The opinion of the court was delivered by: Gerard E. Lynch, District Judge
Plaintiff VDP Patent, LLC, ("VDP") owns a patented method to remove cerumen -- earwax -- from the ear canal, U.S. Patent No. 5,944,711 (the "'711 patent").*fn1 VDP accuses defendants Welch Allyn Holdings, Inc., d/b/a Welch Allyn, Inc., ("Welch Allyn") a manufacturer of medical equipment, and Harold Ellis Drugs and Surgicals, Inc., a distributor of Welch Allyn's products, of selling an ear-washing system that infringes the '711 patent.
In a previous round of briefing, defendants moved for partial summary judgment on two grounds: first, that their device does not literally infringe the '711 patent, and second, that their device does not infringe plaintiff's patent under the doctrine of equivalents. By opinion and order dated June 28, 2007, this Court accepted the first argument and rejected the second. See VDP Patent, LLC v. Welch Allyn Holdings, Inc., No. 06 Civ. 5821, 2007 WL 1856516, at *1 (S.D.N.Y. June 28, 2007). The Court construed the term "otoscope" as used in the '711 patent's single claim, holding that an otoscope is not simply an access device but a viewing device as well, and that, in the context of the patent, the term denotes an instrument incorporating a light and lens, used for visual examination of the inner ear. Id. at *3-9. On that basis, the Court granted defendants partial summary judgment on the grounds that their device, which has neither a light nor a lens, does not literally infringe plaintiff's patent. However, the Court rejected defendants' motion for summary judgment that their device does not infringe plaintiff's patent under the doctrine of equivalents, noting that the issue "presents a question of fact that should not be determined until, at the earliest, after the parties have had an opportunity for further discovery." Id. at *13.
In its 2007 opinion, the Court construed only one element of the claim -- otoscope -- noting that "the parties may require a further opportunity to argue in detail the construction of other aspects of the claim." Id. at *3. Although the parties stipulate to the meaning of some elements of the '711 patent's claim (see Joint Claim Construction Statement, dated February 19, 2008), they disagree on the meaning of others, and now cross-move for the Court to resolve those disputes. Defendants also move for a finding that the patent is invalid as a matter of law because one particular element -- "cylindrical shape in cross[-]section" -- is indefinite.
The various elements at issue are properly construed as set forth below. Because defendants have failed to demonstrate by clear and convincing evidence that "cylindrical shape in cross[-]section" is indefinite, their motion for summary judgment of invalidity must be denied.
The background of this case is set forth in more detail in the Court's previous opinion and order. See 2007 WL 1856516, at *1-2. The final '711 patent contains only one claim:
A method of irrigating a pat[i]ent's ear using an otoscope of a type having an operating mode of flushing cerumen therefrom with body temperature water, said method comprising the steps of [providing an otoscope,]*fn2 configurating a tip of said otoscope in a cylindrical shape in cross[-]section and of a selected outside diameter, selecting a tip outside diameter that is slightly oversized with respect to a diameter of an anatomical opening of said patient's ear canal, inserting said tip into said ear canal, establishing at a site of engagement of said different diameters of said tip and said ear canal opening a friction fit obviating fluid leakage externally of said site, providing a source of body temperature water and a return sump therefore, and continuously flowing said body temperature water from said source into and removing water and cerumen from said ear of said patient for return to said sump through said tip until the removal of cerumen is completed, whereby a maintained said fluid leakage seal during said continuous flowing of said body temperature water obviates a splattering of said patient. ('711 Patent, col. 4.)
Interpretation of a patent claim, which defines a patentee's rights, is a matter of law reserved entirely for the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). "Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement." U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
In construing a patent claim, courts must first examine the intrinsic evidence of record: the claim, specification, and prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The Court's task is to construe the meaning of a disputed term as it is used in the claim. Words in a claim are "generally given their ordinary and customary meaning," although an inventor "may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Id. (citations omitted). Therefore, intrinsic evidence is the "most significant source of the legally operative meaning of disputed claim language." Id. at 1582. In interpreting the terms of a claim, the first place to look is the language of the claim itself, as "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips v. AWH Corp., 415 F.3d 1307, 1314 (Fed. Cir. 2005) (en banc) (citation and internal quotation marks omitted). "[T]he context of the surrounding words of the claim" can be "highly instructive," and "must be considered in determining the ordinary and customary meaning of those terms." Id. Furthermore, since "claim terms are normally used consistently throughout the patent," the usage of a term in one part of a claim may "illuminate the meaning of the same term" in other parts of the claim. Id. (citations omitted).
As claims are "part of a fully integrated written instrument [citation omitted] consisting principally of a specification that concludes with the claims," id. at 1315 (citation and internal quotation marks omitted), the specification is "always highly relevant" and "[u]sually . . . dispositive," Vitronics, 90 F.3d at 1582. The specification is "the single best guide to the meaning of a disputed term." Id. The Patent Act requires that the specification describe the claimed invention in "full, clear, concise, and exact terms," 35 U.S.C. § 112 ¶ 1, thereby emphasizing the importance of the specification in claim construction, Phillips, 415 F.3d at 1316. "[T]he inventor's intention, as expressed in the specification, is . . . dispositive." Id. (citation omitted).
The prosecution history "provides evidence of how the [Patent and Trademark Office, ("PTO")] and the inventor understood the patent." Phillips, 415 F.3d at 1317 (citation omitted). However, "because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id.
A court may also consider, in its "sound discretion," evidence extrinsic to the patent, including expert and inventor testimony, dictionaries, and treatises. Phillips, 415 F.3d at 1319. However, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms," id. at 1318, and therefore "less significant than the intrinsic record in determining the legally operative meaning of the claim language." C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (citation and internal quotation marks omitted).
Dictionaries, especially technical dictionaries, are "properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention." Phillips, 415 F.3d at 1318. Although expert testimony "can be useful," "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court." Id. at 1318. Moreover, a court should discount testimony "that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history." Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998).
3. Ordinary and Customary Meaning
The terms of a claim "are generally given their ordinary and customary meaning," which 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 (citations and internal quotation marks omitted). This inquiry provides an "objective baseline from which to begin claim interpretation." Id. at 1313 (citation omitted). Although in some cases this knowledge may be specialized, in other cases the ordinary and customary meaning of a term "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." Id. at 1314 (citation omitted). As the Court has already noted, "[t]he question is not the inventor's private or subjective intention, but the meaning that would be given his words by a person skilled in the art in the context of the patent." VDP Patent, 2007 WL 1856516, at *3.
B. Invalidity for Indefiniteness
Once issued by the PTO, "[a] patent shall be presumed valid." 35 U.S.C. § 282. However, the presumption is not conclusive, and a party accused of infringing a patent may assert as a defense that the patent or claim at issue is invalid. Id. § 282(3). "The burden is on the party asserting invalidity to prove it with facts supported by clear and convincing evidence." Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 446 (Fed. Cir. 1986) (citations omitted); see also 35 U.S.C. § 282 ¶ 1.
A patent or claim may be invalid if the patent owner failed to provide a proper specification, 35 U.S.C. § 282(3), one that "particularly points out and distinctly claims the subject matter the applicant regards as his invention," id. § 112 ¶ 2. This "requirement of claim definiteness . . . assures that claims in a patent are sufficiently precise to permit a potential competitor to determine whether or not he is infringing." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003) (citation and internal quotation marks omitted). Since a claim "delineate[s] the patentee's right to exclude, . . . the scope of the claim [must] be sufficiently definite to inform the public of the bounds of the protected invention. . . .
Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). "[T]he primary purpose of the requirement [of claim definiteness] is 'to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their [respective] rights.'" Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996), quoting Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938).
The standard of indefiniteness is "somewhat high," and "a claim is indefinite under § 112 ¶ 2 if it is insolubly ambiguous, and no narrowing construction can properly be adopted." Amgen, 314 F.3d at 1342. On the other hand, the "statutory requirement of particularity and distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise." United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).
Claims are not indefinite "merely because they present a difficult task of claim construction." Halliburton, 514 F.3d at 1249. "Proof of indefiniteness requires . . . an exacting standard," but is nonetheless met "where an accused infringer shows by clear and convincing evidence that a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as her knowledge of the relevant art area." Id. 1249-50; Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998); Marley Mouldings v. Mikron Indus., 417 F.3d 1356, 1359 (Fed. Cir. 2005). "When claims are amenable to more than one construction, they should when reasonably possible be interpreted so as to preserve their validity." Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1557 (Fed. Cir. 1996). Courts normally abide by a "principal of preserving patent validity whenever possible." Affymetrix, Inc. v. PE Corp., 306 F. Supp. 2d 363, 378 (S.D.N.Y. 2004). By finding claims "indefinite only after reasonable efforts at claim construction prove futile," courts "accord respect to the statutory presumption of patent validity" and "protect the inventive contributions of patentees, even when the drafting of their patents has been less than ideal." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
"[D]etermination whether a claim is sufficiently definite is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000) (citation and internal quotation marks omitted); Halliburton, 514 F.3d at 1249; Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1344 (Fed. Cir. 2002); Exxon, 265 F.3d at 1376. Therefore, "[i]n the face of an allegation of indefiniteness, general principles of claim construction apply." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005) (citation omitted). "[O]nce the patent issues, the claims and written description must be viewed objectively," Solomon, 216 F.3d at 1380, and a court will "typically limit its inquiry to the way one of skill in the art would interpret the claims in view of the written description portion of the specification," id. at 1378. As in the context of normal claim construction, "a court may consider or reject certain extrinsic evidence in resolving disputes en route to pronouncing the meaning of claim language." Exxon, 265 F.3d at 1376. To the extent that extrinsic evidence gives meaning to the understanding of a person of ordinary skill in the art, some situations may require a court to consider extrinsic evidence before invalidating a claim as indefinite. For example, in Verve, LLC v. Crane Cams, Inc., the Federal Circuit held that a district court invalidating a patent as indefinite "erred in law" by "requiring that the intrinsic evidence . . . [be] the sole source of meaning of words that are used in a technologic context" and noted that "resolution of any ambiguity arising from the claims and specification may be aided by extrinsic evidence of usage and meaning of a term in the context of the invention." 311 F.3d 1116, 1119 (Fed. Cir. 2002). However, when construing a claim as definite or indefinite, just as in construing a claim in general, "the court is not crediting certain evidence over other evidence or making factual evidentiary findings. Rather, the court is looking to the extrinsic evidence to assist in its construction of the written document." Exxon, 265 F.3d at 1376 (citations and internal quotation marks omitted). Therefore, "the issue of indefiniteness" normally does not turn on "underlying factual dispute[s]" that would preclude resolution "as a matter of law on summary judgment." Id.
II. Legal Standards Applied
A. Person of Ordinary Skill ...