United States District Court, E.D. Pennsylvania
BECON MEDICAL, LTD. and HENRY STEPHENSON BYRD, M.D., Plaintiff,
SCOTT P. BARTLETT, M.D., and TALEXMEDICAL, LLC, Defendants.
patent infringement case involves two non-surgical infant ear
correction devices: plaintiffs' EarWell and
defendants' InfantEar. Plaintiffs Becon Medical, Ltd.,
and Henry Stephenson Byrd, M.D., assert that defendants
TalexMedical, LLC, and Scott P. Bartlett, M.D., infringed on
patents related to EarWell by, inter alia, making
and selling InfantEar. There are two patents-in-suit:
plaintiffs' U.S. Patent No. 8, 167, 942 (“'942
Patent”) and U.S. Patent No. 8, 852, 277
(“'277 Patent”) (collectively, “the
Patents”). Presently before the Court are the
parties' claim construction briefs. The parties dispute
three claim terms used in the Patents: “opening,
” “scaphal mold, ” and
“cradle.” Having conducted a Markman
Hearing on July 12, 2019, the Court now construes the
disputed claim terms.
Dr. Henry Stephenson Byrd and Becon Medical, Ltd., invented
and developed an infant ear correction device called EarWell,
which corrects a variety of ear deformities in infants.
See Am. Compl. ¶¶ 13, 15. Thereafter,
defendants Dr. Scott P. Bartlett and TalexMedical, LLC,
developed their own non-surgical infant ear correction device
called InfantEar. Id. ¶¶ 20-21.
U.S. Patent and Trademark Office has issued several patents
related to EarWell to plaintiffs, including the two
patents-in-suit: (1) the '942 Patent, issued on May 1,
2012, and (2) the '277 Patent, issued on October 7, 2014.
Id. ¶¶ 14, 22-23. The '942 Patent
relates to the “ear molding device, ” also called
the “retractor, ” which is made up of the
“scaphal mold” and “one or more
braces.” See Pl. Op. Br. 2-3; U.S. Patent No.
8, 167, 942 (“'942 Patent”) col. 10 l. 19-34
(filed May 1, 2012). The '277 Patent relates to the
“ear molding device” from the '942 Patent,
combined with a “cradle.” See Pl. Op.
Br. 2; U.S. Patent No. 8, 852, 277 (“'277
Patent”) col. 10 l. 28-49 (filed Oct. 7, 2014).
September 27, 2018, plaintiffs filed the Complaint (Document
No. 1); on November 14, 2018, plaintiffs filed the Amended
Complaint (Document No. 12). Plaintiffs assert in the Amended
Complaint that defendants infringed on plaintiffs'
'942 and '277 Patents by “making, importing,
using, selling, and/or offering to sell” InfantEar. Am.
Compl. ¶ 27. On December 11, 2018, defendants filed the
Answer to the Amended Complaint, asserting counterclaims of
non-infringement and invalidity (Document No. 15). Plaintiffs
filed their Answer to defendants' counterclaims on
December 31, 2018 (Document No. 18).
April 5, 2019, the Court held a Technology Tutorial, at which
the parties demonstrated and explained their respective
devices. Pursuant to the Court's April 5, 2019 Order, the
parties submitted a joint claim construction chart on April
12, 2019 (Document No. 33), setting forth their proposed
constructions for three claim terms in dispute: (1)
“opening” in the '277 Patent, (2)
“scaphal mold” in the '942 and '277
Patents, and (3) “cradle” in the '277 Patent.
On May 3, 2019, plaintiffs filed their Opening Claim
Construction Brief (Document No. 37). Defendants responded on
May 31, 2019 (Document No. 40). Plaintiffs filed a reply on
June 28, 2019 (Document No. 53), and on July 3, 2019,
defendants filed a sur-reply (Document No. 57). On July 12,
2019, the Court held a Markman Hearing during which
the parties presented oral argument on the proper
construction of the disputed claim terms. The Court now
construes those terms.
of disputed patent claims is a question of law and is
therefore the province of the court. Markman v. Westview
Instruments, Inc., 517 U.S. 370, 388-91 (1996). The
purpose of claim construction is to “determin[e] the
meaning and scope of the patent claims asserted to be
infringed.” Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc),
aff'd 517 U.S. 370 (1996). The Court is not
bound by the proposed constructions presented and argued by
the parties. See Marine Polymer Techs., Inc. v. HemCon,
Inc., 672 F.3d 1350, 1359 n.4 (Fed. Cir. 2012) (en
interpreting claims, it is “well-settled” that
“the court should look first to the intrinsic evidence
of record.” Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “Such
intrinsic evidence is the most significant source of the
legally operative meaning of disputed claim language.”
Id. There are three primary sources of
“intrinsic evidence”: (1) the claims, (2) the
specification, and (3) the prosecution history. See
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc).
a court must examine the language of the claims, as
“[i]t is a ‘bedrock principle' of patent law
that ‘the claims of a patent define the invention to
which the patentee is entitled the right to
exclude.'” Id. at 1312 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
“[W]ords of a claim ‘are generally given their
ordinary and customary meaning'”-that 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.” Id. at 1312-13 (quoting
Vitronics, 90 F.3d at 1582). In examining the claims
of the patent, both “the context in which a term is
used in the asserted claim” and “[o]ther claims
of the patent in question” “provide substantial
guidance as to the meaning of particular claim terms.”
Id. at 1314. “Differences among claims also
can be a useful guide in understanding the meaning of
particular claim terms.” Id. For example,
under the doctrine of claim differentiation, “the
presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in
question is not present in the independent claim.”
Id. at 1315.
second source of intrinsic evidence is the patent
specification, which “contains a written description of
the invention that must enable one of ordinary skill in the
art to make and use the invention.” Markman,
52 F.3d at 979. “In light of the statutory directive
that the inventor provide a ‘full' and
‘exact' description of the claimed invention, the
specification necessarily informs the proper construction of
the claims.” Phillips, 415 F.3d at 1316. For
example, the specification may reveal “a special
definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess” or
“an intentional disclaimer, or disavowal, of claim
scope by the inventor.” Id. The specification
“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.”
Vitronics, 90 F.3d at 1582.
third source of intrinsic evidence is the patent's
prosecution history, which consists of “the complete
record of the proceedings before the [U.S. Patent and
Trademark Office (“PTO”)] and includes the prior
art cited during the examination of the patent.”
Phillips, 415 F.3d at 1317. Like the specification,
the prosecution history may be useful in revealing a special
meaning assigned by the patentee to the term or a disclaimer
clarifying what the claims do not cover. Id. That
said, “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 [typically] less
useful for claim construction purposes.” Id.
the intrinsic record is most “significant . . . in
determining the legally operative meaning of claim language,
” extrinsic evidence may also “shed useful
light” on claim construction. Id. (internal
citation omitted). “Extrinsic evidence consists of all
evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and
learned treatises.” Markman, 52 F.3d at 980.
“Because dictionaries, and especially technical
dictionaries, endeavor to collect the accepted meanings 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 terminology to those of skill in the art of the
invention.” Phillips, 415 F.3d at 1318.
there is no precise formula for how a court should weigh the
different sources of evidence. Nor is “[t]he sequence
of steps used by the judge in consulting various sources . .
. important.” Id. at 1324. Instead, “in
weighing all the evidence bearing on claim construction, the
court should keep in mind the flaws inherent in each type of
evidence and assess that evidence accordingly.”
Id. at 1319, 1324 (“[W]hat matters is for the
court to attach the appropriate weight to be assigned to
those sources in light of the statutes and policies that
inform patent law.”).
parties dispute the construction of three claim terms: (1)
“opening, ” as it is used in the '277 Patent,
(2) “scaphal mold, ” as it is used in the
'942 and '277 Patents, and (3) “cradle, ”
as it is used in the '277 Patent. The Court will analyze
each disputed claim term in turn.
“Opening” in '277 Patent
parties propose the following constructions for the term
No construction is necessary. Alternatively:
“Gap that allows passage through a member
from an anterior to a posterior surface of the
term “opening” appears in the '277 Patent.
Claim 1 ...