JOY FLOWERS CONTI, Chief District Judge.
This is a patent infringement case in which inventors Biagio Ravo and Enrico Nicolo ("Ravo") accuse Covidien LP ("Covidien") of infringing United States Patent No. 6, 117, 148, entitled Intraluminal Anastomotic Device. (the "148 Patent, " located in the record at ECF No. 66-1.) The '148 Patent describes two embodiments of a surgical device that can be used to resect a section of bowel (or any hollow organ) through intussusception followed by anastomosis, in turn preventing the intraluminal contents from contaminating the body cavity. (ECF No. 54 at 1.)
The Special Master issued a Report and Recommendation ("R&R") on claim construction on March 13, 2013, (ECF No. 48), to which the parties filed objections (ECF Nos. 49-52). In response thereto, the Special Master submitted a supplemental R&R to correct non-substantive matters and to reflect changes to the R&R agreed to by the parties. (ECF No. 53.) The court issued a Memorandum Opinion and Order setting forth its construction of the remaining disputed claim terms on June 27, 2013. (ECF No. 54.) That opinion set forth the applicable legal standards and factual background, which will not be repeated here. ( Id. at 2-4.)
At the time of those claim construction proceedings, Ravo accused Covidien of infringing Claims 1-3, 5, 11-13, and 15-16 of the '148 Patent. (ECF No. 48-1.) Ravo added Claim 9 to the list of asserted claims when it served an Updated Disclosure of Asserted Claims and Infringement Contentions on Covidien in July 2013. (ECF No. 58 at 2 and 58-4 at 6.) Claim 9 recites "[t]he surgical device of claim 1 further including a band for attaching the lumen to said luminal attachment and intussesception means." (ECF No. 66-1 at 12, terms previously construed by the court are underlined). Covidien objected to Ravo's addition of a newly asserted claim by filing a motion to strike Claim 9. (ECF No. 57.) After considering the written submissions with respect to that motion, (ECF Nos. 57-59, 64), and the parties' oral argument on the matter, the court denied Covidien's motion. (11/6/13 Minute Entry.) The court permitted limited additional discovery, with costs shifted to Ravo, and ordered expedited additional claim construction briefing on two claim terms: (1) "surgical device;" and (2) "band." (Id.; ECF Nos. 65-66, 71.) The court held an additional claim construction hearing on December 18, 2013. (12/18/13 Minute Entry.)
The court is now prepared to issue its construction of these additional disputed claim terms found in Claim 9 of the '148 Patent.
Term #1 - "surgical device": no construction required.
Ravo asserts that no construction of the term "surgical device" is required because the term appears in the preamble and is not limiting. (ECF No. 66 at 7-8.) Ravo further contends that the term "surgical device" need not be construed because Covidien did not ask that the term be construed during the first round of claim construction even though it appears in the preamble of claims that were being construed by the court at that time, in the same, or a very similar format. ( Id. at 7.) If the term is to be construed, Ravo proposes that the term be defined as "a collection of structural elements." (Id.)
Covidien contends that the preamble of Claim 9 must be construed at this juncture because "the scope of the preamble dictates whether Claim 9 generally covers bands, or only bands that are part of the tool." (ECF No. 71 at 8.) Covidien proposes that the term be construed to mean "tool" because the '148 Patent uses the words "tool" and "device" interchangeably. (ECF No. 71 at 7.) Covidien asserts that, once the preamble is properly interpreted in this way, Claim 9 will only encompass bands that are part of the tool, which is consist with the court's prior finding that a ligation member, one example of which is a band, is external to the device. (ECF No. 71 at 8.) Ravo objects to Covidien's proposed construction on the ground that the words "device" and "tool" are not interchangeably used. (ECF No. 66 at 4, 9.) According to Ravo, the word "device" is used to "generally refer to the invention" while the term "tool" is used in the Brief Description of the Embodiments to "refer to a portion of the device." (Id.)
The parties' dispute with respect to this term purportedly implicates directly this court's prior finding that those bands that are classified as ligation members are not part of the device. (ECF Nos. 66 at 9 and 71 at 6, 8-9.) As explained below, the court rejects this notion, and concludes that the term "surgical device" requires no construction.
The term subject to construction in Claim 9 is "surgical device, " as used in the phrase "[t]he surgical device of claim 1 further including..." '148 Patent, 8:17. Every claim of the 148 Patent that depends in any way from Claim 1 uses the language "[t]he surgical device of [prior claim number] [further including' or wherein said']." '148 Patent, 7:64, 8:1, 4, 7, 9, 11, 14, 17, 20.
The court previously construed disputed claim terms in Claims 2, 3, and 5, which include this language. No party asked that the term "surgical device" be construed at that time. Contrary to Covidien's contention, construction has not become necessary in order to preserve the court's prior ruling that "bands or sutures will not be included in the construction" of "luminal attachment and intussesception means." (ECF No. 54 at 10-11.) The court's prior opinion, and the court's construction of the term "band" immediately below, will address Convidien's concern. Construing the term "surgical device" to mean "tool" will not "preserve" this court's prior ruling.
Looking now to the language used in Claims 1 and 9, the court finds that it is typical of the structure used when drafting dependent patent claims. Dependent claims are a convenient way of "referring back to and further limiting another claim" in the same patent. 37 C.F.R. § 1.75(c); see also 35 U.S.C. § 112(d). In Claim 9 of the '148 Patent, the phrase "the surgical device of claim 1" follows the common and acceptable format and structure for incorporating by reference all the features of a prior claim into a dependent claim. Manual of Patent Examining Procedure, § 608.01(n)(IV) (reciting acceptable format for a singular dependent claim to be "the product of claim 1") (8th ed. 2012) ("MPEP"). Claim 1 claims "a surgical intraluminal resection and reconstruction device comprising" four structural elements, three of which are in means-plus-function format. '148 Patent, 7:52-53 (emphasis added). Claim 9, which depends from Claim 1, claims "the surgical device of claim 1" and adds one more structural element, i.e., "a band for attaching...." '148 Patent, 8:17-18 (emphasis added). The term "surgical device" in Claim 9 is a shorthand way of referring back to the four structural elements that comprise the same "surgical device" claimed in Claim 1, without having to restate each one. This is precisely the purpose of writing a claim in dependent form according to federal law and the MPEP.
There is no need to construe the term "surgical device" in the context of dependent Claim 9. It is a commonly understood dependent claim structure used to refer back to the invention ...