 cases
  • W.L. Gore & Assocs., Inc. v. Medtronic, Inc.
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    • 18 Junio 2012
    ...(1996), and issued an Opinion and Order on December 16, 2011, construing the eight disputed claim terms. See W.L. Gore & Assocs. v. Medtronic, Inc., 834 F.Supp.2d 465 (E.D.Va.2011). Subsequently, on February 3, 2012, this Court issued an Opinion and Order denying Gore's Motion to Dismiss Me......
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    ...claim terms and phrases, the Court cannot add or subtract words from the claims." W.L. Gore & Associates, Inc. v. Medtronic, Inc., 834 F. Supp. 2d 465, 469 (E.D. Va. 2011) aff'd, 530 F. App'x 939 (Fed. Cir. 2013). Neither the prosecution history, nor the language of the claim terms,18 requi......
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    ...the constructions entered by the United States District Court for the Eastern District of Virginia in W.L. Gore & Assocs., Inc. v. Medtronic, Inc., 834 F. Supp. 2d 465 (E.D. Va. 2011), aff'd, 530 F. App'x 939 (Fed. Cir. 2013), a case in which Gore asserted related U.S. Patent No. 5,810,870 ......
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