Patent Cases, CROSS MEDICAL PRODUCTS, INC., Plaintiff, v. MEDTRONIC SOFAMOR DANEK, INC., et. al., Defendants., U.S. District Court, C.D. California, (Feb. 10, 2005)

GARY TAYLOR, District Judge

ORDER ON CROSS-MOTIONS FOR PARTIAL SUMMARY JUDGMENT RE: INFRINGEMENT OF THE '442 PATENT

Plaintiff's motions for partial summary judgment are GRANTED. Defendants' motion for partial summary judgment is DENIED.

I. BACKGROUND

Plaintiff Cross Medical Products owns U.S. Patent No. 5,624,442 (“the '442 Patent”), which is a “transverse connector” for connecting rods in a spinal implant system. The Patent includes a unitary transverse connector and an adjustable transverse connector. The adjustable connector can be expanded and collapsed, while the unitary connector is fixed.

Plaintiff claims Medtronic has 7 different crosslinks that infringe the '442 Patent. Plaintiff claims Medtronic's unitary crosslinks infringe the following claims of the '442 Patent:

Plaintiff claims Medtronic's adjustable crosslinks infringe the following claims of the '442 Patent:

The parties filed cross-motions for partial summary judgment of infringement of the '442 Patent for 6 of the crosslinks. Plaintiff moved for summary judgment of infringement as to the seventh crosslink, the Anterior Low Profile Crosslink.

II. DISCUSSION

Summary judgment is proper if “there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c).

A. Patent Infringement

In a patent case, the proper construction of the claims of the patent is a question of law for the court. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). Where the parties do not dispute relevant facts regarding the accused product but disagree over the meaning and scope of the claims, the question of infringement becomes one of claim construction and is appropriate for summary judgment. Id.

Infringement analysis involves two steps. First, the claims of the patent must be interpreted by the Court. To construe a patent claim, the Court must first consider “intrinsic evidence” such as the claim language, the specification of the patent, and the prosecution history. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). Second, the construed claims must be compared to the accused products to determine whether each claim is found in the accused product. See id. at 976. As a matter of law, a patent claim is not infringed if an element of the claim is not present in the accused device. Digital Biometrics, Inc. v. Indentix, Inc., 149 F.3d 1335, 1349 (Fed. Cir. 1998).

A party may prove infringement, even without a literal correspondence between the accused device and the claims of the patent, where the differences between the two are insubstantial. See General Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 984 (Fed. Cir. 1997). Under this “doctrine of equivalence,” a plaintiff must show the accused device “performs substantially the same function in substantially the same way to obtain substantially the same result” as the patented design. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). The doctrine of equivalence must be applied to the individual elements of the claim, not the invention as a whole. Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). If the accused product does not meet one or more limitations in a claim, either literally or under the doctrine of equivalence, the claim cannot be infringed as a matter of law. See id.; Netword, LLC v. Central Corp., 242 F.3d 1347, 1353-54 (Fed. Cir. 2001).

A different analysis applies when the patent claims have means-plus-function limitations. First, the Court must identify the claimed function. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). Second, “the court must … determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id.

Third, the Court must determine “whether the accused device … performs an identical function to the one recited in the claim.” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1430 (Fed. Cir. 2000). If so, the Court decides “whether the accused device uses the same structure, materials, or acts found in the specification, or their equivalents.” Id. The question is whether the accused device “performs the function in substantially the same way to achieve substantially the same result.” Id. at 1435.

B. Claim Construction of the '442 Patent

The '442 Patent has three independent claims, Claims 1, 11, and 17. The other claims are dependent claims. Dependent claims are not infringed unless the independent claims are infringed. See Medtronic, Inc. v. Advanced Cardiovascular Sys., 248 F.3d 1303, 1310 (Fed. Cir. 2001).

The parties dispute how the independent claims should be construed. Defendants argue two limitations in Claim 1 and one limitation in Claim 11 are means-plus-function limitations that should be construed under 35 U.S.C. §112 ¶6. That section states:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

“If the word ‘means’ appears in a claim element in combination with a function, it is presumed to be a means-plus-function element to which §112, P. 6 applies.” Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999). Here, the parties do not dispute this presumption applies to the three claim limitations at issue. The presumption is overcome “if the claim itself recites sufficient structure or material for performing the claimed function.” Id.

1. Claim 1

One limitation in Claim 1 states:

“[A] first clamping member having means to secure said link at the first end to the stabilizer of the first set, said securing means comprising a stabilizing retaining recess and biasing means having a longitudinal central axis which bias the stabilizer into the recess, said longitudinal central axis of said biasing means being offset from said longitudinal central axis of said stabilizer when said stabilizer is retained within said recess… . (emphasis added).”

Plaintiff argues this limitation does not invoke §112 ¶6 because it contains sufficient structure for performing the claimed function. The Court agrees. The description “a stabilizing retaining recess and biasing means having a longitudinal central axis which bias the stabilizer into the recess” sufficiently explains how the structures performs the function of securing the link at the first end to the stabilizer of the first set. Since the link is attached to the stabilizing retaining recess, [1] the stabilizing retaining recess and the biasing means are the only structures necessary to secure the link to the stabilizer. The limitation is not a means-plus-function limitation.

The second disputed limitation in Claim 1 states: “said link having a stabilizer holding means at its second end to secure the stabilizer of the second implant set to said link such that the stabilizer of said first spinal implant set is linked to the stabilizer of the second implant set.” (emphasis added). This claim limitation does not describe a structure that performs the function. The limitation is a means-plus-function limitation.

2. Claim 11

Claim 11 describes a “means linking the first clamping member and the second clamping member.” This claim limitation does not describe a structure that performs the function. The limitation is a means-plus-function limitation.

C. Infringement Analysis

The parties dispute which portions of the Patent specification the Court may consider in its infringement analysis. Defendants argue the Court may only consider structures disclosed in the first embodiment of the Patent specification. Plaintiff contends the Court may consider the entire specification, including the second embodiment. With respect to the means-plus-function limitations, this dispute affects the Court's approach to Step 2, determining what structure corresponds to the claimed function.

1. The Embodiments of the Specification

Plaintiff submitted four applications to the Patent Trademark Office (“PTO”) to obtain the '442 Patent. The first application, filed April 26, 1990, contained the first embodiment of the transverse connector. The third application, filed November 19, 1993, was a Continuation-in-Part (“CIP”) of the first application. The CIP contained a second embodiment of the transverse connector.

Defendants argue the Court should interpret Claims 1-14 with reference only to the first embodiment. They argue since the PTO gave the Claims the priority filing date of the first application, 1990, the PTO must have found the Claims corresponded only to the first embodiment and not to the second embodiment in the 1993 CIP.

To support their position, Defendants assert that, if Claims 1-14 are associated with the second embodiment, those Claims would lose the benefit of the 1990 filing date and would be invalid over prior art developed before 1993. Defendants state they plan to file a motion for summary judgment of invalidity for this reason. Until Defendants file this motion, it is premature to decide whether Claims 1-14 are invalid due to Plaintiff's assertion in this infringement motion that the Claims apply to the second embodiment in the CIP.

Defendants next contend that, since Plaintiff argued during prosecution of the Patent that Claims 1 and 11 were directed to the first embodiment, Plaintiff cannot now argue the Claims also include the second embodiment. During prosecution, Plaintiff did not argue the Claims only corresponded to the first embodiment. In a May 10, 1994 Amendment to the application, Plaintiff informed the PTO that Claims 1-14 “relate to linking members which are generic as to the [first] embodiment …, as well as the [second] embodiment.”

Defendants have not cited authority showing the 1990 priority date for Claims 1-14 precludes the Court from considering the entire patent specification for purposes of infringement. In the absence of such authority, the Court adheres to the rule that “[w]hen multiple embodiments in the specification correspond to the claimed function, proper application of §112, P. 6 generally reads the claim element to embrace each of those embodiments.” Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). See also Rhine v. Casio, Inc., 183 F.3d 1342, 1346 (Fed. Cir. 1999) (“[P]articular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.”) (quoting Electro Med. Sys. S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1054 (Fed. Cir. 1994)); Jonsson v. Stanley Works, 903 F.2d 812, 819 (Fed. Cir. 1990) (construing a claim in light of the specifications of both the original patent and the continuation-in-part).

Here, both the first and second embodiments of the transverse connector correspond to the claimed functions. See Micro Chem., 194 F.3d at 1258. The claim language describing a “link” with two ends is broad enough to encompass both the first embodiment, where the link is a separate piece the surgeon attaches to the clamps, and the second embodiment, where the link is already attached to the clamps. See Electro Med., 34 F.3d at 1054. Proper construction of the Claims includes both embodiments.

2. The Unitary Crosslinks

a. Claims 1-3, 5-10

Defendants dispute infringement of their unitary crosslinks based on the two limitations in Claim 1 discussed above. The first claim limitation is not a means-plus-function limitation. Defendants' unitary devices contain each element of the claim limitation, including a stabilizer retaining recess and a biasing means (a set screw) that holds the stabilizer in the recess and is offset from the axis of the stabilizer. Defendants' unitary devices literally infringe this claim limitation.

The second claim limitation is a means-plus-function limitation. The claimed function is to secure the link to the stabilizer (the “rod”). The structures that perform this function are the clamp, the rod receiving channel, and a set screw to lock the rod into the channel. All of Medtronic's unitary devices perform the identical function of securing the link to the stabilizer. Each unitary device uses the same structure to perform the function: a clamp, a rod receiving channel, and a set screw. Defendants' unitary devices literally infringe this claim limitation.

All four unitary devices infringe independent Claim 1. Defendants do not dispute that, since Claim 1 is infringed, dependent claims 2-3 and 5-10 are also infringed.

b. Claims 11-14

Defendants dispute infringement of the means-plus-function limitation in Claim 11, the “means linking the first clamping member and the second clamping member.” The claimed function is to link the two clamping members together. The structure disclosed in the specification that performs this function is the fixed-length link between the two clamps.

Defendants' unitary devices perform the identical function of linking the two clamps together. The devices also have fixed-length links between the two clamps. All four unitary devices literally infringe independent Claim 11.

With respect to infringement of Claims 12-14 by Defendants' L.P. Crosslink, Low Profile Crosslink, and Low Profile Crosslink Plate, Plaintiff brought these allegations for the first time in its reply brief and did not meet its burden of showing the accused devices infringe each Claim. Defendants also did not meet their burden in their cross-motion for summary judgment by showing the accused devices do not infringe each Claim. Summary judgment for either party with respect to Claims 12-14 would not be proper.

c. Claims 15-20

Defendants do not dispute infringement of Claims 15-20. In Plaintiff's opening brief, Plaintiff met its burden by listing each element of each Claim and explaining how the accused devices infringe the Claims. Summary judgment of infringement of Claims 15-20 is granted.

3. The Adjustable Crosslinks

a. Claims 1-3, 5-10

Defendants dispute infringement of their adjustable crosslinks based on the two limitations in Claim 1 discussed above. The only relevant difference between the unitary crosslinks and the adjustable crosslinks is the link in the adjustable crosslinks is not fixed, but can be expanded and collapsed to move the clamps closer together or farther apart. This difference does not affect the infringement analysis of Claim 1. All three of Defendants' adjustable crosslinks infringe Claim 1. Defendants do not dispute dependent claims 2-3 and 5-10 are also infringed.

b. Claims 11, 12, and 14

Defendants dispute infringement of the means-plus-function limitation in Claim 11, the “means linking the first clamping member and the second clamping member.” The claimed function is to link the two clamping members together. The structure disclosed in the specification that performs this function is the adjustable link between the two clamps.

Defendants' adjustable crosslinks perform the identical function with an equivalent structure. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1430 (Fed. Cir. 2000) (an equivalent structure can result in literal infringement). Defendants' adjustable crosslinks use an eyebolt to secure the link, while Plaintiff's specification describes a set screw to secure the link. The eyebolt and the set screw perform the same function (to secure the link) in substantially the same way (by applying frictional force to prevent the link from moving) to achieve substantially the same result (to maintain the desired length of the link). Defendants' adjustable crosslinks literally infringe Claim 11.

Defendants do not dispute that, since Claim 11 is infringed, dependent claims 12 and 14 are also infringed.

c. Claim 4

Defendants argue their adjustable crosslinks do not infringe Claim 4 of the '442 Patent. Claim 4 has a limitation of a “means to adjust the length of the link between the first and second clamping member.” Defendants contend the structure that performs the claimed function may only be a structure disclosed in the first embodiment of the specification. The Court has found, however, the second embodiment also may be considered. Defendants' adjustable crosslinks perform the identical function (adjusting the length of the link) with an equivalent structure (a bore that receives the link and secures the link with a set screw or an eyebolt). The adjustable crosslinks literally infringe Claim 4.

d. Claim 13

Claim 13 has a limitation of a “means to lock the relative position of the extensible linking means and the first clamping member.” The structures identified in the specification to perform the function of locking the position of the extensible linking means are a bore to receive the link and a set screw to secure the link.

Defendants' adjustable crosslinks perform the identical function of locking the position of the link. The Low Profile Crosslink Multi-Span Plate and the Multi-Span LPC use an identical structure of a set screw to accomplish the function. The X-10 Crosslink uses an equivalent structure to the set screw, an eyebolt. The eyebolt performs the same function as a set screw in substantially the same way to achieve substantially the same result. Defendants' adjustable crosslinks literally infringe Claim 13.

II. DISPOSITION

Plaintiff's motions for partial summary judgment are GRANTED as follows:

Defendants' motion for partial summary judgment is DENIED.