Young v. Lumenis, Inc., 06-1455.

Citation492 F.3d 1336
Decision Date27 June 2007
Docket NumberNo. 06-1455.,06-1455.
PartiesWilliam P. YOUNG, Plaintiff-Appellant, v. LUMENIS, INC., Defendant-Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Richard W. Hoffmann, Warn Hoffmann Miller & LaLone PC, of Auburn Hills, Michigan, argued for plaintiff-appellant. With him on the brief was Jason H. Foster, Kremblas Foster Phillips & Pollick, of Reynoldsburg, OH.

David A. Loewenstein, Pearl Cohen Zedek Latzer LLP, of New York, NY, argued for defendant-appellee. With him on the brief were Clyde A. Shuman and Nathaniel B. Buchek.

Before LOURIE, PROST, and MOORE, Circuit Judges.

LOURIE, Circuit Judge.

William P. Young appeals from the judgment of the United States District Court for the Southern District of Ohio holding that claims 1-5 of U.S. Patent 6,502,579 (the "'579 patent") are invalid as indefinite under 35 U.S.C. § 112, ¶ 2 and the summary judgment that the '579 patent is unenforceable by reason of inequitable conduct. Young v. Lumenis, Inc., No. 2:03-CV-655 (S.D.Ohio Nov. 1, 2005) (Indefiniteness Order); Young v. Lumenis, Inc., No. 2:03-CV-655 (S.D.Ohio Mar. 28, 2006) (Inequitable Conduct Order.) Because we conclude that the term "near" is not indefinite, we reverse the judgment of invalidity. Because we conclude that no inequitable conduct occurred during the reexamination of the '579 patent, we reverse the court's grant of summary judgment of patent unenforceability.

BACKGROUND

Young is the inventor of the '579 patent, directed to a surgical method for removing a claw from a domesticated cat. A declaw procedure is known as an onychectomy, and the '579 patent is entitled "Laser Onychectomy by Resection of the Redundant Epithelium of the Ungual Crest." Figure 1 of the '579 patent, as represented below, illustrates the feline appendage:

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

The feline appendage 10 includes a second phalanx 12 and a third phalanx 14 (also called the claw) connected by the extensor tendon 16, the flexor tendon 18, the collateral ligaments 20 and 22, the epithelium 24, and the pad 26. '579 patent col.4 ll.1-6. The synovium 28 is positioned in the joint between the second and third phalanges ("PII-PIII") and also connects the phalanges together. Id. at col.4 ll.6-7. The ungual crest 15 is the tissue that creates the hard claw.

The claimed procedure begins by making a circumferential incision in the epidermis of the ungual crest and applying traction to the epidermis in a cranial direction so that the epidermis is pushed back and exposes the extensor tendon and synovium. A laser then incises the extensor tendon and synovium, followed by ablation of the collateral ligaments, thereby permitting further disarticulation of the PII-PIII joint. Finally, the flexor tendon and tissue of the pad are incised by the laser, permitting removal of the third phalanx. The declaw site is then covered with the preserved redundant epithelium. According to the '579 patent, by preserving the redundant epithelium and using it to cover the declaw site, the need for surgical closure is eliminated and thus the incidence of infection is reduced.

Figure 2 of the '579 shows in more detail the incisions made in the redundant epidermis of the ungual crest during the first step of the claimed procedure:

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

According to the '579 patent, the surgeon makes a first circumferential incision in the redundant epidermis of the ungual crest along line A-A. '579 patent col.4 ll.37-39. That incision "is made near the most distal edge of the epidermis and extends circumferentially around the claw to sever the epidermis from the ungual crest 15." Id. at 40-42. After the redundant epidermis is severed from the ungual crest, that tissue is still attached to the cat's claw, and the surgeon applies traction and pushes it back cranially in the direction of T. The traction in the direction of T causes the epidermis to "release from its distal attachment and permits a second circumferential incision of the redundant epidermis approximately 3 millimeters from the first incision along line B-B." Id. at 46-49. The second incision permits deeper subcutaneous tissue to be moved cranially from the ungual crest. After the redundant epidermis is separated from the ungual crest and is pushed back, the onychectomy proceeds with a laser severing the synovium between the second and third phalanges. Once the onychectomy procedure is complete and the claw is removed, the preserved redundant epidermis is pushed over the declaw site to cover and protect the opening formed by the removal of the claw.

Young filed the application for the '579 patent on January 17, 2001. The patent issued on January 7, 2003 without any amendments to the claims. Representative claim 1 reads as follows:

A feline onychectomy surgical method using a laser cutting instrument, the method comprising:

(a) forming a first circumferential incision in the epidermis near the edge of the ungual crest of the claw, thereby severing at least some of the epidermis from the ungual crest;

(b) applying cranial traction to the epidermis severed from the ungual crest to displace the distal edge of the epithelium cranially;

(c) incising the extensor tendon near its insertion on the ungual crest;

(d) incising the synovium of the PII-PIII joint;

(e) applying traction to the claw in the palmar direction for disarticulating the PII-PIII joint;

(f) ablating the medial and lateral collateral ligaments;

(g) incising the digital flexor tendon; and (h) incising the subcutaneous tissues of the pad of the second phalanx.

'579 patent col.5 ll.51-62-col.6 ll.1-7 (emphasis added).

On July 23, 2003, Young filed suit in the district court against Lumenis, Inc. alleging infringement of the '579 patent and seeking preliminary and permanent injunctions, damages, and attorney fees. Lumenis is a manufacturer, seller, and distributor of surgical laser instruments that were alleged to have been used to perform Young's patented surgical procedure. Young asserted that Lumenis had been teaching veterinarians to perform the patented procedure in connection with its sales efforts. Lumenis responded by denying infringement and asserting a counterclaim of patent invalidity.

In June 2004, Lumenis requested reexamination of the '579 patent by the United States Patent & Trademark Office ("PTO"). On September 16, 2005, the PTO issued a first Office Action on the reexamination, rejecting independent claim 1 and dependent claim 2 under 35 U.S.C. § 103(a) as being unpatentable over two references submitted by Lumenis: Luxar Accuvet, "Clinical Atlas, 1998" in view of Fossum, "Small Animal Surgery, 1997" (the "Fossum Reference"). The examiner determined that the Fossum Reference disclosed steps (a) and (b) in claim 1, viz., the circumferential incision in the redundant epidermis and the retraction of the epidermis from the ungual crest.

The Fossum Reference is a chapter in a veterinary textbook, edited by Professor Theresa Fossum, and it teaches an onychectomy procedure. Fossum teaches one to: "Circumferentially incise the hairless, cuticle-like skin away from the claw near the articulation between the second and third phalanx (Fig. 13-37B)." Figure 13-37B is reproduced below:

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

The description accompanying Figure 13-37B states that "Dissection onychetomy disarticulates the third phalanx by transecting the tendons, ligaments, and other soft tissue attachments." The examiner stated that "figure 13-37B of Fossum illustrates circumferential incision in the epidermis near the edge of the ungual crest (see dotted line). . . . While Fossum does not specifically state that cranial traction is applied to the epidermis or that the tissue is retracted from the ungual crest between the second and third phalanges, the figure appears to illustrate such displacement of the epidermis away from the joint between the second and third phalanges."

On October 26, 2005, Young submitted a response to the first Office Action ("October 2005 Response"). That response argued that the prior art references do not teach a first circumferential incision near the edge of the ungual crest. With regard to the Fossum Reference, the October 2005 Response argues:

The articulation between the second and third phalanx is the PII-PIII joint through which conventional declaw incisions proceed in a single cutting path. This is supported by the illustration referenced (Fig.13-37, B), which is shown on page 147 of the Fossum reference. This illustration has a broken line labeled "incision" that extends between the PII and PIII phalanges. The line is not near the edge of the ungual crest, but goes through the articulation between the PII and PIII phalanges (emphasis in original).

After some further prosecution, the PTO issued a Reexamination Certificate, confirming the patentability of all claims.

While the reexamination of the '579 patent was proceeding at the PTO, the district court continued to adjudicate the suit between Young and Lumenis. On March 1, 2005, the district court conducted a Markman hearing. Professor Hedlund, author of the textbook that includes the Fossum Reference, testified as to onychectomy taught in that reference. Hedlund was specifically asked about Figure 13-37B. In her direct examination, she testified:

Q: Okay. Could you turn to figure on page 147, 13-37, looks like B? Do you have that in front of you?

A: Yes.

Q: Can you explain why the scalpel is shown at the joint in that figure?

A: Because this is demonstrating as you begin to cut though the tendons that attach to P3.

Q: So is this figure after the first circumferential incision has already been made?

A: Yes, it is.

Q: And has the skin already been pulled back at that point?

A: Correct.

On cross-examination, Hedlund was asked to clarify her explanation of Figure 13-37B and she testified:

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