10 I-FLOW LLC, ET AL., CASE NO. SACV 12-01064-AG (RNBx)...

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UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

I-FLOW LLC, ET AL.,

Plaintiff,

v.

PROGRESSIVE MEDICAL, INC.,

Defendant.

_________________________________

))))))))))))))))

CASE NO. SACV 12-01064-AG (RNBx)

ORDER CONSTRUING CLAIMS ANDDENYING PLAINTIFF’S MOTIONFOR SUMMARY JUDGMENT OFINFRINGEMENT OF U.S. PATENTNO. 5,284,481

Case 8:12-cv-01064-AG-RNB Document 73 Filed 08/21/13 of 26 Page ID #:1377

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INTRODUCTION

Plaintiffs I-Flow, LLC, Kimberly-Clark Worldwide, Inc., and Kimberly-Clark Global

Sales, LLC (“Plaintiffs”) seek summary judgment that Defendant Progressive Medical, Inc.

(“Defendant”) has infringed claims 1 and 15 of U.S. Patent No. 5,284,481 (the “‘481 Patent”)

through sales of the AccuFlo infusion pump. To resolve the Motion, the Court must construe

three disputed terms. In this Order, the Court determines the proper construction of each

disputed term and DENIES the Motion.

LEGAL STANDARD

1. CLAIM CONSTRUCTION

Claim construction is an issue of law “exclusively within the province of the court.”

Markman v. Westview Instruments, 517 U.S. 370, 372 (1996). Such construction begins with an

analysis of the claim language itself, Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d

1323, 1331 (Fed. Cir. 2001), since the claims define the scope of the claimed invention. Phillips

v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). In construing the claim language, the

Court begins with the principle that “the words of a claim are generally given their ordinary and

customary meaning.” Id. at 1312 (internal quotation marks omitted).

“The ordinary and customary meaning is the meaning that the [claim] term would have to

a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “[T]he

person of ordinary skill in the art is deemed to read the claim term not only in the context of the

particular claim in which the disputed term appears, but in the context of the entire patent,

including the specification.” Id. Where the patent itself does not make clear the meaning of a

claim term, courts may look to “those sources available to the public that show what a person of

skill in the art would have understood the disputed claim language to mean,” including the

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prosecution history and “extrinsic evidence concerning relevant scientific principles, the

meaning of technical terms, and the state of the art.” Id. at 1314.

“In some cases, the ordinary meaning of claim language as understood by a person of

skill in the art may be readily apparent even to lay judges, and claim construction in such cases

involves little more than the application of the widely accepted meaning of commonly

understood words.” Id. “In such circumstances general purpose dictionaries may be helpful.”

Id. In other cases, claim terms will not be given their ordinary meaning because the

specification defines the term to mean something else. Novartis Pharms. Corp. v. Abbott Labs.,

375 F.3d 1328, 1334 (Fed. Cir. 2004); Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed.

Cir. 2003). For the specification to give a term a special meaning, it must set out the definition

in a manner sufficient to provide notice of that meaning to a person of ordinary skill in the art.

In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).

2. DIRECT INFRINGEMENT OF AN APPARATUS PATENT

Summary judgment is appropriate only where the record, read in the light most favorable

to the non-moving party, indicates that “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); see Celotex

Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). Material facts are those necessary to the proof or

defense of a claim, as determined by reference to substantive law. Anderson v. Liberty Lobby,

Inc., 477 U.S. 242, 248 (1986). A factual issue is genuine “if the evidence is such that a

reasonable jury could return a verdict for the nonmoving party.” Id. In deciding a motion for

summary judgment, “[t]he evidence of the nonmovant is to be believed, and all justifiable

inferences are to be drawn in his favor.” Id. at 269.

Determining patent infringement is a two-step process. Cybor Corp. v. FAS Techs., Inc.,

138 F.3d 1448, 1454 (Fed. Cir. 1998). “First, the court determines the scope and meaning of the

patent claims asserted . . . and then the properly construed claims are compared to the allegedly

infringing device.” Id. (citations omitted). “Whether an accused device or method infringes a

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claim either literally or under the doctrine of equivalents is a question of fact.” Schoell v. Regal

Marine Indus., Inc., 247 F.3d 1202, 1207 (Fed. Cir. 2001). A patentee claiming infringement

must present proof that the alleged infringing device meets “each and every claim limitation.”

Forest Labs., Inc. v. Abbott Labs., 239 F.3d 1305, 1310 (Fed. Cir. 2001). If a patentee meets this

initial burden, the burden shifts to the accused infringer to establish that summary judgment is

not proper “either by providing evidence that would preclude a finding of infringement, or by

showing that the evidence on file fails to establish a material issue of fact essential to the

patentee’s case.” Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir.

2001).

ANALYSIS

1. CLAIM CONSTRUCTION

The ‘481 Patent is titled “Compact Collapsible Infusion Apparatus.” The “liquid infuser

apparatus comprises an elastic reservoir comprising an elastic sleeve mounted on a substantially

cylindrical support member mounted within a spherical chamber of a collapsible housing.”

(‘481 Patent 1:63-66.) Figure 1 of the ‘481 Patent shows a preferred embodiment of the

invention:

(‘481 Patent, Fig. 1.) Element 12 in Figure 1 is an outer collapsible non-stretchable housing or

shell. (Id. 2:46-48.) Figure 2 of the ‘481 Patent shows a cross-section of the infusion apparatus:

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In Figure 2, the elastic membrane or bladder 20 is empty and unfilled, and thus flush with the

central support member 18. (Id. 2:63-66.) Collapsible housing 12 is depicted as being

substantially spaced apart from bladder 20 and support member 18, with coaxial openings

defined by tubular sleeve extensions 14 and 16, through which the ends of the support member

extend. (Id. 2:59-62.) A circular groove 22 and O-ring 26 work together to clamp the elastic

bladder 20 and collapsible housing 12 to the support member 18. (Id. 3:3-7.)

1.1 The Disputed Terms

The parties dispute the construction of three limitations that appear in claims 1 and 15.

Claims 1 and 15, with the disputed terms in bold, are as follows:

1. A compact portable apparatus for dispensing a liquid under pressure at a

substantially constant flow rate over a period of time comprising:

an elongated generally cylindrical support member; elongated elastic sleeve means

mounted and sealingly secured at fixed spaced longitudinal positions on

said support member for defining a substantially zero non-pressurized

volume pressure reservoir for holding a liquid in a pressurized state for

dispensing therefrom;

housing means comprising collapsible non-stretchable housing means for containing

said support member and said pressure reservoir for enabling said pressure

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reservoir to expand naturally and for confining said reservoir to fill

concentrically about said support member, said collapsible non-stretchable

housing means loosely positioned around said sleeve means and defining a

chamber between said sleeve means and said collapsible non-stretchable

housing means;

inlet means for introducing a liquid into said elastic pressure reservoir; and

outlet means for dispensing liquid from said pressure reservoir to a selected site.

15. A compact collapsible infusion apparatus for dispensing a liquid under pressure

at a predetermined substantially constant flow rate over a period of time

comprising:

an elongated generally cylindrical support member having inlet means including an

inlet port in one end of said member, and outlet means including an outlet port

in the other end of said member;

elongated elastic sleeve means mounted in non-stretched surface contact and

sealingly secured at fixed spaced longitudinal positions on said support

member for defining a substantially zero non-pressurized volume pressure

reservoir for holding a liquid in a pressurized state for dispensing therefrom;

first housing means including a collapsible shell enclosing said support member and

said pressure reservoir, said housing means having a size and shape for

enabling said pressure reservoir to expand naturally and for confining said

reservoir to fill concentrically about said support member, said collapsible

shell loosely positioned around said sleeve means and defining a chamber

between said sleeve means and said collapsible shell;

inlet means in one end of the said support member for introducing a liquid into said

elastic pressure reservoir; and

outlet means in the other end of said support member for dispensing liquid from said

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pressure reservoir to a selected site.

(‘481 Patent Ex Parte Reexamination Certificate (“‘481 Reexam Certificate”) (emphasis added).)

1.2 “mounted . . . and sealingly secured at fixed spaced longitudinal

positions on said support member”

Plaintiffs’ Construction Defendant’s Construction

“mounted and sealingly secured at positions

along the longitudinal axis of the support

member with space there between”

“mounted and sealingly secured on the

support member at spaced longitudinal

positions which are fixed relative to each

other”

This limitation has been construed twice before, and Plaintiff proposes that the Court

follow those previous constructions. In I-Flow Corp. v. Apex Med. Techs., Inc., No. 3:07-CV-

1200 DMS (NLS) (S.D. Cal.) (“Apex”) (filed June 29, 2007), the court construed “secured at

fixed spaced longitudinal positions” as “secured at positions along the longitudinal axis of the

support member with space there between.” (Apex Claim Construction Order (“Apex Order”),

Decl. of Boris Zelkin in Supp. of Pl.’s Mot. (“Zelkin Decl.”) Ex. 5.) But the Apex court noted

that the constructions proposed by each party were “substantially the same.” So, the Apex court

did not decide the dispute the parties present here. (Id.)

In I-Flow Corp. v. Wolf Med. Supply, Inc., No. 8:09-CV-0762 AG (MLGx) (C.D. Cal.)

(“Wolf”) (filed July 6, 2009), this Court, in granting the motion for preliminary injunction,

agreed with the Apex court’s construction, but clarified that “[t]his finding applies only for this

Motion, and shall not prevent the parties from requesting a different construction of claim terms

at a later time.” (Wolf Prelim. Inj. Order (“Wolf Order”), Zelkin Decl. Ex. 24 at 117). See Jack

Guttman, Inc. v. Kopykake Enters., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (a district court may

issue “only a tentative claim construction and [ ] base its resolution of a preliminary injunction

motion upon that tentative claim construction”).

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Further, because the Federal Circuit stayed the preliminary injunction pending the

resolution of the Wolf defendant’s appeal of the injunction, and the parties settled the action

before the Federal Circuit reached the merits, the Court does not have the benefit of the Federal

Circuit’s analysis of its preliminary constructions from the Wolf action. For all of these reasons,

the Court will not give any preclusive weight to its own previous preliminary constructions.

In construing the claims, “the court should look first to the intrinsic evidence of record,

that is, the patent itself, including the claims, the specification and, if in evidence, the prosecution

history,” because the intrinsic evidence “is the most significant source of the legally operative

meaning of disputed claim language.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582

(Fed. Cir. 1996). The specification “is the single best guide to the meaning of a disputed term.”

Id. at 1582. But, the court should not import limitations from the specification into the claims.

Phillips, 415 F.3d at 1320, 1323. Courts may also rely on extrinsic evidence, such as expert and

inventor testimony, dictionaries, and learned treatises. Id. at 1317. However, extrinsic evidence

is “less significant” and “less reliable” than the intrinsic record in construing a claim term. Id. at

1318.

The disputed phrase occurs in the claim limitation describing the elastic sleeve means.

There is a separate limitation describing the support member. That there are two separate

limitations is important because Defendant’s arguments focus on the structure of the support

member, and not the manner in which the elastic sleeve is mounted. The claim language itself,

“elongated elastic sleeve means mounted and sealingly secured at fixed spaced longitudinal

positions on said support member” (claim 1) and “elongated elastic sleeve means mounted in

non-stretched surface contact and sealingly secured at fixed spaced longitudinal positions on said

support member” (claim 15) supports Plaintiffs’ proposed construction. The term “fixed,” and

the terms “spaced” and “longitudinal,” modifies the term “positions,” rather than modifying

“spaced,” as Defendant argues. That is, the claim language does not say “secured at longitudinal

positions of fixed spacing.” The “fixed” in the claim language therefore requires only that the

housing and bladder be secured to the support member at fixed positions, such as through the

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groove and O-ring illustrated in figure 2, rather than being mounted in a manner that can move

relative to the support member, perhaps such as by a O-ring not seated in a groove.

Defendant argues that the specification also supports its position because it nowhere

describes or illustrates “attachment points of an elastic sleeve to a support member . . . being

variable in distance relative to one another,” as they would be on an “extensible support

member.” (Opp’n 10.) Defendant further argues that the specification implicitly requires fixed

spacing between the attachment points because it expressly describes a non-extendable support

member by incorporating by reference the description of the support members in two other

patents:

The infuser pump, designated generally by the numeral 10, is collapsible and

comprises an outer collapsible substantially non-stretchable housing or shell 12,

protectively mounted over a combined reservoir and support assembly constructed

substantially like that set forth in U.S. Pat. Nos. 5,080,652, dated Jan. 14, 1992 [“the

‘652 Patent”] and 5,105,983, dated Apr. 21, 1992 [“the ‘983 Patent”], both of which

are incorporated herein by reference as though fully set forth.

(Opp’n 10-11; ‘481 Patent 2:45-53). Neither the ‘652 nor ‘983 Patents are part of the same

family as the ‘481 Patent, but when a document is “incorporated by reference” into a patent, the

referenced document becomes part of the patent as if it were explicitly contained therein.

Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001) (citing

Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000).

Defendant argues, correctly, that neither the ‘652 nor ‘983 Patents disclose an extensible

support member or attachment points that are variable in distance relative to one another. The

specification of the ‘652 Patent states that “support member 28 is of a fixed length and holds the

ends of the [elastic] sleeves at a fixed position.” (Opp’n 11; ‘652 Patent 4:41-43 (emphasis

added); ‘983 Patent.) Figures 1 and 2 below illustrate the ‘652 Patent’s pump when unfilled (Fig.

1) and filled (Fig. 2):

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(‘652 Patent, Figs. 1 and 2.) Figures 1 and 2 illustrate inner sleeve 22 and outer sleeves 24 and

26 that expand, when filled, to conform to the shape of housing 12 and fold over at O-rings 76

and 78 on support member 28. (Id. 3:56-60, 4:32-41.)

Similarly, the other patent incorporated by reference, the ‘983 Patent, disclosed a fixed-

length support member. During the prosecution of the ‘983 Patent, the applicant distinguished

the invention over a cited prior art reference that had “a tubular member 56 and a piston member

58 which slides on or in the tubular member from a non-extended position . . . to the extended

position” when the bladder is filled with fluid. (U.S. Patent No. 3,961,725 to Clark (“Clark

‘725”) 5:16-19.) In response, the ‘983 Patent inventors distinguished that reference by arguing

that it “disclosed a ‘support member’ which ‘moves axially and telescopes’ into another member

‘when the bladder is pressured,’” unlike the fixed-length support member of the ‘983 Patent.

(Opp’n 11; ‘983 Patent Response to Office Action (“‘983 Response”), Decl. of Robert A. Conley

in Supp. of Def.’s Opp’n (“Conley Decl.”) Ex. 9 at 63 (emphasis added).

Thus, it is clear that the ‘481 Patent’s specification incorporates by reference the

description of a fixed length support member, but does not specifically either disclose or disclaim

an extensible support member. The ‘481 Patent does not incorporate by reference the disclaimer

from the unrelated ‘983 Patent’s prosecution history. So, Defendant’s deep dive into the

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incorporation by reference does not resolve the claim construction question. Again, the limitation

being interpreted primarily describes the elastic sleeve, not the support member. Modifying the

word “positions” with the adjectives “fixed” and “spaced” in a phrase describing where and how

the elastic sleeve is attached to the support member would be a curiously indirect way of

claiming a support member of fixed length, when it could have been done expressly in the claim

limitation concerning the support member.

And even if the disputed limitation called for deciding whether the support member was

fixed or extendable, the Federal Circuit has repeatedly cautioned against importing limitations

from the disclosed embodiments into the claims. Phillips, 415 F.3d at 1320, 1323; Nazomi

Communs., Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005) (“[T]he court may

conclude that the scope of the various claims may differ, some embracing different subject matter

than is illustrated in the specific embodiments in the specification.”); Gemstar-TV Guide Int’l,

Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1366 (Fed. Cir. 2005) (“[T]he disclosure in the

written description of a single embodiment does not limit the claimed invention to the features

described in the disclosed embodiment.”).

Returning our focus to the elastic sleeve that is the primary subject of the limitation in

dispute, the specification teaches that the bladder and housing are secured to the housing in a way

that prevents them from slipping or sliding along the support member. The specification states

that “[t]he central cylindrical support member or mandrel 18 includes circular grooves . . . at the

ends thereof into which portions of the sleeve 20 and housing 12 are biased by means of a pair of

O-rings . . . .” (‘481 Patent 3:3-7.) The specification further states that “[t]he ends of the central

support member include reduced diameter extension 30 and 32 . . . which extend over and

protectively cover the O-ring connections or clamping of the elastic bladder and collapsible

housing to the support member.” (Id. 3:21-26 (emphasis added).) This teaches that the

bladder/housing is fixed relative to its attachment points on the support member, but is silent on

whether the spacing between the points is fixed.

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Turning to extrinsic evidence, Defendant urges that the plain meaning of the word “fixed”

be adopted: “definitely and permanently placed or assigned; stationary or unchanging in relative

position; definite, permanent, lasting.” (Opp’n 10; The New Shorter Oxford English Dictionary,

1993 Edition (“Oxford English Dictionary”), Conley Decl. Ex. 13 (emphasis added).) Even

assuming the second part of the definition (“relative position”) applies, the question remains:

relative to what? Plaintiffs say fixed relative to the position on the support member; Defendant

says fixed relative to each other. The dictionary definition can support either proposed

construction, and is not helpful for choosing between them.

Defendant also proffers the testimony of Emil Soika, an inventor of the ‘481 Patent. Soika

states that, while developing the subject matter of the ‘481 Patent, he never considered

“developing or implementing an extensible support member” or “any configuration by which the

attachment points of an elastic sleeve to a support member would be variable in distance relative

to one another.” (Opp’n 11; Soika Decl. 6.) Soika further declared that “[s]uch features were not

part of my invention reflected in the ‘481 patent[.]” (Soika Decl. 6.) Soika testified that he never

intended to develop a non-extensible support member. Soika’s testimony is not material: “[t]he

subjective intent of the inventor when he used a particular term is of little or no probative weight

in determining the scope of a claim.” Markman, 52 F.3d 967, 985 (Fed. Cir. 1995).

Therefore, the Court rejects Defendant’s proposal to add a “fixed relative to each other”

limitation to the claims. To clarify the construction in light of the arguments raised, the Court,

rather than adopting verbatim the construction from Wolf as proposed by Plaintiff, construes the

phrase “secured at fixed spaced longitudinal positions on said support member” to mean:

“secured at positions on the support member such that they do not slip or slide along the support

member, and are spaced apart from each other on the lengthwise axis of the support member.”

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1.3 “for confining said reservoir to fill concentrically about said support

member”


“for confining the reservoir to fill evenly in a

spherical manner from the support member”

“for confining the reservoir in order to cause

the reservoir to fill concentrically about the

support member”

The context for the disputed phrase in claim 1 is “collapsible non-stretchable means for

containing said support member and said pressure reservoir for enabling said pressure reservoir to

expand naturally and for confining said reservoir to fill concentrically about said support

member[.]” (‘481 Reexam Certificate 1:35-39.) Claim 15 similarly provides that “first housing

means includes a collapsible shell enclosing said support member and said pressure reservoir,

said housing means having a size and shape for enabling said pressure reservoir to expand

naturally and for confining said reservoir to fill concentrically about said support member[.]” (Id.

2:27-31.)

The language of the parties’ proposed constructions does not capture the extent of the

disagreement reflected in their briefs. The heart of the dispute appears to be the nature of the

difference between Plaintiff’s “confining the reservoir to fill” and Defendant’s “confining the

reservoir in order to cause the reservoir to fill.” In other words, to what extent does the

confinement provided by the housing cause the reservoir to fill into a particular shape?

Plaintiffs argue that “[e]very embodiment of the ‘481 Patent shows the housing defining

the bounds of the reservoir within. There are no embodiments where the reservoir is shown

outside of the space defined by the housing.” (Id.) Plaintiffs’ argument, which adds a

minimizing gloss not immediately apparent from their proposed construction, attempts to demote

the disputed phrase to mean merely that the housing is outside of the reservoir. Plaintiffs’ attempt

to avoid any causation requirement is contradicted by the words of the claim itself: “confining the

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reservoir to fill concentrically” itself connotes some degree of causation. That does not mean

merely that the housing is outside of the reservoir. The specification uses the term “confining” in

this context:

The collapsible housing 12 has a substantially spherical configuration for confining

and guiding the inflatable reservoir or bladder into a concentric position around the

central support member, and enabling it to expand naturally in a spherical

configuration as will be described.

(‘481 Patent 2:54-59 (emphasis added).) Plaintiffs make a distinction between the terms

“confining” and “guiding,” arguing that “the patent teaches that in certain embodiments, the

housing can perform both of these distinct functions - 1) ‘confine’ and 2) ‘guide’ the reservoir,”

but that the inventors of the ‘481 Patent only chose to claim the “confining” function. (Opp’n 11,

12.) Plaintiffs analogize the housing “confining” the bladder to a fence “confining” an animal to

its pen, which “does not guide the movement of the animal within the pen[.]” (Id. 12.) Because

the “expanding reservoir does not even come into contact with the housing during a substantial

portion of the filling process[,]” Plaintiffs conclude that “a housing that does not contact the

filling reservoir cannot guide or cause that reservoir to fill in a particular manner.” (Id. (emphasis

added).)

It is true that if the housing never contacted the reservoir, it could not guide it, but it would

also not confine it in any meaningful sense. A fence “confines” not just by being outside of

something, but by preventing things from moving past the fence. Plaintiff in fact does not

contend that the housing never actively confines: it only contends that in the preferred

embodiment, the housing does not affect the shape of the reservoir during a substantial portion

of the filling process. And, that contention is correct. Consistent with the specification’s

description of the housing as both “collapsible” and “non-stretchable” (‘481 Patent 6:26-27),

figures 1 and 2 show substantial space between housing 12 and bladder 20 when unfilled, and it is

clear that the housing could not affect the shape of the reservoir until the reservoir has expanded

substantially:

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Turning to extrinsic evidence, Defendant points to the dictionary definition of “confine”:

“keep in a place, within or to limits or a defined area; restrict.” (Oxford English Dictionary,

definition 3 of “confine,” Conley Decl. Ex. M.) That definition connotes cause and effect,

consistent with the words of the claims and the specification. But to the extent Defendant’s “to

cause” language suggests that the housing needs to actively guide the reservoir through the entire

filling process, that contention must be rejected. As Plaintiffs note, and as follows from the

nature of the housing and the figures showing substantial space between the bladder and housing

when the bladder is unfilled, the “expanding reservoir does not even come into contact with the

housing during a substantial portion of the filling process.” (Reply 12.) Therefore, if

Defendant’s construction requires active confinement or guiding throughout the filling process, it

would exclude preferred embodiments, which is “rarely, if ever, correct.” Vitronics, 90 F.3d at

1583.

In sum, the text of the parties’ proposed constructions do not seem to adequately account

for the important nuance in the arguments they raise. The claims appear to describe a multi-stage

filling process insofar as the housing’s “confining to fill concentrically” function is concerned:

initial “natural expansion,” followed by confinement by the collapsible, non-stretchable housing

so that the bladder remains concentric around the support member. The Court interprets the

“confining” limitation to be directed to the terminal portion of the filling process: where, in its

substantially expanded position, the reservoir is in contact with, and confined by, the housing.

Therefore, the Court construes “for confining said reservoir to fill concentrically about said

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support member” to mean “for confining said reservoir to fill concentrically about said support

member when the reservoir is filled substantially to the volume of the housing.”

1.4 “loosely positioned around”


plain and ordinary meaning indefinite under 35 U.S.C. § 112, ¶ 2;

otherwise, “positioned within about one-

thousandths (0.001) of an inch around”

Fifteen years after the ‘481 Patent issued, Plaintiff amended the language in claims 1 and

15 to include the phrase “loosely positioned around.” (Opp’n 16; ‘481 Reexam Certificate 1:41-

42.) The phrase occurs in the following context: “said collapsible non-stretchable housing means

loosely positioned around said sleeve means and defining a chamber between said sleeve means

and said collapsible non-stretchable housing means” (claim 1) and “said collapsible shell loosely

positioned around said sleeve means and defining a chamber between said sleeve means and said

collapsible shell” (claim 15). (Id. 1:39-43, 2:31-34.) Plaintiffs propose that this limitation be

construed to have its plain and ordinary meaning, as it is not a technical or specialized term.

(Mot. 13.)

The Apex court previously rejected a construction that was similar to, although less

restrictive than, Defendant’s proposed construction: “positioned to surround the sleeve means in a

manner that is not tight fitting and that is considerably less tight fitting than a clearance of on the

order of about one-thousandth[] of an inch.” The Apex court held that this construction

“impose[d] unnecessary limitations on the claims.” (Mot. 13; Apex Reexam Claim Construction

Order (“Apex Reexam Order”), Zelkin Decl. Ex. 6 at 54-55.) Instead, the Apex court found that

“one of ordinary skill in the art would construe the amended claim language according to its plain

meaning” and adopted Plaintiffs’ construction. (Apex Reexam Order, Zelkin Decl. Ex. 6 at 55.)

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Defendant argues that because “loosely positioned around” is a term of degree, it must be

given definite limits or else be held indefinite. (Opp’n 16-17.) Defendant’s proposed “definite

limit” of about one-thousandth of an inch is derived from the ‘983 Patent (one of the patents

incorporated by reference into the specification of the ‘481 Patent). The ‘983 Patent discloses

that:

Upon assembly, the elastomeric tube 62 is preferably slide or slip fitted on the support

member 64 between surfaces 66 and 68, and clamped in place by means of clamps 100

and 102. The member 62 is preferably slip fitted somewhat loosely with about one-

thousandth[] (0.001) of an inch on support member 64, and not stretched either

radially or longitudinally.

(‘983 Patent 3:29-35 (emphasis added).) Thus, the ‘983 Patent—which again, is not an ancestor

or descendant of the ‘481 Patent—does define the term “loosely.” But, Defendant again attempts

to use a description of one part of a device from a patent incorporated by reference to limit a

different part of the device in the ‘481 Patent’s claims. The ‘983 Patent uses the term “loosely”

in the context of an elastomeric tube, or bladder, being “slip fitted” on a support member, not in

terms of a housing being positioned around the elastic sleeve / bladder, as in the ‘481 Patent.

(‘983 Patent 3:29-30; ‘481 Patent 2:63-68.) Figure 11 of the ‘983 Patent illustrates a plurality of

elastic sleeves “loosely positioned around” a support member:

Figure 11 depicts inner sleeve 152 and outer sleeve 202 (dashed lines), which are slip fitted

around support member 154 when unfilled. (‘983 Patent 5:55-59.)

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By contrast, the claim term under consideration describes the housing being loosely

positioned around the elastic sleeve, and the ‘481 Patent’s specification makes clear that the

housing is not slip fit on the elastic sleeve. See also ‘418 Patent Figs. 1 and 2. The housing in

the ‘481 Patent is described as “collapsible” and “non-stretchable.” (‘481 Patent 6:26-27.) This

suggests that the housing is uniformly very close to the reservoir only when the reservoir is filled

to the point where it is actively confined by the housing. By contrast, the ‘983 Patent teaches that

the bladder (again, an entirely different component) is one-thousandth of an inch away from the

support member when the bladder is completely empty. There is no basis to import a precise

numeral limitation from the specification of a different patent, when that numerical limitation is

not even describing the same structure as under consideration here, and there is no basis to

believe that a person of ordinary skill in the art would believe “loosely” would mean about a

thousandth of an inch in this context.

To support its alternative position, that the term is indefinite, Defendant submitted a

declaration from Freddie Lee (“Lee”), the inventor of the accused AccuFlo product. Lee argues

that in the field of the ‘481 Patent, there is no plain and ordinary meaning of “loosely positioned

around.” (Lee Decl. 14 (“the ‘481 Patent sheds no light on what the boundaries of that phrase

may be.”)) Lee asks: “How loose is loose enough? How loose is too loose?” (Id.) Lee does not

tie his opinions directly to any particular evidence about an understanding within the industry,

and does not account for the specification’s description of the housing. Despite his technical

knowledge Lee’s arguments are of the type an attorney would make. And they are being made by

an interested party. The Court accords them little weight. “[C]onclusory, unsupported assertions

by experts as to the definition of a claim term are not useful to a court.” Phillips, 415 F.3d at

1318.

Defendant also argues that the indefiniteness of “loosely positioned around”—a phrase

that was added to the claims fifteen years after the patent issued— is supported by the fact that

the specification does not use that phrase, or even the word “loose.” (Opp’n 18.) But the phrase

accurately describes the positioning of the housing as shown in the figures in the patent as

originally issued. Defendant notes that “[i]t is well established that patent drawings do not define

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the precise proportions of the elements and may not be relied on to show particular sizes if the

specification is completely silent on the issue.” (Mot. 18-19, n.6 (quoting Hockerson-

Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000).) That is so, but

Defendant ignores that the specification teaches that the housing is “collapsible” and

“substantially non-stretchable.” Such a housing must by its very nature fit loosely when the

reservoir is unfilled.

In Reply, Plaintiffs persuasively argue that Defendant’s proposed construction suggests

that “any distance greater than ‘about one-thousandth[]’ would still be ‘loosely positioned’” and

that 0.001 inch “appears to set a minimum.” (Mot. 15.) The Court agrees: if Defendants think

that clearance of 0.001 inch is loose, than anything greater than that is even looser.

Definiteness problems often arise when words of degree are used in a claim. That

some claim language may not be precise, however, does not automatically render a

claim invalid. When a word of degree is used the district court must determine

whether the patent’s specification provides some standard for measuring that

degree. The trial court must decide, that is, whether one of ordinary skill in the art

would understand what is claimed when the claim is read in light of the

specification.

Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Here,

the specification does provide a standard for defining “loosely positioned around,” although it is

not done with precise numerical measurements. The parameters of “looseness” are directly

related to the nature of the cover—collapsible and non-stretchable—as described and claimed. It

is loose enough to not interfere with the expansion of the reservoir until the reservoir is filled to

substantially the volume of the housing, at which point the housing confines the expanding

reservoir such that it must fill concentrically around the housing. Therefore, to the extent

“loosely positioned around” requires construction, the Court construes it to mean to mean

“positioned around with enough space between the housing and the reservoir such that the

housing does not interfere with the expansion of the reservoir until the reservoir is filled

substantially to the volume of the housing.”

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2. SUMMARY JUDGMENT OF INFRINGEMENT

The parties disagree about whether the accused AccuFlo infusion pump includes the three

disputed limitations in claims 1 and 15. Both parties spill ink on atmospherics not directly

relevant to the question of infringement. Plaintiffs argue that Defendant’s product is a “knock-

off” of Plaintiffs’ On-Q product. (Mot. 1.) But “[i]nfringement is determined on the basis of the

claims, not on the basis of a comparison with the patentee’s commercial embodiment of the

claimed invention.” ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1578 (Fed. Cir.

1984). Defendant argues that its product is a marked improvement over the ‘481 Patent. (Opp’n

2.) But “[m]aking improvements on a patented invention by adding features to a claimed device

beyond those recited in the patent does not avoid infringement.” Lighting World, Inc. v.

Birchwood Lighting, Inc., 382 F.3d 1354, 1365 (Fed. Cir. 2004). The relevant question is simply

whether the accused device infringes the claims as construed. Cybor Corp. v. FAS Technologies,

Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998).

2.1 The AccuFlo Product

Lee stated that one of his goals for the AccuFlo was “to design an elastomeric infusion

pump which reduced the initial spike in flow rate that was typically encountered in existing

elastomeric infusion pump products.” (Lee Decl. 4.) To accomplish this goal, Lee configured the

support member “to expand longitudinally when fluid enters the bladder and to contract

longitudinally when fluid exits the bladder.” (Id. 5.) As a result, as “the overall length of the

support [member] varies, so too does the distance between the two points at which the bladder is

affixed to the support [member].” (Id.)

Lee testified that the structure of the AccuFlo is accurately reflected in U.S. Patent App.

Publ. No. 2012/0325320 (the “‘320 Publication”). (Lee Decl. 4.) It discloses a “bladder [that]

has a size and position that are substantially independent of the size and shape of the cover” and

that “a gap exists between an outer surface of the bladder and an inner surface of the cover when

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the bladder is filled with fluid.” (‘320 Publ., Ex. 1 to Lee Decl. ¶ [0009].) Figures 2A and 2B of

the ‘320 Publication are shown below:

(‘320 Publ., Ex. 1 to Lee Decl., Figs. 2A and 2B.) In figures 2A and 2B, the outer surface of the

bladder 36 does not touch the inner surface of the housing 38. (Id. ¶ [0025].)

//

//

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Lee also provided a photograph demonstrating how the AccuFlo support member expands when

the bladder is filled:

(Lee Decl. 7.) Lee provided another picture depicting AccuFlo with a filled bladder (dashed oval)

inside the housing:

(Id. 15.)

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Plaintiffs also submitted photographs of the AccuFlo product. The below photograph shows the

AccuFlo in its unfilled state with the housing over the bladder:

(Mot. 17.)

2.2 First Disputed Limitation: “mounted . . . and sealingly secured at fixed

spaced longitudinal positions on said support member”

The Court’s construction is “secured at positions on the support member such that they do

not slip or slide along the support member, and are spaced apart from each other on the

lengthwise axis of the support member.” Defendant’s position that this limitation is not present

in the AccuFlo device was based entirely on obtaining a construction requiring the positions at

which the bladder is mounted to be at fixed spacing relative to each other. As the Court has

rejected that construction, there is no dispute that the AccuFlo product meets this limitation.

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2.3 Second Disputed Limitation: “for confining said reservoir to fill

concentrically about said support member”

The Court’s construction is “for confining said reservoir to fill concentrically about said

support member when the reservoir is filled substantially to the volume of the housing.” Lee

declared that the AccuFlo’s housing “has no impact whatsoever” on the reservoir filling up

concentrically about the support member. (Lee Decl. ¶¶ 15-16.) If, as depicted in the photograph

from the Lee Declaration reproduced again below and described by Lee, there is always enough

space between the AccuFlo’s housing and bladder, such that the housing never “confines the

bladder to fill concentrically around the support member,” then AccuFlo does not meet this

disputed limitation.

On a motion for summary judgment, the non-moving party’s evidence must be believed,

and all inferences drawn in its favor. Anderson, 477 U.S. at 269. But plaintiffs argued at the

hearing that the Court should disregard Lee’s testimony on this point as fraudulent under Fed. R.

Civ. P. 56(h). Plaintiffs brought to the hearing two accused products that were filled such that the

housing and the reservoir were largely in contact. Defendant responded that Plaintiffs had not

provided the exemplars before the hearing, and that, among other potential issues, they might

have been filled beyond their normal operating parameters.

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This exchange between the parties also revealed a dispute about the extent of contact

between the housing and reservoir during “normal operation” of the accused products.

“[D]epending on the claims, ‘an accused device may be found to infringe if it is reasonably

capable of satisfying the claim limitations, even though it may also be capable of noninfringing

modes of operation.’” Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir.

2010) (quoting Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed. Cir. 2001)). For

example, “an automobile engine for propulsion exists in a car even when the car is turned off.”

Finjan, 626 F.3d at 1205. But “reasonably” is an important modifier of “capable” in this context:

“tests of an accused device under unusual conditions are not necessarily relevant to an

infringement analysis.” Hilgraeve, 265 F.3d at 1343.

Given the current state of the evidence, and the additional factual disputes revealed at oral

argument, the Lee Declaration cannot be rejected under Fed. R. Civ. P. 56(h). Therefore,

Defendant has raised a genuine issue of material fact as to whether the AccuFlo meets this

limitation.

2.4 Third Disputed Limitation: “loosely positioned around”

The Court’s construction is “positioned around with enough space between the housing

and the reservoir such that the housing does not interfere with the expansion of the reservoir until

the reservoir is filled substantially to the volume of the housing.” Based on this construction, the

AccuFlo product contains this limitation. Lee declares that “the AccuFlo infusion pump contains

an outer cover which is spaced apart from the product’s expandable bladder at a significantly

greater distance than one-thousandths of an inch.” (Lee Decl. ¶ 22.) The AccuFlo’s housing

allows the bladder to expand before being substantially filled without interference. In fact,

crediting the same evidence Defendant relies on for the “confining” limitation, it is so loose that it

never confines the bladder to fill concentrically around the support member—and unlike the

previous limitation, there is no requirement here that it ever do so. It therefore meets the “loosely

positioned around” limitation.

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DISPOSITION

The foregoing claim constructions shall govern this case.

Plaintiffs’ Motion for Summary Judgment is DENIED.

IT IS SO ORDERED.

DATED: August 21, 2013

_______________________________

Andrew J. Guilford

United States District Judge

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10 I-FLOW LLC, ET AL., CASE NO. SACV 12-01064-AG (RNBx)...

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