having sufficient rigidity to allow the
sutures to be pushed through the tissues to be repaired."). The
BioStinger, however, is designed, not to be pushed through tissue
like the Arrow, but rather to be inserted into a precut channel
created by a guide needle. Although the BiosStinger, despite its
flexibility, has sufficient cohesion that its insertion down the
precut channel may slightly widen that channel, this is a far cry
from being designed, like the Arrow, with the rigidity necessary
to be pushed directly through the semi-hard cartilage of a
meniscus without any precutting.
Moreover, in his successful effort to obtain the '976
patent, Dr. Schreiber submitted an affidavit to the Patent Office
stating that the patent should be granted notwithstanding the
prior patenting of a suture known as the "Kronenthal device,"
because "[t]he Kronenthal et al. suture is not a rigid type of
suture as I have disclosed and claimed in my above noted patent
application, but is a flexible type of filament which cannot by
itself be pushed into a body tissue without the use of a needle."
Pl. Ex. 10 at 0046 (emphasis added). Such "prosecution history"
clearly shows that the use of the term "rigid" in the Arrow
patent was intended to distinguish that device from other
devices, such as the Kronenthal device and (now) the BioStinger,
that were designed to be inserted in needle-cut channels. See
generally, York Products, Inc. v. Central Tractor Farm & Family
Center, 99 F.3d 1568, 1575 (Fed. Cir. 1996).*fn3
Notwithstanding the foregoing, plaintiffs argue that
the BioStinger is not sufficiently non-rigid to be distinguished
from the Arrow because, whatever the differences in the
contemplated methods of insertion,*fn4 the BioStinger is at least
capable of being pushed through meniscus tissue and the Arrow is
at least capable of being inserted through a pre-cut channel.
The latter, however, is irrelevant, since even devices that
plaintiffs concede are not "rigid" can be inserted through precut
channels — the prior Kronenthal device that Dr. Schreiber
sought to distinguish being a prime example, see Def. Ex. 0, col.
5.14-18. As for the former argument, while plaintiffs
effectively concede that, apart from this litigation, the
BioStinger has never been inserted into meniscal tissue without
the use of the channel-cutting needle with which it is sold, see,
e.g., Pl. Opp. to Def. 56.1 Stmt. on Rigidity ¶¶ 236, 247,
plaintiffs nevertheless offer a videotape, specially prepared for
this case, that shows, they allege, that the BioStinger is
capable of being pushed into uncut meniscal tissue.
The insertion in the videotape, however, is made possible
only by use of a special "insertion rod" that plaintiffs
concede was designed specifically for the videotaped
demonstration. Pl. Opp. to Def. 56.1 Stmt. on Rigidity ¶ 255,
262; Pl. Ex. 4 (videotaped demonstration). It thus runs afoul of
the well-established rule that a device does not infringe merely
because it can be altered to make it infringe, as "the question
is not what a device might have been made to do, but what it was
intended to do and did do." High Tech Medical Instrumentation,
Inc. v. New Image Industries, Inc., 49 F.3d 1551, 1555 (Fed. Cir.
1995) (internal quotation marks omitted); see also Stryker Corp.
v. Davol, Inc., 10 F. Supp.2d 841 (W.D. Mich. 1998) (finding noninfringing
surgical device that could perform as required by
patent holder's claims only if attached to a probe that was not
In sum, the plain language of the patent, the ordinary
observation of the respective devices, the undisputed differences
in their designs, the prosecution history of the patented device,
and the subsequent use of the respective devices demonstrate
beyond any genuine factual dispute that the BioStinger is not
"rigid" in the way specified in the '976 Patent. Accordingly,
defendant's motion for summary judgment is hereby granted, and
the complaint is dismissed. Clerk to enter judgment.