IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

LUFKIN DIVISION

TYCO HEALTHCARE GROUP LP AND §

UNITED STATES SURGICAL CORP., §
§
Plaintiffs, § Civil Action No. 9:09-CV-176
§
v. §
§ JUDGE KEITH F. GIBLIN
APPLIED MEDICAL RESOURCES CORP., §
§
Defendant. §

ORDER DENYING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT OF

INFRINGEMENT

Plaintiff Tyco Healthcare Group LP filed suit against Defendant Applied Medical Resources

Corp. claiming infringement of United States Patent Nos. 5,304,143, 5,685,854, 5,603,702,

5,895,377, and 5,542,931.1 Tyco initially moved for summary judgment of infringement with respect

to nineteen claims, but has since narrowed the claims it plans to assert at trial to seven: claims 12

and 13 of the ‘143 patent, claims 2 and 4 of the ‘854 patent, claim 11 of the ‘702 patent, claim 6 of

the ‘377 patent, and claim 2 of the ‘931 patent. Applied subsequently stipulated to infringement for:

(1) all four of the asserted claims of the ‘143 and ‘854 patents as to its accused Universal Seal trocar

products, and (2) claim 12 of the ‘143 patent and claims 2 and 4 of the ‘854 patent as to its accused

1
After a dispute over subject matter jurisdiction based on the ownership of the patents-in-
suit, the original case involving Tyco and Applied, 9:06-cv-151, was dismissed, while the co-
pending case filed by both Tyco and United States Surgical Corp. against Applied, 9:09-cv-176.
involving the same facts and patents, was permitted to proceed to trial. Certain motions filed in
9:06-cv-151 and pending when that case was closed, including the instant motion, were re-urged
in 9:09-cv-176.

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5mm Kii trocar products.2 See Doc. # 227, Case No. 9:06-cv-151. This Order therefore addresses

Tyco’s motion only with respect to claim 2 of the ‘931 patent. See Doc. # 46, Case No. 9:09-cv-176.

For the reasons discussed below, the court will deny Tyco’s motion at this time.

I. Background

Tyco accuses several of Applied’s products—the Universal Seal and certain Kii trocars—of

infringing one or more claim(s) of one or more of the five patents-in-suit. Aas mentioned above, the

court need only address Tyco’s claims with respect to claim 2 of the ‘931 patent in this Order.3

The ‘931 patent relates to a trocar valve system adapted for introduction of surgical

instruments into a patient’s body which includes a valve body formed of a flexibly resilient material

that defines an aperture for reception of an instrument. The aperture is configured and dimensioned

such that insertion of the instrument into the aperture will cause the resilient material of the valve

body to engage the outer surface of the instrument in a substantially gas tight manner. The valve

assembly also includes a biasing member for closing the valve body to form a gas-tight seal prior to

inserting the instrument.

II. Standard of Review

The party moving for summary judgment under Fed. R. Civ. P. 56 has the initial burden of

demonstrating that there is no genuine issue as to any material fact and that it is entitled to judgment

2
It is somewhat unclear whether the 5 mm Kii trocar product is accused of infringing
claim 13 of the ‘143 patent. Regardless, Applied has not stipulated to infringement of this claim
by the 5 mm Kii trocar.
3
The parties often refer to the asserted patents by the inventor’s name, rather than the
patent number, in their motion papers—i.e., the “Green patents” (the ‘143 and ‘854 patents), the
“Gravener patent” (the ‘931 patent), and the “Smith patents” (the ‘702 and ‘377 patents). The
court will refer to the ‘931 patent by number and inventor name interchangeably in this Order.

2
as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S. Ct. 2505, 2514

(1986). Movant may show that the undisputed material facts affirmatively establish a right to

judgment. Alternatively, movant may establish that the other party has the burden of proof at trial,

and has failed to “make a showing sufficient to establish the existence of an element essential to [its]

case.” Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S. Ct. 2548, 2522 (1986).

In order to avoid summary judgment, the party opposing the motion must come forward with

competent summary judgment evidence of the existence of a genuine fact issue. See Matsushita

Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-86, 106 S. Ct. 1348, 1335 (1986);

Anderson, 477 U.S. 242, 257, 106 S. Ct. 2505, 2514. The nonmoving party “must do more than

simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 475 U.S.

574, 586, 106 S. Ct. 1348, 1356. Fed. R. Civ. P. 56 requires Applied to set forth specific facts

showing that there is a genuine issue for trial. Anderson, 477 U.S. 242, 256, 106 S. Ct. 2505, 2514.

Only a genuine dispute over a material fact (a fact which might affect the outcome of the suit under

the governing substantive law) will preclude summary judgment. Id. at 248, 106 S. Ct. 2505, 2510.

The dispute in this case is genuine if the evidence is such that a reasonable jury, properly

instructed on the preponderance of the evidence standard, could return a verdict for Applied on

infringement. Id. at 255, 106 S. Ct. 2505, 2514 (“determination of whether a given factual dispute

requires submission to a jury must be guided by the substantive evidentiary standards that apply to

the case.”). If the factual context renders a claim implausible, nonmovants “must come forward with

more persuasive evidence to support their claim than would otherwise be necessary.” Matsushita,

475 U.S. 574, 587, 106 S. Ct. 1348, 1356.

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 Fed. R. Civ. P. 56(c) requires the court to look at the full record, including the pleadings,

depositions, answers to interrogatories, admissions, and affidavits. All reasonable inferences to be

drawn from the underlying facts must be viewed in the light most favorable to the party opposing

the motion, and any doubt must be resolved in its favor. Id. Only reasonable inferences in favor of

the nonmoving party can be drawn from the evidence. Eastman Kodak Co. v. Image Tech. Servs.,

Inc., 504 U.S. 451, 468, 112 S. Ct. 2072, 2083 (1992).

III. Infringement

The determination of infringement, whether literal or under the doctrine of equivalents is “a

two-step process in which we first determine the correct claim scope, and then compare the properly

construed claim to the accused device to determine whether all of the claim limitations are present

either literally or by a substantial equivalent.” Renishaw PLC v. Marposs Societa’ Per Azioni, 158

F.3d 1243, 1247-48 (Fed. Cir. 1998). Claim construction is an issue of law. Markman v. Westview

Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384 (1996). A determination of infringement is

normally a question of fact. Biovail Corp. Int’l v. Andrx Pharms., Inc., 239 F.3d 1297, 1300 (Fed.

Cir. 2001).

For literal infringement, “every limitation set forth in a claim must be found in an accused

product, exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995).

Any deviation from the literal claim language precludes a literal infringement finding. Telemac

Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,1330 (Fed. Cir. 2001).

The essential inquiry under the doctrine of equivalents is whether the accused product or

process contains elements identical to or equivalent to each claimed element of a patented invention.

Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S. Ct. 1040, 1054

4
(1997). “A finding of infringement under the doctrine of equivalents requires a showing that the

difference between the claimed invention and the accused product was insubstantial.” Stumbo v.

Eastman Outdoors, Inc., 508 F.3d 1358, 1364 (Fed. Cir. 2007). One way to do this is by

demonstrating “on a limitation by limitation basis that the accused product performs substantially

the same function in substantially the same way with substantially the same result as each claim

limitation of the patented product.” Id.

“Literal infringement of a claim limitation in means-plus-function format requires that the

relevant structure in the accused device perform the identical function recited in the claim and be

identical or equivalent to the corresponding structure in the specification.” Welker Bearing Co. v.

PHD, Inc., 550 F.3d 1090, 1099 (Fed. Cir. 2008). The test of means-plus-function structural

equivalency is “whether the differences between the structure in the accused device and any

disclosed in the specification are insubstantial.” Chiuminatta Concrete Concepts, Inc. v. Cardinal

Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998). A structural equivalent “must have been

available at the time of the issuance of the claim.” Welker Bearing, 440 F.3d at 1099.

A reduced version of the well-known tripartite test for the doctrine of equivalents has been
applied in the Section 112, Paragraph 6 context to determine if the differences are
insubstantial, i.e., after determining that the accused device performs the identical function,
as required by statute, whether it performs the function in substantially the same way to
achieve substantially the same result.

IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1435 (Fed. Cir. 2000).

At the same time, “the context of an invention should be considered when performing a

Section 112, Paragraph 6 equivalence analysis. . . As a result, two structures that are equivalent in

one environment may not be equivalent in another.” Id. at 1436. While the statute requires that two

5
structures be equivalent, “it does not require them to be ‘structurally equivalent.’”4 Id. Rigid

comparison of physical structures in a vacuum may therefore be inappropriate in a particular case.

IV. Analysis

A. Introduction

1. Tyco’s argument

Tyco argues that since it has made a prima facie showing that Applied infringes claim 2 of

the ‘931 patent—through its Infringement Contentions, Supplemental Infringement Contentions, and

the expert report of William Dubral—it is entitled to summary judgment on infringement for this

claim unless Applied can point to significant rebuttal evidence to the contrary. Tyco contends that

Applied has produced no such evidence, because Applied’s expert reports and expert depositions do

not address whether the accused Universal Seal and Kii products infringe the asserted claim. Tyco

suggests that the only evidence Applied has put forth at all are conclusory denials in its Answer and

interrogatory responses, which cite no record evidence.

2. Applied’s response

Applied concedes that none of its expert reports expressly contested infringement of the

asserted claim. However, it states that it would be willing to stipulate to infringement, but not

liability, as to claim 2 of the ‘931 patent as soon as the term “projecting members” in this claim is

4
“The difference between ‘equivalent structures’ and ‘structural equivalents’ can be
demonstrated with a simple example. . . A claim includes part A, part B, and ‘means for securing
parts A and B together in a fixed relationship.’ The written description discloses that parts A and
B are made of wood and are secured together by nails. For purposes of the invention, it does not
matter how parts A and B are secured; nails are not a critical part of the invention. A screw is
not a nail, but for purposes of Section 112, Paragraph 6, it is equivalent structure in the context of
the invention, though it is not the ‘structural equivalent’ of a nail.” IMS Tech, 206 F.3d at 1436,
n.3.

6
construed “in accordance with one of the parties’ proposed constructions.” Def. Resp., at 2 [Doc.

# 157].

B. Supplemental Claim Construction

The “new” claim construction dispute over the ‘931 patent has arisen since the Markman

hearing in this case was held on July 2, 2007. See, e.g., Def. Letter Br. of 9/10/08, at 2-3 [Doc. #

169] (setting out nine discreet “issues” that had to be taken up in light of the parties’ expert reports).

The parties informed the court at the October 22, 2008 status conference that issues 3, 7, and 9 have

since been resolved. The court later addressed issues 2, 5, 6, and 8 in a supplemental claim

construction order, and does not address issue 4 in this Order, in light of Applied’s stipulation of

infringement as to certain claims of the ‘143 and ‘854 patents. This leaves issue 1, which relates to

claim 2 of the ‘931 patent5, for the court to resolve in the context of this motion.

1. Applicable law

In O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir. 2008), one

of the claim terms in that case required an action to occur “only if said feedback signal is above a

predetermined threshold.” Id. at 1357. The district court declined to construe “only if” because it “has

a well-understood definition, capable of being applied by both the jury and this court.” Id.

5
“With regard to Claims 1-3 of the Gravener patent, whether the claims require that the
‘projecting members’ be formed on a particular part of the valve:
a) Must the projecting members extend from the proximal side of the valve body?
Dubral Rebuttal Report at pp. 103-106.
b) Must the projecting members extend from the ‘opening of the valve body, i.e.,
instrument-contacting side of the valve body’? Tyco’s Brief in Opposition to
Applied’s Motion for Summary Judgment of Invalidity of Gravener, at p. 7.”

Doc. # 169, at p. 2.

7
At trial, the meaning of the “only if” phrase was disputed by the parties, and they presented

contradicting evidence on this point.

On appeal, the Federal Circuit held that because the “only if” phrase affected the scope of the

claim, the district court was required to construe the term. Id. at 1361-62 (“When the parties present

a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”). The

court distinguished between the “scope” and “meaning” of a word or phrase, noting that

district courts are not (and should not be) required to construe every limitation present in a
party’s asserted claims. . . Rather, claim construction is a matter of resolution of disputed
meanings and technical scope, to clarify and when necessary to explain what the patentee
covered by the claims, for use in the determination of infringement.

Id. at 1362 (internal quotation omitted).

It is undisputed that the parties raised this issue for the first time more than one year after the

Markman hearing in their motions for summary judgment. At the Markman stage, the parties did

not request construction of the term “projecting member” in the ‘931 patent, even though the phrases

immediately following this term in claims 1 and 3 (“monolithically formed on and projecting from

said valve body” and “integrally molded as part of said valve body,” respectively) were both

submitted for construction. Cl. Const. Order, at 36-37 [Doc. # 184]. The parties also do actually

really request “construction” at this time; rather, they seem to want the court to answer a series of

questions about this term. Nevertheless, because the dispute arguably goes to claim scope, the court

will address the parties’ arguments at this time.

2. “Projecting members.” Found in ‘931 patent, claim 2.

An exemplar use of this term is seen in claim 1 of the ‘931 patent, stating in part, with the

disputed term in bold:

8
 A cannula subassembly which includes a cannula housing, a cannula mounted to said cannula
housing, and a valve body mounted within said cannula housing, said valve body defining
an opening for receipt of a surgical instrument, the improvement comprising:

a plurality of projecting members monolithically formed on and projecting from

said valve body surrounding said opening.

Asserted claim 2 depends from claim 1, and adds that the “projecting members are selected from the

group consisting of splines and nubs.”

The parties’ dispute centers over whether claim 2 requires that the projecting members be

formed on the “proximal” side of the valve body. Tyco’s expert suggests that the “projecting

members” cannot perform their disclosed functions—which Tyco defines as assisting entry of a

medical instrument into the valve and preventing the instrument from damaging the valve—unless

they are located on the inner wall of the valve body (i.e., the side of the valve body that contacts the

instrument). Applied responds that the “proximal” side limitations does not appear anywhere in the

asserted claim, which imposes several requirements for the projecting members, none of which are

that the members must be located on the proximal side of the valve body.

Accepting Tyco’s construction requires the court to make two assumptions: (1) the only

functions of the “projecting members” are to assist in the insertion of a surgical instrument and

protect the valve body from damage by that instrument; and (2) the only way for the “projecting

members” to perform these functions is to be located on the proximal (instrument contacting) side

of the valve body. To support hypothesis (1), Tyco points to the following statement under the

heading “Detailed Description of the Preferred Embodiments”:

Referring to FIG. 3, the proximal end portion 16 further includes a plurality of splines 32
attached to an inner wall 34 and preferably integrally molded as part of inner wall 34 . . . The

9
 splines 32 extend in a generally longitudinal direction to assist in the insertion of an
instrument into the neck portion 26 by reducing friction and drag forces associated therewith.
Further, the splines 32 substantially prevent unwanted contact between the instrument and
the inner wall 34 of the neck 26 that may injure or puncture the body.

‘931 patent, 4:40-51.

As a general rule, “an attribute of the preferred embodiment cannot be read into the claim as

a limitation.” Burke, Inc. v. Bruno Independent Living Aids, Inc., 183 F.3d 1334, 1341 (Fed. Cir.

1999). The disclosure of two functions of the splines/projecting members in the description of a

preferred embodiment does not mean that these are the only functions of the projecting members.

Neither function is recited in claims 1 or 2. Even assuming that these are the only function the

projecting members can ever perform, the ‘931 patent contemplates in another portion of the

specification that splines 32 will be located on both the proximal and distal ends of the inner wall.

‘931 patent, 6:21-23. It is therefore difficult to credit Tyco’s argument that the projecting members

must be located on the proximal side of the valve body.

This conclusion is further bolstered by the fact that another claim of the ‘931 patent does

expressly require the projecting members to be located on the proximal side of the valve body

opening. See, e.g., ‘931 patent, claim 18, 11:20-12:12. Claim 18 also recites a functional

limitation—“guide an element passed through said circular opening of said first diameter”—which

is missing in the asserted claim. The fact that the patentees were able to limit the claims to

projecting members on the proximal side of the valve body when they so chose supports the

conclusion that no such limitation should be read into asserted claim 2. See Edward Lifesciences

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 LLC v. Cook Inc., 582 F.3d 1322, 1330 (Fed. Cir. 2009) (“When different words or phrases are used

in separate claims, a difference in meaning is presumed.”).6

The court therefore rejects Tyco’s argument that the projecting members must be limited to

those formed on, or project only from, the “proximal” side of the valve body. Because no further

construction of this term was requested, the jury will be instructed that “projecting members” mean

exactly that: “projecting members.”

C. Infringement Analysis
.
After a careful and thorough review of the record and the arguments presented, the court is

persuaded that there are genuine issues of material fact as to whether claim 2 of the ‘931 patent is

infringed. Summary judgment is therefore inappropriate at this time.7 However, as already noted,

Applied has stated it would consider stipulating to infringement of claim 2 after the term “projecting

members” is construed. Nothing in this Order should be taken to discourage such a stipulation.

IT IS THEREFORE ORDERED that Plaintiff Tyco Healthcare LP’s Motion for Summary

Judgment of Infringement [Doc. # 143] is DENIED.

SIGNED this the 19th day of February, 2010.

____________________________________
KEITH F. GIBLIN
UNITED STATES MAGISTRATE JUDGE
6
Although Edward Lifesciences goes on to state that “simply noting the difference in the
use of claim language does not end the matter” where the specification and prosecution history
indicate that a contrary reading is appropriate, there is no such evidence here.
7
It goes without saying, of course, that the testimony of the parties’ experts at trial will be
limited only to those opinions timely and fairly disclosed in their reports.

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