United States District Court, W.D. Texas, Austin Division
W. H. WALL FAMILY HOLDINGS, LLLP, PLAINTIFF,
CELONOVA BIOSCIENCES, INC., DEFENDANT.
MEMORANDUM OPINION AND ORDER REGARDING CLAIMS
YEAKEL UNITED STATES DISTRICT JUDGE
the court in the above-styled and numbered cause are
Plaintiff W. H. Wall Family Holdings LLLP's Opening Claim
Construction Brief filed December 27, 2018 (Doc. #46);
Defendant Celonova Biosciences, Inc.'s Opening Claim
Construction Brief filed December 27, 2018 (Doc. #45);
Plaintiffs Responsive Claim Construction Brief filed January
11, 2019 (Doc. #47); Defendant's Responsive Claim
Construction Brief filed January 12, 2019 (Doc. #49); the
parties' Revised Joint Claim Construction Statement filed
January 18, 2019 (Doc. #51); and the parties'
court held a claim-construction hearing on January 22, 2019.
See Markman v. Westview Instruments, Inc., 52 F.3d
967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517
U.S. 370 (1996). After considering the patent and its
prosecution history, the parties' claim-construction
briefs, the applicable law regarding claim construction, and
argument of counsel, the court now renders its order with
regard to claim construction.
court renders this memorandum opinion and order to construe
Claim 30 of United States Patent No. 6, 974, 475 ("the
'475 Patent") entitled "Angioplasty
stent." Plaintiff W. H. Wall Family Holdings LLLP
("Wall") is the owner of the '475 Patent, which
relates to a prosthesis in the form of a stent. Specifically,
the asserted claim of the '475 Patent is directed to a
method of placement of a stent for maintaining a minimum
opening through an artery "or the like." Wall
alleges that Defendant Celonova Biosciences, Inc.
("Celonova") infringes claim 30 of the '475
Patent through making, using, offering for sale, selling, or
importing infringing products.
Legal Principles of Claim Construction
infringement is a two-step process. See Markman v.
Westview Instruments, Inc., 517 U.S. 370, 384 (1996)
("[There are] two elements of a simple patent case,
construing the patent and determining whether infringement
occurred . . . ."). First, the meaning and scope of the
relevant claims must be ascertained. Id. Second, the
properly construed claims must be compared to the accused
device. Id. Step one, claim construction, is the
current issue before the court.
court construes patent claims without the aid of a jury.
See Markman, 52 F.3d at 979. The "words of a
claim 'are generally given their ordinary and customary
meaning.'" Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005) (enbanc) (quoting Vitronics
Corp v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)). "[T]he ordinary and customary meaning of a
claim term 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 1313. The
person of ordinary skill in the art is deemed to have read
the claim term in the context of the entire patent.
Id. Therefore, to ascertain the meaning of a claim,
a court must look to the claim, the specification, and the
patent's prosecution history. Id. at 1314-17;
Markman, 52 F.3d at 979.
language guides the court's construction of a claim term.
Phillips, 415 F.3d at 1314. "[T]he context in
which a term is used in the asserted claim can be highly
instructive." Id. Other claims, asserted and
unasserted, can provide additional instruction because
"terms are normally used consistently throughout the
patent. . . ." Id. Differences among claims,
such as additional limitations in dependent claims, can
provide further guidance. Id. at 1314-15.
must also be read "in view of the specification, of
which they are a part." Markman, 52 F.3d at
979. "[T]he 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.'" Phillips, 415 F.3d at 1315
(quoting Vitronics, 90 F.3d at 1582). In the
specification, a patentee may define a term to have a meaning
that differs from the meaning that the term would otherwise
possess. Id. at 1316. In such a case, the
patentee's lexicography governs. Id. The
specification may also reveal a patentee's intent to
disavow claim scope. Id. Such intention is
dispositive of claim construction. Id. Although the
specification may indicate that a certain embodiment is
preferred, a particular embodiment appearing in the
specification will not be read into the claim when the claim
language is broader than the embodiment. Electro Med.
Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994).
prosecution history is another tool to supply the proper
context for claim construction because it demonstrates how
the inventor understood the invention. Phillips, 415
F.3d at 1317. A patentee may also serve as his own
lexicographer and define a disputed term in prosecuting a
patent. Home Diagnostics, Inc. v. LifeScan, Inc.,
381 F.3d 1352, 1356 (Fed. Cir. 2004). Similarly,
distinguishing the claimed invention over the prior art
during prosecution indicates what a claim does not cover.
Spectrum Int'l, Inc. v. Sterilite Corp., 164
F.3d 1372, 1378-79 (Fed. Cir. 1988). The doctrine of
prosecution disclaimer precludes a patentee from recapturing
a specific meaning that was previously disclaimed during
prosecution. Omega Eng'g, Inc. v. Raytek Corp.,
334 F.3d 1314, 1323 (Fed. Cir. 2003). A disclaimer of claim
scope must be clear and unambiguous. Middleton, Inc. v.
3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002).
"less significant than the intrinsic record in
determining the legally operative meaning of claim
language," the court may rely on extrinsic evidence to
"shed useful light on the relevant art."
Phillips, 415 F.3d at 1317 (internal quotations
omitted). Technical dictionaries and treatises may help the
court understand the underlying technology and the manner in
which one skilled in the art might use a claim term, but such
sources may also provide overly broad definitions or may not
be indicative of how a term is used in the patent. See
Id. at 1318. Similarly, expert testimony may aid the
court in determining the particular meaning of a term in the
pertinent field, but "conclusory, unsupported assertions
by experts as to the definition of a claim term are not
useful to a court." Id. Generally, extrinsic
evidence is "less reliable than the patent and its
prosecution history in determining how to read claim terms .
. . ." Id. Extrinsic evidence may be useful
when considered in the context of the intrinsic evidence,
id. at 1319, but it cannot "alter a claim
construction dictated by a proper analysis of the intrinsic
evidence," On-Line Techs., Inc. v. Bodenseewerk
Perkin-Elmer GmbH, 386 F.3d 1133, 1139 (Fed. Cir. 2004).
parties dispute the construction of five terms. Each disputed
term is discussed separately.
parties' proposed constructions of this term, as used in
Claim 30 of the '475 Patent, are listed in the following
Wall's Proposed Construction
Celonova's Proposed Construction
"a selectively evaporable covering; a
temporary or permanent layer of a substance applied
to a surface"
Alternatively, no construction necessary beyond
Alternatively, "material applied to the mesh
in order to define openings throughout the
argues that the term "coating" is indefinite,
because it is unclear in Claim 30 whether the
"coating" itself is "defining a plurality of
openings throughout the mesh." Alternatively, Celonova
argues that, if the term is not indefinite, the term should
be construed to mean that the coating is a material applied
to the mesh in order to define openings throughout the mesh.
Wall contends that the term "coating" would be
understood by a person of ordinary skill in the art and
should be given its plain and ordinary meaning, or the term
should be construed as "a selectively evaporable
covering; a temporary or permanent layer of a substance
applied to a surface." The court agrees with
Celonova's construction of the term.
is indefinite if it does not reasonably inform a person of
ordinary skill in the art of the claim scope. IPXL
Holdings, L.L.C. v. Amazon. com, Inc.,430 F.3d 1377,
1383-84 (Fed. Cir. 2005). "Claim language employing
terms of degree has long been found definite where it
provided enough certainty to one of skill in the art when
read in the context of the invention." Interval
Licensing LLC v. AOL, Inc.,766 F.3d 1364, 1370 (Fed.
Cir. 2014). Because claim terms are normally used
consistently throughout the patent, the usage of a term in
one claim can often illuminate the meaning of the same term
in other claims. Phillips, 415 F.3d at 1314; see
also Rexnord Corp. v. Laitram Corp.,274 F.3d 1336, ...