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November 17, 2005.

ETHICON ENDO-SURGERY, INC., a Johnson & Johnson Company, Defendant.

The opinion of the court was delivered by: DONETTA AMBROSE, District Judge


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 Surgery."

  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 (citations omitted).

  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).


  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 ...

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