The opinion of the court was delivered by: DONETTA AMBROSE, District Judge
OPINION AND ORDER OF COURT
Plaintiff Biagio Ravo ("Ravo") is a surgeon residing in Italy.
He holds numerous patents. Plaintiff Enrico Nicolo ("Nicolo") is
also a surgeon and multiple patent holder. He currently works at
the McKeesport Hospital in Pennsylvania. Ravo and Nicolo combined
their efforts to develop a medical device which could be used in
colo-rectal surgery. On October 16, 1998, Ravo and Nicolo filed
an application for U.S. Patent No. 6,117,148 ("the "148 Patent").
The United States Patent and Trademark Office ("USPTO") issued
the '148 Patent on September 12, 2002 with twenty claims.
Defendant Ethicon Endo-Surgery, Inc. ("Ethicon") also holds
patents on many devices. In fact, on November 23, 1998, Ethicon
filed three patent applications which appear to use identical
drawings and specifications. Patent No. 6,083,241, issued on July 4, 2000, is entitled "Method of Use of a Circular
Stapler for Hemorrhoidal Procedure." Patent No. 6,102, 271,
issued on August 15, 2000, is entitled "Circular Stapler for
Hemorrhoidal Surgery." Finally, Patent No. 6,142,933, issued on
November 7, 2000, is entitled "Anascope for Hemorrhoidal
Ravo and Nicolo contend that Ethicon's PROXIMATE HCS
Hemorrhoidal Circular Stapler infringes the '148 Patent. More
particularly, they contend that Ethicon's device infringes claims
1, 2, 3, 5, 7, 11, 12, 13, 15 and 16 of the '148 Patent. I held a
Markman hearing on July 13, 2005, on the meaning of the disputed
terms used in these claims. The parties have submitted their
proposed claims construction.
On July 12, 2005, the Federal Circuit Court issued a decision
in Phillips v. AWH Corp., Civ No. 3-1269, 3-1286, 2005 WL
1620331 (Fed. Cir. July 12, 2005) which provides detailed
guidance to district courts engaged in claims construction. The
Phillips court reiterated the maxim that "the words of a claim
are generally given their ordinary and customary meaning."
Phillips, 2005 WL 1620331 at * 5, quoting, Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The
"ordinary and customary" meaning of a term or phrase used in a
claim, "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, i.e., as of the effective filing date of the patent
application." Id., citing, Innova Pure Water, Inc. v. Safari
Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir.
2004). That person of ordinary skill in the relevant art is
"deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the entire patent,
including the specification." Id.
Where the meaning of the claim term is not immediately apparent
to the court, the court can look for help to "`those sources
available to the public that show what a person of skill in the
art would have understood the disputed claim language to mean.'"
Id. at * 6, quoting, Innova, 381 F.3d at 1116. Those
"sources" include not only the words of the claims, but also the
specification. The specification, in particular, 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.'" Id., at * 7, quoting, Vitronics,
90 F.3d at 1582. Indeed, "`[t]he best source for understanding a
technical term is the specification from which it arose,
informed, as needed, by the prosecution history.'" Id.,
quoting, Multiform Dessicants, Inc. v. Medzam Ltd.,
133 F.3d 1473, 1478 (Fed. Cir. 1998). Indeed, the specification may reveal
that the patentee acted as his own lexicographer or that the
patentee intended to limit the scope of a claim. Id. at * 8
Ordinarily, a court's understanding of claim terms also will be
influenced by the patent's prosecution history. "Like the
specification, the prosecution history provides evidence of how
the PTO and the inventor understood the patent," Id. at * 9,
citing, Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206
(Fed. Cir. 1992), and "whether the inventor limited the invention
in the course of prosecution, making the claim scope narrower
than it would otherwise be." Id., citing, Vitronics,
90 F.3d at 1582-83. Here, the '148 Patent was issued in the first
instance. As such, there is no meaningful prosecution history.
Finally, the Phillips court confirms that a district court
can rely on "extrinsic evidence," which includes expert and
inventor testimony, dictionaries and learned treatises. Id. at
* 10 (citations omitted). For instance, a technical dictionary
may provide to a court a means "`to better understand the
underlying technology' and the way in which one of skill in the
art might use the claim terms." Id. at * 10, quoting,
Vitronics, 90 F.3d at 1584 n. 6. "Because dictionaries, and
especially technical dictionaries, endeavor to collect the
accepted meaning of terms used in various fields of science and
technology, those resources have been properly recognized as
among the many tools that can assist the court in determining the
meaning of particular technology to those of skill in the art of
the invention." Id., citing, Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). Similarly, "expert
evidence in the form of expert testimony can be useful to a court
for a variety of purposes, such as to provide background on the
technology at issue, to explain how an invention works, to ensure
that the court's understanding of the technical aspects of the
patent is consistent with that of a person of skill in the art,
or to establish that a particular term in the patent or the prior
art has a particular meaning in the pertinent field." Id.,
citing, Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1308-09 (Fed. Cir. 1999) and Key Pharms. v. Herco Labs.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998). "However, while
extrinsic evidence can shed useful light on the relevant art, we
have explained that it is less significant than the intrinsic
record in determining the legally operative meaning of claim
language." Id., quoting, C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir.
2004) (internal quotation marks omitted).
B. DR. MacALUSO AS AN EXPERT
As explained in the Phillips decision, expert testimony can
be useful in understanding prior art, technical aspects of the
invention and how a person of ordinary skill in the relevant art
would interpret various terms. Phillips, 2005 WL 1620331 at *
10. Ethicon has proffered the report and testimony of Dr. Anthony
Macaluso, Jr. as an expert on the '148 Patent. Ravo and Nicolo
argue that Dr. Macaluso is not qualified to serve as an expert in
this case. Because the matter was not briefed in advance of the
Markman hearing and because Dr. Macaluso had traveled to testify
at the hearing, I permitted him to testify and reserved the issue
of the admissibility of his testimony.
After careful consideration, I agree with Ravo and Nicolo and
sustain their objection. Dr. Macaluso appears to be an eminently
qualified colo-rectal surgeon. Were the issue before me one
concerning the technique, method or procedure for performing
colo-rectal surgery, then Dr. Macaluso's testimony would be
helpful. Yet the issue before me concerns the construction of a
medical device. Dr. Macaluso does not have an engineering
background. He does not hold any patents for medical devices. Nor
does it appear that he has ever been involved in the development
of a medical device. His expert report was devoid of any
discussion of prior art or how the '148 Patent did or did not
alter the prior art. Further, while Dr. Macaluso's report did
provide definitions for certain claim terms, it appears that he simply pulled those definitions from dictionaries. He offers
no context for his definitions. Certainly he has not explained
how terms have particular meanings in the pertinent field. In
short, I do not think that Dr. Macaluso is qualified in the
relevant field medical devices.
In the alternative, even if he is qualified in the relevant
field, his testimony is unhelpful as he does not discuss prior
art and he does not provide anything more than dictionary
definitions for the claim terms. As such, Ravo's and Nicolo's
objections to the admission of Dr. Macaluso's expert report and
testimony is ...