The opinion of the court was delivered by: Richard J. Holwell, Usdj
MEMORANDUM OPINION AND ORDER
This is an action for patent infringement brought by Plaintiff Laboratoires Perouse, S.A.S. ("Perouse") against Defendant Plaintiff W.L. Gore & Associates, Inc. ("Gore"). Perouse alleges that Gore has infringed U.S. Patent No. 6,019,787 ("the '787 patent") by making, using, selling, and/or offering for sale in the United States products including Gore's TAG(r) thoracic endoprosthesis devices and EXCLUDER(r) bifurcated endoprosthesis devices. (Compl. ¶¶ 9--10.) Gore has filed a counterclaim for a declaratory judgment that (1) the '787 patent is invalid under the patent laws, and (2) that Gore has not infringed any claim of the '787 patent. (Answer ¶¶ 22--45.)
The parties identified claim language requiring construction, completed simultaneous briefing on claim construction, and submitted their opening and reply briefs to the Court on August 15, 2007. On September 21, 2007, Perouse filed a "Motion to Exclude Defendant/Counterclaim Plaintiff's Newly Proposed Claim Constructions" ("Motion to Exclude"), in which Perouse requested that this Court exclude and refuse to consider claim constructions allegedly presented for the first time in connection with Gore's reply brief on claim construction. (Perouse Mot. to Exclude Br. 1.) On October 23 and 29, 2007, the Court held Markman hearings at which the parties argued their proposed constructions of the disputed claim terms in the '787 patent.
The '787 patent is entitled "Fitting tool for use of an expansible endoprosthesis for a human or animal tubular organ." The specification of the '787 patent describes a self-expanding stent*fn2 (also known as an "auto-expansible endoprosthesis") and a tool for implanting a self-expanding stent in a desired location within a blood vessel in the body. The claims of the '787 patent cover only the "tool" invention. Claim 1, the only independent claim in the '787 patent, recites "[a] tool for fitting a self-expanding stent." The tool of claim 1 includes three elements: (1) a "guide tube," which allows the tool to follow a guide wire through a blood vessel to an appropriate location in the body; (2) a "housing part," which is located at the distal end of the guide tube and houses the self-expanding stent prior to deployment at the treatment site; and (3) a "housing part opener," which "opens" the housing part once positioned, allowing the stent to expand radially and hold open the walls of the blood vessel.
The specification of the '787 patent describes two embodiments of the invention. The two embodiments differ only in the "means for opening the . . . housing part" used by each. The first embodiment includes a set of wires attached to an actuation handle.
When the handle is pulled, the wires cut the housing part (shown in the patent drawings as a cylindrical structure) and allow the self-expanding stent to expand. In the second embodiment, the housing part is slit longitudinally. The opposing edges of the slit are each lined with "gussets," which are drawn as small tubular structures oriented parallel to the slit. (See '787 patent Fig. 8.) A cord, connected at its proximal end to an actuation handle, is threaded through these gussets, holding the edges of the housing part together. When the handle is pulled, the cord is withdrawn from the gussets, allowing the stent to expand.
The '787 patent issued on February 1, 2000 from U.S. Patent Application No. 08/946,657 ("the '657 application"), a divisional application of U.S. Patent Application No. 08/146,137 ("the '137 application"), which included eight claims.*fn3 During prosecution of the '137 application, the patent examiner determined that the claims were drawn to two separate inventions, "an expansible endoprosthesis" (claims 1--5) and "a tool for fitting an expansible endoprosthesis" (claims 6--8), and issued a restriction requirement, which required the applicants to elect one of these inventions for further examination.*fn4 (See Gallagher Opening Decl. Ex. B at 354--57.) The applicants elected the "endoprosthesis" claims and the examiner withdrew the "tool" claims from the application. (See Gallagher Opening Decl. Ex. B at 354--57.) The applicants refiled the "tool" claims on October 7, 1997 as the '657 application. (See Gallagher Opening Decl. Ex. B at 2--20.)
I. Perouse's Motion to Exclude
In its Motion to Exclude, Perouse contends that the Court should refuse to consider several of the proposed claim constructions in Gore's reply brief because these constructions are either worded differently from the corresponding constructions proposed in Gore's opening brief or are constructions of claim terms that Gore did not construe at all in its opening brief.*fn5 (Perouse Mot. to Exclude Br. 4--5.)
Perouse complains that it is prejudiced by Gore's "newly proposed" constructions because Perouse has been denied the opportunity to respond. (Perouse Mot. to Exclude Br. 2, 10.) Furthermore, because Gore has proposed two different constructions for certain claim terms, Perouse alleges it was forced to "chas[e] a moving target" as it prepared for expert depositions and the Markman hearing. (Perouse Mot. to Exclude Br. 2.) Finally, Perouse alleges that Gore's conduct forced Perouse to waste time and money preparing its Motion to Exclude. (Perouse Mot. to Exclude Br. 2.)*fn6 However, Perouse did not request leave to file a supplemental response to Gore's reply brief, nor did Perouse request postponement of the Markman hearing.
The Court finds that, with respect to most of the constructions challenged by Perouse, there is no meaningful difference in scope between Gore's original and "newly proposed" constructions. With respect to these constructions, the Court believes Perouse has suffered no prejudice because it had a full opportunity to respond to the substance of each "newly proposed" construction, if not the precise language. In other cases, these new constructions conform to Perouse's proposed constructions, thereby eliminating unnecessary disputes. (Gore Opp. to Mot. to Exclude Br. 8, Ex. 1.) In a few cases, however, Gore's "newly proposed" constructions are in fact new, or include "clarifications" that assert arguments not made in Gore's opening brief and to which Perouse therefore did not have an opportunity to respond in writing. The Court has not relied upon any of Gore's constructions from this last category, and therefore need not consider whether Perouse has been prejudiced by Gore's late advancement of its constructions and arguments.
The claims of a patent define the limits of the patentee's statutory right to exclude. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). The meaning and scope of the claim language is a question of law for the court's decision. See Markman v. Westview Instruments, 52 F.3d 967, 976--79 (Fed. Cir. 1995).
Because patents are addressed to practitioners in the field of the patented invention, a court should usually construe claim language consistent with its "ordinary and customary meaning" to a person of ordinary skill in the relevant art on the effective filing date of the patent application.*fn7 Phillips, 415 F.3d at 1312--13. "Such a 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." Id. at 1313 (quoting Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)).
To determine the "ordinary and customary meaning" of a claim term, a court should first consult the intrinsic evidence, which consists of the claims, the specification, and the prosecution history. See, e.g., Primos, Inc. v. Hunter's Specialties, Inc. 451 F.3d 841, 847--48 (Fed. Cir. 2006) ("In ascertaining the ordinary and customary meaning of a claim term, a court's primary focus should be on the intrinsic evidence of record, viz., the claims, the specification, and, if in evidence, the prosecution history."); Kinik Co. v. Int'l Trade Comm'n, 362 F.3d 1359, 1365 (Fed. Cir. 2004) ("The words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history."). Prior art cited to the examiner during prosecution is considered part of the prosecution history. See Phillips, 415 F.3d at 1317.
"A fundamental rule of claim construction is that terms . . . are construed with the meaning with which they are presented in the patent document. Thus claims must be construed so as to be consistent with the specification . . . ." Merck & Co., Inc. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1370 (Fed. Cir. 2003) (citations omitted). Therefore, the patent specification has been called the most important guide to claim construction. See, e.g., Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 ("[The specification] is always highly relevant to the claim construction analysis. Usually, it is dispositive."); Phillips, 415 F.3d at 1315--16 ("The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history." (quoting Multiform Desiccants, 133 F.3d at 1478)).
The specification may show that a patentee has provided its own definitions for claim terms or has narrowed the scope of the claims through disclaimer. See Phillips, 415 F.3d at 1316. In such cases, the claim is construed according to the patentee's expressed intent even if the resulting construction departs from the ordinary meaning of the claim language. See, e.g., id.; Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1361 (Fed. Cir. 2007) ("When a patentee defines a claim term, the patentee's definition governs, even if it is contrary to the conventional meaning of the term.") A patentee may redefine a term either explicitly or implicitly. See, e.g., Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003) ("The applicant may also act as his own lexicographer and use the specification to implicitly or explicitly supply new meanings for terms"); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) ("[T]he specification may define claim terms 'by implication' such that the meaning may be 'found in or ascertained by a reading of the patent documents.'").
Though claims should be interpreted in light of the specification, it is not generally appropriate to import limitations from the specification into the claims. See, e.g., N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1348 (Fed. Cir. 2005) ("[U]nless required by the specification, limitations that do not otherwise appear in the claims should not be imported into the claims."); Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 412 F.3d 1284, 1289 (Fed. Cir. 2005) ("We have repeatedly made clear that limitations cannot be imported from the specification into the claims."); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001) (describing the reading of a limitation from the written description into the claims as "one of the cardinal sins of patent law"). For example, the scope of a claim is usually not limited to the particular embodiment or embodiments described in the specification. See, e.g., Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364--65 (Fed. Cir. 2003) ("[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.") In order to determine whether the limitations of an embodiment should be applied to a claim, a court must determine whether a person of skill in the art would consider the embodiments to be merely exemplary, or whether they are intended to define the scope of the claim. See Phillips, 415 F.3d at 1323; Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290 (Fed. Cir. 2006) ("[I]mport[ing] limitations from the specification into the claims . . . should be avoided unless the patentee clearly 'intends for the claims and the embodiments in the specification to be strictly coextensive.'" (quoting Phillips, 415 F.3d at 1323)).
The prosecution history, also part of the intrinsic evidence, may "inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317. However, the prosecution history "often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id..
"Extrinsic evidence is that evidence which is external to the patent and file history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and articles." Vitrionics, 90 F.3d at 1584. While a district court may consult extrinsic evidence as part of the claim construction analysis, such evidence is considered less reliable than the intrinsic evidence. See, e.g., Phillips, 415 F.3d at 1317--19 ("[T]he court should keep in mind the flaws inherent in each type of [extrinsic] evidence and assess that evidence accordingly.") While the testimony of expert witnesses may be useful in some cases, a court should disregard expert testimony that is merely conclusory or that is inconsistent with the intrinsic evidence. See id. at 1318.
A court may use general purpose dictionaries as an aid to claim construction, so long as the dictionary definition relied upon does not contradict the definition indicated by the intrinsic evidence. See id. at 1322--23 (stating that courts "may . . . rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents."). The Federal Circuit has specifically noted that dictionaries may be useful in the construction of ordinary, non-technical terms, which often involves "little more than the application of the widely accepted meaning of commonly understood words."
Id. at 1314; see also Agfa Corp. v. Creo Prods. Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006) (affirming district court construction of "stack" based on dictionary definition); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1306 (Fed. Cir. 2006) (using dictionary definition in construction of claim term "geometry"). However, excessive reliance on dictionary definitions is improper because the "ordinary meaning" of a claim term is not the abstract dictionary definition, but the "meaning to the ordinary artisan after reading the entire patent." Phillips, 415 F.3d at 1321. The correct approach is to "focus at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down." Id.
Despite the guidelines outlined above, "there is no magic formula or catechism for conducting claim construction," and a court is not "barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence." Id. at 1324. Instead "what matters is for the court to attach the appropriate weight . . . to those sources in light of the statutes and policies that inform patent law." Id.
B. Construction of Disputed Claim Language in the '787 Patent
Claim 1 is the only independent claim in the '787 patent. All other claims in the patent are dependent claims, that is, they incorporate by reference all the elements of an earlier claim in the patent. See 35 U.S.C. § 112 ¶ 4. Claim 1 reads as follows:
A tool for fitting a self-expanding stent comprising: a guide tube having a distal end; a housing part for housing a self-expanding stent, said housing part provided at said distal end of said guide tube; and a housing part opener for opening said housing part independent of the self-expanding stent.
a. "A Tool for Fitting a Self-Expanding Stent"
The parties' first dispute concerns whether "A tool for fitting a self-expanding stent," is a substantive limitation on claim 1 that requires construction, and, if so, how it should be construed.
The language at issue appears in the preamble to claim 1 of the '787 patent.*fn8
"The preamble is an introductory phrase that may summarize the invention, its relation to the prior art, or its intended use or properties," but may in some cases constitute a limitation. See 3-8 Chisum on Patents § 8.06 (2007). No "litmus test" exists for determining whether a preamble acts as a substantive limitation on a claim. In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). Instead, "a claim preamble has the import that the claim as a whole suggests for it." Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). As the Federal Circuit has explained,
If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is "necessary to give life, meaning, and vitality" to the claim, then the claim preamble should be construed as if in the balance of the claim . . . . If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction . . . .
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (C.C.P.A. 1951)) (internal citations omitted).
Therefore, preamble language does not limit the scope of a claim when it merely states a "purpose or intended use of the invention." In re Paulsen, 30 F.3d at 1479. However, "when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects." Bell Commc'ns Research, 55 F.3d at 620.
Perouse argues that this entire phrase should be disregarded because it "is a claim preamble which merely states an intended use of the invention and does not limit the claim." (Perouse Opening Br. 16.) Gore concedes that "for fitting a self-expanding stent" is a non-limiting statement of intended use, but maintains that "tool" is a substantive limitation requiring construction. (Gore Reply Br. 3.) The Court agrees that "for fitting a self-expanding stent" describes an intended use of the claimed apparatus, and will not construe this portion of the preamble. See Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) ("[P]reambles describing the use of an invention generally do not limit the claims because the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.").
With respect to "tool," however, the Court finds that this is a substantive limitation requiring construction. The body of claim 1 merely recites three elements. Standing alone, the body does not "fully . . . set forth the complete invention" of the '787 patent because the invention is not a set of three unassembled constituents, but a tool that includes these three elements and that can be used to implant a self-expanding stent within the body. (See '787 patent col.2 ll.46--47 ("Another aspect of the invention is a tool for fitting an auto-expansible endoprosthesis . . . .").) Pitney Bowes, 182 F.3d at 1305. In the context of claim 1, "tool" is clearly necessary for "life, meaning, and vitality," and will be construed as a substantive limitation. Id.
Gore argues that "tool" should be construed to mean "a single instrument having the three constituents recited in the body of the claim (a guide tube, a housing part, and a housing part opener), none of which may be a part of the object to be fitted." (Gore Proposed Order.) Perouse contends that, if the Court should find that the term "tool" requires construction, the proper construction is "instrument." (Perouse Opening Br. 17.)
With respect to Gore's proposed limitation, "having the three constituents recited in the body of the claim (a guide tube, a housing part, and a housing part opener)," Perouse argues that this construction is redundant, unnecessary, and confusing. (Perouse Reply Br. 10.) The Court agrees. The body of claim 1 already includes the "guide tube," "housing part," and "housing part opener" limitations. It would add nothing to the construction of the claim to read these limitations into the preamble word "tool" as well. Even if it were not redundant, Gore's proposed limitation would be rejected as improper claim construction. None of these three constituents are part of the ordinary meaning of "tool," and their inclusion would improperly import limitations from the specification into the claims. See Phillips, 415 F.3d at 1323--24.
Gore's proposed construction includes a further limitation-that "none of [the guide tube, housing part, and housing part opener] may be a part of the object to be fitted." In other words, Gore's proposed construction of "tool" requires that the "tool" and the "object to be fitted," i.e., the stent, are physically distinct, separate structures. (See Gore Opening Br. 21--25.)
Gore argues that the stated purpose of the tool, "for fitting a self-expanding stent," implies that the tool and the stent must be physically separate structures. (Gore Opening Br. 21.) Gore further notes that the drawings in the '787 patent depict the endoprosthesis and tool as separate objects, and that the specification describes an endoprosthesis that is "inserted" into the tool. (Gore Opening Br. 22.) However, while it is true that the specification and drawings describe a tool that is physically separate from the object to be fitted, it is improper claim construction to import limitations from the specification to the claims unless there is a clear disclaimer of claim scope. See, e.g., Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) ("This court declines to import limitations to the claims from the specification absent a "manifest" or "explicit" exclusion."); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) ("Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using 'words or expressions of manifest exclusion or restriction.'"). There is no disclaimer, clear or otherwise, of "tools" that incorporate the object to be fitted, and therefore no justification for this Court to deviate from the ordinary meaning of the term "tool."
Gore also argues that its proposed limitation is appropriate in light of the prosecution history of the '787 patent, in which a restriction requirement was issued against the '137 application (the parent application to the '787 patent) and the applicants responded by electing to pursue the "tool" and "stent" claims in separate applications. Gore apparently contends that the restriction requirement and the applicant's election in compliance with this requirement somehow invoked a limitation of physical separateness between the tool and stent upon the patent claims that issued following this election. Gore has cited no case law, and the Court is aware of none, that suggests that a restriction requirement limits the construction of claims in a later filed divisional application in the manner suggested by Gore. (See Gore Opening Br. 24--25; Gore Reply Br. 6.) Most courts that have considered similar issues have noted that a restriction requirement is primarily an administrative tool. See, e.g., Amersham Pharmacia Biotech, Inc. v. Perkin-Elmer Corp., 2000 WL 34204509, at *16 (N.D. Cal. Feb. 28, 2000) (noting that restrictions are made "[f]or the purpose of case management and to control filing and search fees"); Michaels of Or. Co. v. Clean Gun, LLC, 2002 WL 31496414, at *8 (D. Or. July 9, 2002) (noting that restriction requirements "(1) facilitate administration in the PTO; and (2) allow the PTO to obtain additional filing and maintenance fee revenue that would be lost if an applicant were always permitted to obtain a patent covering any number of distinct inventions.") Therefore, courts have questioned whether it is appropriate to use a restriction requirement to substantively limit claims. See, e.g., Michaels of Or., 2002 WL 31496414, at *8 ("Restriction requirements do not constitute a substantive claim construction doctrine."); Amersham, 2000 WL 34204509, at *15--16 ("[T]he applicants' compliance with an administrative requirement (i.e., the restriction requirement) . . . in the parent application, is entitled to little weight as against the applicants' claims as amended, and the Examiner's allowance of those claims, in the issued '648 patent."); but see R2 Med. Sys., Inc. v. Katecho, Inc., 931 F. Supp. 1397, 1437--40 (N.D. Ill. 1996) (noting that "the court has not identified any precedent using prosecution history of the election of a species in order to restrict or otherwise interpret the scope of a patent claim" but proceeding to consider restriction requirement and applicant's response as part of the prosecution history to aid in discerning meaning of claim).
Even assuming that a restriction requirement may be considered as part of the claim construction analysis, this Court rejects Gore's argument. The examiner's restriction requirement simply requires an applicant to segregate its "tool" and "stent" claims into separate patent applications. 35 U.S.C. § 121. While the '137 applicants' election in response to the restriction requirement might arguably be viewed as an admission that the elected "stent" invention is not an element of the non-elected "tool" invention, it did not impose an additional limitation on any claims so as to exclude products that include a "tool" and a "stent" in combination or physical contiguity.
"Tool" is a common, familiar term, and neither party contends that it has any specialized meaning in the relevant art. Construction of ordinary, non-technical terms can involve "little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314. There is no indication that the word "tool," in the context of the intrinsic evidence, includes the limitation of physical separateness proposed by Gore. The specification describes how the tool operates and the elements that it includes, not those that it excludes. Likewise, there is no indication that the "tool" and "stent" must be distinct, unconnected, or physically separate. Gore does not dispute that its proposed "none of which may be part of the object to be fitted" limitation is not part of the ordinary meaning of "tool." In fact, Gore's own expert stated that "most generally, a tool is a surgical instrument or implement for accomplishing a task." (Matsumura Decl. ¶ 26.)
Furthermore, because claim 1 includes the transitional word "comprising," there is a presumption that this claim is drafted in "open-ended" form, meaning that its scope includes the listed elements (i.e., a "guide tube," "housing part," and "housing part opener") but does not exclude additional elements. See, e.g., Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1327--28 (Fed. Cir. 1999) ("The transitional term 'comprising' . . . is inclusive or open-ended and does not exclude additional, unrecited elements or method steps."); Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) ("In the parlance of patent law, the transition 'comprising' creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements."). This presumption is overcome only by "evidence of a clear intent to limit the claims." Scanner Techs. Corp. v. ICOS Vision Sys. Corp., N.V., 365 F.3d 1299, 1305--06 (Fed. Cir. 2004). Gore's proposed construction is inconsistent with this presumption, as it would define claim 1 (and all claims dependent therefrom) so as to specifically exclude a self-expanding stent element. Gore does not provide evidence of the "clear intent" necessary to overcome this presumption.
Perouse's proposed construction of "tool" to mean "instrument" reflects the meaning of this term as used in the '787 patent. This construction is also supported by dictionary definitions of "tool." For example, the dictionary definitions of "tool" provided by Gore include "an instrument . . . used or worked by hand" and "something (as an instrument or apparatus) used in performing an operation." (Matsumura Opening Decl. Ex. E.) The invention described in the '787 patent is a physical instrument used to perform an operation-fitting an endoprosthesis within a vessel in the body. (See, e.g., '787 patent Abstract, col.1 ll.46--47, col.3 ll.33--43.)
The Court construes "a tool for fitting a self-expanding stent" to mean "an instrument."
b. "A Guide Tube Having a Distal End"
It is not clear whether the parties dispute the construction of the term "guide tube." Perouse, in its opening brief, construed "guide tube" to mean "a hollow cylinder through which a guide can pass." (Perouse Opening Br. 23--24.) Gore did not construe "guide tube" in its opening brief but stated that the term "may not be in dispute." (Gore Opening Br. 26 n.12.) In its reply brief, Gore alleged that the parties were in agreement that "guide tube" was to be construed as "a tubular structure with a central lumen." (Gore Reply Br. 27.) Similarly, Perouse asserted in its reply brief that Gore agreed with Perouse's proposed construction. (Perouse Reply Br. 13--14.) At the Markman hearing, Gore again stated that the parties did not dispute the construction of "guide tube." (See Oct. 23, 2007 Tr. 78:10--24.) Perouse, however, asserted that there was a disagreement concerning whether the claim language required a lumen positioned exactly in the center of the tube or whether it permitted a guide tube with an off-center lumen.
The Court finds that the lumen need not be positioned exactly in the geometric center of the guide tube. There is no indication in the specification that the precise positioning of the lumen is important, and neither expert contends that a person of ordinary skill would interpret "guide tube" to include this limitation. Gore did not brief this issue. At the Markman hearing, Gore's only argument in support of the limitation was that the specification and drawings consistently depict a tube with a lumen that is centered within the tube. This argument merely proposes ...