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Becon Medical, Ltd. v. Bartlett

United States District Court, E.D. Pennsylvania

August 22, 2019

BECON MEDICAL, LTD. and HENRY STEPHENSON BYRD, M.D., Plaintiff,
v.
SCOTT P. BARTLETT, M.D., and TALEXMEDICAL, LLC, Defendants.

          MEMORANDUM

          DuBois, Judge.

         I. INTRODUCTION

         This 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.

         II. BACKGROUND [1]

         Plaintiffs 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.

         The 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).

         On 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).

         On 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.

         III. LEGAL STANDARD

         Construction 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 banc).

         In 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).

         First, 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.

         The 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.

         The 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.

         Although 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.

         Finally, 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.”).

         IV. DISCUSSION

         The 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.

         A. “Opening” in '277 Patent

          The parties propose the following constructions for the term “opening”:

Plaintiffs' Proposed Construction

Plaintiffs' Proposed Construction

No construction is necessary. Alternatively: “A gap”

“Gap that allows passage through a member from an anterior to a posterior surface of the member”

         The term “opening” appears in the '277 Patent. Claim 1 ...


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