United States District Court, W.D. Pennsylvania
November 17, 2005.
BIAGIO RAVO and ENRICO NICOLO, Plaintiffs,
ETHICON ENDO-SURGERY, INC., a Johnson & Johnson Company, Defendant.
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.
A. APPLICABLE LAW
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 sustained. I will not consider his report and/or
testimony in construing the claims.
C. THE DISPUTED CLAIM TERMS
1. THE PREAMBLE
Claims 1, 11 and 15 all contain the same preamble "[a]
surgical intraluminal resection*fn1 and reconstruction
device." Ethicon contends that the preamble is limiting in
nature. More specifically, Ethicon contends that the preamble
means that any infringing device must also be a surgical
intraluminal resection and reconstruction device. Ravo and Nicolo
disagree. They urge that the preamble in Claims 1, 11 and 15
simply states the intended use or purpose of the claimed
invention. Ravo and Nicolo urge that "preamble language that
discusses benefits or features of the claimed invention, but does
not clearly rely on those benefits or features as patentably
significant, does not limit the claim scope." Docket No. 22, p.
5, citing, Catalina Mktg. Int'l. v. Coolsavings.com, Inc.,
289 F.3d 801, 809 (Fed. Cir. 2002). "`Whether to treat a preamble as a limitation is a
determination resolved only on review of the entire . . .
patent to gain an understanding of what the inventors actually
invented and intended to encompass by the claim.'" Poly-America,
L.P. v. GSE Lining Technology, Inc., 383 F.3d 1303, 1309 (Fed.
Cir. 2004), quoting, Corning Glass Works v. Sumito Elec.
U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). "`No litmus
test defines when a preamble limits claim scope.'"
Poly-America, 383 F.3d at 1309, quoting, Catalina Mktg.,
289 F.3d at 808. "On the one hand, a preamble is a claim
limitation if it recites essential structure or steps, or if it
is `necessary to give life, meaning, and vitality to the claim.'"
Id., quoting, Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed Cir. 1999). "On the other hand, a
preamble is not limiting `where a patentee defines a structurally
complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.'" Id., at
1310, quoting, Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
1997). "`Further, when reciting additional structure or steps
underscored as important by the specification, the preamble may
operate as a claim limitation.'" Id., quoting, Catalina
Mktg., 289 F.3d at 808.
After careful consideration of the entire '148 Patent, I find
that the preamble is not limiting. Instead, the phrase "[a]
surgical intraluminal resection and reconstruction device" simply
states the intended use or purpose of the invention that the
device be used to intussuscept, anastomose and resect lumen. I
base this conclusion on the fact that Ravo and Nicolo define a
structurally complete invention in the claim body. Claims 1, 11
and 15 each reference a housing; a means for attaching the lumen to the device; a means for attaching the
intussuscepted portion of the lumen together; and a means for
resecting the lumen. The preamble does not add any additional
structure or steps. Indeed, the "deletion of the preamble phrase
does not affect the structure or steps of the claimed invention."
Catalina Mktg., 289 F.3d at 809, citing, IMS Tech., Inc. v.
Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000).
2. "Luminal attachment and intussusception means"
Independent claims 1 and 11 include the following language:
a luminal attachment and intussusception means
coupled to said housing for attachment and inversion
of a portion of the lumen to be removed;
(emphasis added). The parties agree, as do I, that "a luminal
attachment and intussusception means" is a means-plus-function
limitation recognized by 35 U.S.C. § 112, ¶ 6. Construing
means-plus-function claims requires two steps: (1) identifying
the claimed function(s); and (2) identifying the corresponding
structure identified in the written description which performs
that function. See JVW Enterprises, Inc. v. Interact
Accessories, Inc., Civ. No. 4-1410, 2005 WL 2416333 at * 5 (Fed.
Cir. October 3, 2005) and Omega Engineering Inc. v. Raytek
Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003).
Here, I think that "luminal attachment and intussusception
means" involves two functions: (1) attaching the lumen;*fn2
and (2) intussusception or inversion of the lumen. The parties do not appear to disagree over the recited
functions. Instead, the dispute lies in the corresponding
structures. "`In order to qualify as corresponding, the structure
must not only perform the claimed function, but the specification
must clearly associate the structure with performance of the
function." JVW Enterprises, 2005 WL 2416333 at * 6, quoting,
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 269 F.3d 1106,
1113 (Fed. Cir. 2002).
As to the first function that of attachment, I find that the
corresponding structure consists of the annular groove. The
specification explains that, with respect to the first
[t]he bowel is attached to the central post 14,
such as by tying the bowel portion to the central
post at the annular groove with a ligation member
Col. 3, line 66 Col. 4, line 2 (emphasis added). Ravo and
Nicolo urge that the structure consists of the "central post" and
that the reference to the annular groove is simply intended to be
an example of where on the central post the lumen could be
attached. At first glance, this argument holds some appeal. Yet,
each of the drawings which correspond to the first embodiment
(Figures 1 3) shows the lumen attached to the central post at
the annular groove. Accordingly, I read the use of "central post"
as Ravo's and Nicolo's short hand reference for "the annular
groove located on the central post." Indeed, the use of the
shortened phrase "central post" in the '148 Patent does not occur
until after the more thorough definition of the annular groove
located on the central post. Further, if, as Ravo and Nicolo
suggest, the annular groove is not the corresponding structure
for attachment of the lumen, it is curious that the '148 Patent teaches that:
[f]ollowing the mobilization and resection of the
mesentary, the surgical tool 10 is positioned into
the bowel through the anus such that the annular
groove 16 of the central post 14 is aligned midway
along the segment of the colon to be resected.
Col. 3, lines 59-66 (emphasis added). Clearly, the reference to
the "annular groove" when positioning the device is vital because
the lumen will be attached to the annular groove.
The second embodiment also reveals the lumen being attached at
the annular groove:
[a] surgical tool 50 includes an annular groove 56
around the housing 52 with the annular groove 56
being analogous to the annular groove 16 on the
central post 14 of the surgical tool 10 described
above. The annular groove 56 is provided to
receive ligation member 26 for attaching the bowel to
the surgical tool 50 as will be described
The colon can then be attached to the housing 52
at the annular groove 56 with the ligation member
26, as shown in FIG. 4, substantially in the same
manner as discussed above in connection with surgical
Col. 5, lines 54-58 and Col. 6, lines 34-37 (emphasis added). The
illustrations also confirm that the lumen is to be attached to
the annular groove. See Figures 4, 5 and 7.*fn3
and Nicolo argue that the first and second embodiments differ and
that only the second embodiment calls for attachment at the
annular groove, the specification itself notes that the attachment in the second
embodiment occurs in "substantially the same manner" as in the
first embodiment. Consequently, I do not find their argument to
As stated above, the "luminal attachment and intussusception
means" references a second function as well intussusception.
The parties agree, as do I, that the term "intussusception" means
a telescoping of the lumen, where the lumen is pulled inside
itself. Ravo and Nicolo argue that the structure which
corresponds to this function consists of the central post and the
casing or other rigid member over or around which the lumen is
inverted, and the equivalents thereof. See Plaintiffs' Brief,
p. 18-19 and Docket No. 22, p. 4-5. Ethicon counters that the
annular groove is also involved in intussusception.
As stated above, I have already concluded that the annular
groove is part of the device to which the lumen is attached. The
phrase at issue is "a luminal attachment and intussusception
means." The plain meaning of the use of the conjunctive "and" is
that the same structure is used both for attachment and
intussusception. Consequently, then, the annular groove is used
to accomplish intussusception.
I do, however, agree with Ravo and Nicolo that the '148 Patent
uses the term "central post" to describe the structure which performs the
function of intussusception. Indeed, with respect to the first
embodiment, the '148 Patent reads that:
[f]ollowing ligation of the bowel to the central post
14, the central post 14 is moved relative to the
annular housing 20 a distance approximately equal to
one-half the length of the bowel to be resected. . . .
With the bowel completely immobilized and attached
to the central post 14, this relative movement will
cause the intussusception of the segment of the bowel
to be removed. . . .
Col. 4, lines 9-20. Thus, with the understanding that the annular
groove is part of the central post which plays a vital role in
the attachment of the lumen, I find that the structure which
performs the function of intussusception consists of the central
post as a whole as well as the casing or other rigid member over
or around which the lumen is inverted, and the equivalents
With respect to the second embodiment, the corresponding
structure would involve the annular groove and the stapling
assembly, see Col. 6, lines 37-47 (stating that "[f]ollowing
the attachment of the colon to the surgical tool 50, the portion
of the colon to be resected is intussuscepted by relevant
movement of the stapling assembly 61 relative to the annular
groove 56 as shown in FIG. 5. In the surgical tool 50 illustrated
in FIG. 5, the stapling assembly 61 is advanced relative to the
housing 52 by a threaded connection. The relevant portion of the
bowel will be intussuscepted by a withdrawal of the distal end of
the surgical tool 50 corresponding to the advancement of the
stapling assembly 61 relative to the annular groove 56 and
housing 52."), and the equivalents thereof. 3. ATTACH/ATTACHMENT
Claims 1, 2, 3, 11, 15 and 16 all use the word "attachment" in
conjunction with "luminal." The parties disagree as to how
"attachment" or "attach" should be defined. Ravo and Nicolo urge
that attach means "to make fast (as by tying or gluing)." See
Plaintiffs' Brief, p. 17. Ethicon, in contrast, contends that
"attach" must mean "to make immoveable with respect to." See
Docket No. 23-3, ¶ 9.
Having reviewed the '148 Patent in its entirety, I conclude
that "attach" means to make fast, as by tying or gluing. The
specification itself provides that:
[t]he bowel is attached to the central post 14, such
as by tying the bowel portion to the central post 14
at the annular groove 16 with a ligation member 26.
See Col. 3, line 66 Col. 4, line 2 (emphasis added). Thus,
the specification itself defines the word. Further, the
specification is consistent with the definition set forth in the
dictionary. See Webster's Ninth New Collegiate Dictionary, p.
Further, Ethicon's proposed definition of making something
"immoveable" is at odds with the language of the '148 Patent
itself. The Patent reads:
[w]ith the bowel completely immobilized and
attached to the central post 14, this relative
movement will cause the intussusception of the
segment of the bowel to be removed as shown in FIG.
See Col. 4, lines 17-20 (emphasis added). Ravo and Nicolo use
the conjunctive "and" between "immobilized" and "attached." A
conjunctive word joins elements. This suggests that the inventors
understood "immobilized" and "attached" to mean two different
things. 4. "PORTION OF THE LUMEN"
Claims 1, 11, 12 and 15 use the phrase "portion of the lumen"
or "lumen portion." The parties agree that the term "lumen" is
universally known to mean "the cavity of a tubular organ." I
agree with Ethicon that "portion of the lumen" means "segment of
the lumen." Indeed, the '148 Patent uses the word "segment"
interchangeably with "portion." For instance, the "Summary of the
[t]he surgical device of the present invention
includes a main housing adapted to be positioned
within the bowel, a mechanism for first
intussuscepting a segment of the bowel to be
removed, a mechanism for anastomosis of the remaining
portions of the bowel prior to the resection and a
mechanism for resecting the intussuscepted segment
of the bowel to be removed.
See Col. 2, lines 32-38 (emphasis added).
The "Background Information" also uses the word "segment," when
discussing resecting, removing, attaching or intussuscepting
[t]he techniques of resecting a segment of the
colon . . . where a segment of the diseased bowel
must be removed. . . . The first step is mobilization
of the segment to be resected. . . . Second,
resection of the segment to be removed follows the
mobilization procedure. Often in removing the
interior segment. . . . Following the resection of
the segment to be removed, the remaining ends are
anastomosed to guarantee the continuity of the
See Col. 1, lines 18-37 (emphasis added).
Further, in discussing the first embodiment of the invention,
the drafters use "segment" and "portion" interchangeably:
[f]ollowing the anastomosis of the bowel sections and
the severing of the intussuscepted bowel segment,
the surgical tool 10 can be withdrawn, . . . bringing
with it the resected portion of the bowel. The
resected portion of the bowel remains attached to
the tool 10 by ligation member 26 around central post
See Col. 5, lines 12-17 (emphasis added); see also Col. 3,
lines 62-66; Col. 4, lines 18-20 and 24-27.
It is not clear whether Ravo and Nicolo object to defining the
term "portion of the lumen" to mean "segment of the cavity of a
tubular organ." Nowhere in their two briefs do I see a discussion
of the word "segment." Instead, Ravo and Nicolo discuss whether
the inversion of the intussuscepted lumen requires the inversion
of multiple layers which may make up the entire lumen wall or
simply the inversion of the innermost layer. To the extent that
this is a point in dispute, or is even relevant to the issue of
claims construction I find the '148 Patent is silent in this
matter. Further, neither Ravo and Nicolo nor Ethicon offered any
admissible expert testimony on the issue of whether the thickness
of the walls of various tubular organs varies and whether or not
it is possible to intussuscept or invert only certain layers of
those walls. As such, I cannot resolve the issue at this
5. Luminal Attachment Member
Claim 15 includes the following element:
[a] luminal attachment member coupled to said
housing, said luminal attachment member adapted to
have a lumen portion attached thereto. . . .
See Claim 15, Col. 8, lines 47-49. The parties disagree over
whether this element is written in means-plus-function format
under 35 U.S.C. § 112, ¶ 6. Ravo and Nicolo argue against such a
construction. They insist that the word "member" is commonly used in describing structural elements of mechanical devices.
Ethicon counters that the term "member" does not identify a
specific structure and that the claim element must necessarily be
written in means-plus-function format.
As Ravo and Nicolo point out, the phrase at issue does not
include the word "means." Federal Circuit precedent establishes
that "a claim term that does not use `means' will trigger the
rebuttable presumption that § 112 ¶ 6 does not apply." CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir.
2002). "The presumption that a limitation lacking the term
`means' is not subject to section 112 ¶ 6 can be overcome if it
is demonstrated that `the claim term fails to `recite
sufficiently definite structure for performing that function.'"
Lighting World v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358
(Fed. Cir. 2004), citing, CCS Fitness, 288 F.3d at 1369.
However, "the presumption flowing from the absence of the term
`means' is a strong one that is not readily overcome." Lighting
World, 382 F.3d at 1358 (citations omitted).
Thus, I begin with the presumption that § 112, ¶ 6 does not
apply and consider whether Ethicon has successfully rebutted this
presumption. Ethicon simply argues that the claim element recites
a function attaching the lumen but recites no structure that
would perform this function. See Docket No. 18, p. 20 and
Docket No. 23, p. 5-7. I find Ethicon's argument to be
unpersuasive for several reasons.
First, while I agree that the term "member" does not bring to
my mind a particular structure, I must consider Ravo's and
Nicolo's argument that persons of ordinary skill in the art would
understand "member" to refer to something structural. Unfortunately, Ravo and Nicolo did not submit any
expert testimony on this issue. Such testimony would have been
helpful. Nevertheless, Federal Circuit precedent teaches that
reference may be made to dictionaries. See Lighting World,
382 F.3d at 136-61 (stating "we have looked to the dictionary to
determine if a disputed term has achieved recognition as a noun
denoting structure. . . ."). Having consulted several
dictionaries, I am convinced that the word "member" would be
understood by those skilled in the relevant art to denote
structure. The McGraw Hill Dictionary of Scientific and Technical
Terms defines "member" as: "[a] structural unit such as a wall,
column, beam or tie, or a combination of any of these. . . ."
McGraw Hill Dictionary of Scientific and Technical Terms (6th
ed.), p. 1308. Similarly, Webster's Third New International
Dictionary defines "member" as "a part of a building or other
structure. . . . [or] an essential part of a framed structure, a
machine, or a device." Webster's Third New International
Dictionary, p. 1408 (1993). Thus the luminal attachment member
must be structured in such a manner that a lumen may be attached
In addition to the fact that the word "member" is defined in
dictionaries as something structural, a review of the entire '148
Patent makes clear that Ravo and Nicolo used the phrase to mean a
structure. For instance, the claim element itself does not
describe a function. Additionally, Ravo and Nicolo use the word
"means" elsewhere in the '148 Patent to take advantage of the
means-plus-function manner of describing a claim. It would be
odd, indeed, for the drafters to have used the word "means" in
Claims 1, 2, 3, 4, 5, 7, 9, 10, 11, 12 and 13 to describe a
means-plus-function element, yet suddenly substitute the word "member" for "means" in
Claims 15, 16, 17 and 19. Additionally, the '148 Patent uses the
word "member" in conjunction with several other phrases. See
Col. 4, line 61 ("wedge-shaped member"); Col. 5, line 17
("ligation member"); Col. 6, line 52 ("bowel members."). These
phrases connote something structural.
Finally, I agree with Ravo and Nicolo that other prior art
patents appear to use the word "member" to refer to structural
elements. See Patent No. 4,304,236 entitled "Stapling
Instrument Having an Anvil-Carrying Part of Particular Geometric
Shape," Col. 19, line 51 and Patent No. 5,355,897, entitled
"Method of Performing Pyloroplasty/Pylorectomy Using a Stapler
Having a Shield," Col. 10, line 48; both of which are attached to
Plaintiffs' Brief in Support of Proposed Interpretations of
6. "RELATIVE MOVEMENT"
Claim 15 includes the following limitation:
a stapling assembly moveable relative to said luminal
attachment member, wherein relative movement between
said stapling assembly and said luminal attachment
member operates to invert a portion of the lumen.
See Col. 8, lines 50-54 (emphasis added). Ethicon argues that
this phrase requires that the inversion of the lumen be caused by
the relative movement between the stapling assembly member and
the luminal attachment member. Ravo and Nicolo have not offered a
contrary definition. Indeed, their pre-hearing and post-hearing
briefs are silent as to this phrase. Ravo and Nicolo did submit a
handout in conjunction with the Markman hearing. In that handout, Ravo and
Nicolo do not disagree that the phrase at issue requires that the
stapling assembly and luminal attachment member are moved
relative to one another to cause intussusception. Rather, they
argue that because the preamble to Claim 15 uses the word
"comprising," the claim is open-ended such that elements in
addition to the stapling assembly and the luminal attachment
member can be used to cause intussusception.
I think that the parties' proffered constructions are not
inconsistent with one another. In other words, the stapling
assembly and the luminal attachment member are moved relative to
one another to cause intussusception. Additional elements can be
used to aid in intussusception as well.
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