Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 1 of 25 PageID #: 6588
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`HOLOGIC, INC., a Delaware corporation;
`and CYTYC SURGICAL PRODUCTS,
`LLC, a Massachusetts limited liability
`company,
`
`Plaintiffs,
`v.
`
`MINERVA SURGICAL, INC., a Delaware
`corporation.
`
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`)
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`)
`
` C.A. No. 20-925-JFB-SRF
`
`JURY TRIAL DEMANDED
`
` REDACTED - PUBLIC VERSION
`
`DEFENDANT MINERVA’S OPENING BRIEF IN SUPPORT OF ITS MOTION FOR
`PARTIAL SUMMARY JUDGMENT OF NO LITERAL INFRINGEMENT
`
`Ian R. Liston (#5507)
`Jennifer A. Ward (#6476)
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`222 Delaware Avenue, Suite 800
`Wilmington, DE 19801
`(302) 304-7600
`iliston@wsgr.com
`jward@wsgr.com
`
`Counsel for Defendant Minerva Surgical, Inc.
`
`Of Counsel:
`
`Vera M. Elson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`velson@wsgr.com
`
`Edward G. Poplawski
`Olivia M. Kim
`Erik J. Carlson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071
`(323) 210-2900
`epoplawski@wsgr.com
`okim@wsgr.com
`ecarlson@wsgr.com
`
`Dated: March 22, 2021
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 2 of 25 PageID #: 6589
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION .............................................................................................................. 1
`
`THE NATURE AND STAGE OF THE PROCEEDINGS................................................. 1
`
`STATEMENT OF FACTS ................................................................................................. 3
`
`A.
`
`B.
`
`The ’348 Patent ....................................................................................................... 3
`
`The Accused Product: Minerva’s Spring Handle Device ....................................... 8
`
`IV. MINERVA’S ACCUSED SPRING HANDLE DESIGN DOES NOT
`LITERALLY INFRINGE THE ’348 PATENT BECAUSE IT LACKS THE
`“PIVOT POINT” REQUIREMENT OF THE ASSERTED CLAIMS ............................ 10
`
`A.
`
`B.
`
`Summary of Argument ......................................................................................... 10
`
`All Three of Hologic’s Theories of Literal Infringement Fail as a Matter of
`Law ....................................................................................................................... 11
`
`1.
`
`2.
`
`3.
`
`Hologic Relies on a “Theoretical Point” That is Not a Structure
`and Does Not Meets the Claim Requirements .......................................... 12
`
`Hologic’s Alleged “Point of Attachment” Also Fails to Meet the
`“Pivot Point” Requirements and Relies on a Highly Misleading
`Demonstration Based on Tampering With the Accused Device .............. 14
`
`Hologic’s “Rotate Relative to One Another” Theory is Neither a
`Requirement of the Claims, Nor Sufficient to Show Infringement .......... 17
`
`V.
`
`CONCLUSION ................................................................................................................. 18
`
`i
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`

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`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 3 of 25 PageID #: 6590
`
`TABLE OF AUTHORITIES
`
`CASES
`
` PAGE(S)
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...........................................................................................................10
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...........................................................................................................10
`
`Cross Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005)......................................................................................4, 10
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
`475 U.S. 574 (1986) ...........................................................................................................10
`
`RULES
`
`FED. R. CIV. P. 56(a) ....................................................................................................................10
`
`ii
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 4 of 25 PageID #: 6591
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`TABLE OF ABBREVIATIONS
`
`’348 or ’348 patent:
`
`U.S. Patent No. 9,095,348 (asserted patent)
`
`DOE
`
`First Action
`
`Hologic:
`
`Mr. Leinsing:
`
`Minerva:
`
`NovaSure:
`
`Doctrine of Equivalents
`
`Hologic, Inc. et al. v. Minerva Surgical, Inc., Civ. No. 15-1031
`(D. Del.)
`
`Plaintiffs Hologic, Inc. and Cytyc Surgical Products, LLC
`
`Mr. Karl Leinsing (Hologic’s technical expert)
`
`Defendant Minerva Surgical, Inc.
`
`Hologic’s NovaSure Endometrial Ablation System
`
`Original device
`
`Minerva’s Original device at issue in the First Action
`
`“pivot point” limitation:
`
`The limitation of Claim 1 of the ’348’s requiring grips:
`“pivotally attached to one another at a pivot point”
`
`POSITA:
`
`Person of Ordinary Skill In The Art (hypothetical as of the date
`of invention)
`
`Spring Handle device:
`
`Minerva’s Spring Handle device accused in this case
`
`Dr. Tucker:
`
`Dr. Robert Tucker (Minerva’s technical expert)
`
`iii
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 5 of 25 PageID #: 6592
`
`I.
`
`INTRODUCTION1
`
`All four asserted claims of U.S. Patent No. 9,095,348 (the “’348 patent”) are apparatus
`
`claims that expressly require “a handle” with grips that must be “pivotally attached to one
`
`another at a pivot point.” However, this requirement is not met in Minerva’s accused device.
`
`Instead, the handle of the accused device
`
`,
`
`obviating any need to attach the grips using the claimed “pivot point” structure. Because
`
`Hologic’s theories of literal infringement fail as a matter of law, Minerva respectfully asks the
`
`Court to grant its Motion for Partial Summary Judgment of No Literal Infringement.
`
`II.
`
`THE NATURE AND STAGE OF THE PROCEEDINGS
`
`On July 8, 2020, Hologic filed this action against Minerva alleging infringement of the
`
`’348 patent. D.I. 1. Hologic asserts Minerva infringed claims 1, 3, 8, and 12. Ex. 62 (Leinsing
`
`Op. Rpt.) at ¶ 12; Ex. 16 (Hologic’s Infringement Contentions) at 2. Hologic seeks only past
`
`damages because the ’348 patent expired on November 19, 2018—over two years ago. Ex. 6
`
`(Leinsing Op. Rpt.) at ¶ 73. Hologic is pursuing damages on Minerva’s Endometrial Ablation
`
`System with a Spring Handle device, which was sold for less than five months before the ’348
`
`patent expired on November 19, 2018. D.I. 1 at ¶¶ 35, 61. Claim 1 of the ’348 patent is the only
`
`asserted independent claim, and contains the “pivotally attached to one another at a pivot point”
`
`requirement at issue in this motion. The other three asserted claims all depend on Claim 1. Ex.
`
`19 (’348 patent) at Claims 3, 8, and 12. Expert discovery closed on March 8, 2021 and trial is set
`
`to begin on August 23, 2021. D.I. 20 at ¶¶ 2.h.v and 16.
`
`This is the second case Hologic has brought against Minerva involving the ’348 patent.
`
`In the first case, Hologic filed its November 6, 2015 complaint asserting multiple patents,
`
`1 Unless stated otherwise, all emphasis in quotes is added.
`2 All exhibits are attached to Declaration of Erik J. Carlson filed concurrently herewith.
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 6 of 25 PageID #: 6593
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`including the ’348 patent. Ex. 20, Hologic, Inc. et al. v. Minerva Surgical, Inc., Civ. No. 15-
`
`1031 (D. Del.) (the “First Action”), D.I. 1. In the First Action, Hologic accused Minerva’s
`
`Endometrial Ablation System with its original hand-held device (“Original” device) of infringing
`
`the ’348 patent, among others. On April 24, 2017, the Court issued its Claim Construction Order
`
`in the First Action. Before the claim construction hearing, the parties stipulated to the meaning
`
`of the term “pivot point” recited in independent Claim 1. The parties informed the Court of their
`
`stipulated construction in a December 2, 2016 Joint Claim Construction Chart. Ex. 21 (First
`
`Action, D.I. 155) at 3. The Court later adopted that same stipulated construction of “pivot point”
`
`for purposes of the present case. D.I. 20 at ¶ 9.
`
`Prior to trial in the First Action, this Court determined on summary judgment that
`
`Minerva’s Original device infringed Claim 1 of the ’348 patent. However, in that case, Hologic
`
`clearly identified a specific structure in the handle of Minerva’s Original device (i.e.,
`
`
`
`) as the structure that
`
`met the “pivotally attached to one another at a pivot point” requirement of Claim 1. Minerva did
`
`not dispute that particular contention. Instead, during the pendency of the First Action,
`
`
`
`
`
`
`
` (i.e., Minerva’s Spring Handle design). Now that the
`
` that Hologic identified as the claimed “pivot point” in the First Action
`
`has been removed, in this case Hologic has failed to identify a structure in Minerva’s accused
`
`2
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 7 of 25 PageID #: 6594
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`Spring Handle device that meets the “pivotally attached to one another at a pivot point”
`
`limitation of the claims. Therefore, there can be no literal infringement as a matter of law.3
`
`As a procedural matter, Minerva has moved to stay this action pending exhaustion of its
`
`appeal in the First Action. D.I. 60. The issue of whether assignor estoppel bars a challenge to
`
`the validity of the ’348 patent is currently pending before the Supreme Court. That decision may
`
`determine whether the ’348 is invalid, or alternatively whether one or more invalidity defenses
`
`(currently not in the case) become available to Minerva in this action. The Hearing on Minerva’s
`
`Motion to Stay this case has been set for April 7, 2021. 02/16/21 Oral Order.
`
`III.
`
`STATEMENT OF FACTS
`
`A.
`
`The ’348 Patent
`
`The “Pivot Point” Limitation. The ’348 patent generally relates to devices for treating
`
`the uterus, such as endometrial ablation devices. Claim 1 of the ’348 patent is the only
`
`independent claim Hologic has asserted against Minerva’s Spring Handle device. The other
`
`three asserted claims (3, 8, and 12) all depend directly on Claim 1, and thus incorporate all of the
`
`elements of Claim 1. Claim 1 is generally directed to a device for treating the uterus with an
`
`“applicator head” that goes in the body for performing the ablation, an elongate member with
`
`slidably disposed inner and outer sleeves connected to the applicator head, and a handle
`
`connected to the other end of the elongate member that is “operably coupled” to the applicator
`
`head via the slidable sleeves such that when the grips are squeezed (i.e., “when the proximal grip
`
`and the distal grip are moved closer together”), one sleeve slides relative to the other and the
`
`applicator head deploys (i.e. “the applicator head transitions from the contracted state to the
`
`3 Hologic’s theory of infringement under the Doctrine of Equivalents (“DOE”) also fails as a matter
`of law for the reasons set forth in Minerva’s concurrently-filed Motion for Partial Summary
`Judgment of No Infringement Under DOE.
`
`3
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 8 of 25 PageID #: 6595
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`expanded state.”). Ex. 19 (’348 patent) at Claim 1, Figs. 21-22; Ex. 5 (Tucker Rbtl. Rpt.) at ¶
`
`206. The key requirement at issue in Minerva’s motion is the “pivotally attached to one another
`
`at a pivot point” limitation (i.e., the “pivot point” limitation for short) recited in the “handle”
`
`element of Claim 1, shown below:
`
`a handle coupled to the proximal portion of the elongate member, wherein
`the handle comprises a frame, a proximal grip and a distal grip pivotally
`attached to one another at a pivot point and operably coupled to the
`applicator head so that when the proximal grip and the distal grip are moved
`closer together, the applicator head transitions from the contracted state to
`the expanded state;
`
`The “pivot point” limitation requires that the handle of the device have a proximal grip and a
`
`distal grip4 “pivotally attached to one another at a pivot point.” In the First Action, the parties
`
`stipulated to the following construction of “pivot point.” Ex. 21 (First Action D.I. 155) at 3. The
`
`Court adopted the construction in this case. D.I. 20 at ¶ 9.
`
`Claim Term
`“pivot point”
`
`Court’s Construction
`“a point of attachment between two members
`about which the members hinge or rotate”
`
`There is no dispute that in the context of Claim 1 the term “members” refers to the “grips” of the
`
`handle.
`
`Structure. The asserted claims are all apparatus claims. Ex. 19 (’348 patent) at Claim 1
`
`(“A device for treating a uterus comprising: . . .”), Claims 3, 8, and 12 (“The device of claim 1 . .
`
`.”); Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 64:15 (“Yes, they’re apparatus claims”).
`
`Consequently, as a matter of law, to either infringe (or embody) an asserted claim, each claim
`
`requirement must read on a structure in the allegedly infringing (or embodying) device. Cross
`
`4 “A POSITA understands that the proximal grip is the one closest to the user (i.e the back grip), and
`the distal grip is the one further away from the user (i.e., the front grip).” Ex. 5 (Tucker Rbtl. Rpt.) at
`¶ 60.
`
`4
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 9 of 25 PageID #: 6596
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`Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1311-12 (Fed. Cir. 2005)
`
`(“To infringe an apparatus claim, the device must meet all of the structural limitations.”). As
`
`between the experts, there appears to be agreement on this point. Ex. 6 (Leinsing Op. Rpt.) at ¶
`
`25 (“I understand that, to literally infringe a patent claim . . . an accused product or
`
`instrumentality must embody each and every limitation of a claimed apparatus, structure, or
`
`compound.”); Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 64:9-12 (“Q. Now, all of those claim a
`
`structure, correct? A. Correct. They’re a device claim. They’re not a method claim.”), 64:16-
`
`21 (“Q. So they’re claiming a structure and not a method for doing something, is that right? A.
`
`Correct, they’re claiming an apparatus. Q. And that’s a structure, right, structural versus a
`
`process? A. Correct.”), 89:4-13; Ex. 5 (Tucker Rbtl. Rpt.) at ¶ 30 (“I understand that the
`
`asserted claims of the ’348 patent are apparatus claims in that they recite a list of structural
`
`requirements, each of which must literally be present in the accused product for there to be
`
`literal infringement.”); Ex. 10 (Tucker Surreply Rpt.) at ¶ 19 (“Thus, a ‘pivot point’ needs to be
`
`an identifiable structure that acts as (1) ‘a point of attachment between two members’; and (2) ‘a
`
`point . . . about which the members hinge or rotate.’”).
`
`Structure: The ’348 Patent Embodiment. The embodiment of the claimed invention
`
`disclosed in the ’348 specification identifies a structure as the claimed “pivot point”; namely,
`
`“pivot pin 166.” Ex. 19 (’348 patent) at 16:12-16, Figs. 21 and 22; Ex. 5 (Tucker Rbtl. Rpt.) at
`
`¶¶ 61–62. A POSITA would understand that, since the “pivot point” must by law cover a
`
`physical structure, the specification identifies “pivot pin 166” as the claimed “pivot point”
`
`structure; namely, a single pin that acts both as “a point of attachment between” the two grips
`
`and “about which the [grips] hinge or rotate.” Ex. 19 (’348 patent) at 16:12-16 Figs. 21 and 22;
`
`Ex. 5 (Tucker Rbtl. Rpt.) at ¶¶ 61–62; Ex. 10 (Tucker Surreply Rpt.) at ¶ 19 (“Thus, a ‘pivot
`
`5
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`

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`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 10 of 25 PageID #: 6597
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`point’ needs to be an identifiable structure that acts as (1) ‘a point of attachment between two
`
`members’; and (2) ‘a point . . . about which the members hinge or rotate.’”); Ex. 7 (03/05/21
`
`Leinsing Dep. Tr.) at 104:7-8 (“Q. And the pivot pin is a structure? A. The pivot pin is a
`
`structure, correct.”). Pivot pin 166 is shown in the annotated version of Fig. 22 of the ’348
`
`patent (distal grip 142 is on the left and proximal grip 144 is on the right):
`
`Pivot Point
`
`Structure: The NovaSure. Both in the First Action and in this case, Hologic’s expert
`
`contended (and Minerva does not dispute) that the NovaSure products embody Claim 1,
`
`including the “pivot point” limitation. Ex. 6 (Leinsing Op. Rpt.) at § XI, ¶¶ 150-152; Ex. 23
`
`(First Action, Leinsing Op. Rpt.) § X.C.1, ¶¶ 318-320. In both cases, Hologic’s expert did not
`
`hesitate to identify a structure; namely, the pivot pin he circles and says is “shown” below as the
`
`claimed “pivot point.” Ex. 6 (Leinsing Op. Rpt.) at ¶ 151 (“The pivot point is shown below”);
`
`Ex. 23 (First Action, Leinsing Op. Rpt.) at ¶ 319 (“The pivot point is shown below.”); Ex. 5
`
`(Tucker Rbtl. Rpt.) at ¶¶ 118–119. Just like the embodiment of Claim 1 in the ’348 patent, the
`
`6
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 11 of 25 PageID #: 6598
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`NovaSure products have an identifiable structure (i.e., a pivot pin) whereby the grips are both
`
`“pivotally attached to one another at” that pivot pin, and, the grips rotate about that same pivot
`
`pin, thereby complying with the language of the claim as well as the agreed construction of
`
`“pivot point.” Ex. 5 (Tucker Rbtl. Rpt.) at ¶¶ 118–119; Ex. 7 (03/05/21 Leinsing Dep. Tr.) at
`
`104:7-8 (“Q. And the pivot pin is a structure? A. The pivot pin is a structure, correct.”). The
`
`claimed “pivot point” is shown in the figures below. Ex. 6 (Leinsing Op. Rpt.) at ¶¶ 150 (the
`
`“pivot point” is “annotated below”), 151 (“The pivot point is shown below”):
`
`Structure: Minerva’s Original Handpiece. Minerva’s Original device is not an
`
`accused product in this case, but in the First Action provides yet another example of where
`
`Hologic and its expert contended (and Minerva did not dispute) that a specific physical structure
`
`constituted the claimed “pivot point.” In particular, Hologic and its expert identified “
`
`
`
`
`
`” Ex. 6 (Leinsing Op. Rpt.) at ¶ 50. The
`
` on Minerva’s
`
`Original device are shown below
`
`
`
`. Id. at 18, ¶ 50:
`
`7
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`

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`B.
`
`The Accused Product: Minerva’s Spring Handle Device
`
`In summer of 2018, Minerva began selling its accused Spring Handle Device. The
`
`Spring Handle device does not have
`
` from the Original device.
`
`Instead, the proximal and distal grips are
`
`
`
`
`
`). Ex. 5 (Tucker Rbtl. Rpt.) at ¶¶ 210-212. The device is designed such that when the
`
`user squeezes the grips,
`
`
`
`:
`
`8
`
`

`

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`Ex. 5 (Tucker Rbtl. Rpt.) at 108, ¶ 211. Below is a figure contrasting the design of Minerva’s
`
`Original design with the Spring Handle design (a.k.a. Redesigned Handpiece):
`
` Ex. 5 (Tucker Rbtl. Rpt.) at 107, ¶ 210.
`
`9
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 14 of 25 PageID #: 6601
`
`IV. MINERVA’S ACCUSED SPRING HANDLE DESIGN DOES NOT LITERALLY
`INFRINGE THE ’348 PATENT BECAUSE IT LACKS THE “PIVOT POINT”
`REQUIREMENT OF THE ASSERTED CLAIMS
`
`When there is “no genuine dispute at to any material fact and the movant is entitled to
`
`judgment as a matter of law,” summary judgment is appropriate. FED. R. CIV. P. 56(a). The
`
`moving party bears the initial burden to show the absence of a genuine issue of material fact
`
`supported by evidence showing a jury could not reasonably find the nonmoving party’s favor.
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S.
`
`242, 252 (1986). The burden then shifts to the non-movant to demonstrate the existence of a
`
`genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87
`
`(1986).
`
`A.
`
`Summary of Argument
`
`Minerva moves herein for partial summary judgment of no literal infringement. Hologic
`
`cannot meet its burden of proving that Minerva’s accused Spring Handle device literally
`
`infringes claims 1, 3, 8, or 12 because it has failed to identify a single structure in the handle that
`
`meets the “pivot point” requirement of the claims. There is no dispute that the asserted claims
`
`are all apparatus claims that must read on a structure in order to infringe or embody the claim.
`
`To show infringement under any theory, Hologic must identify a structure that meets the
`
`requirement of a handle with grips “pivotally attached to one another at a pivot point.” See
`
`Cross Med. Prod., Inc., 424 F.3d at 1311-12 (“To infringe an apparatus claim, the device must
`
`meet all of the structural limitations.”). Moreover, the term “pivot point” was separately
`
`construed in the First Action to mean: “a point of attachment between two members [i.e., grips]
`
`about which the members [i.e., grips] hinge or rotate.” Hologic has failed to meet its burden to
`
`show that Minerva’s Spring Handle design has an identifiable structure that acts both as “a
`
`point”: (1) “of attachment between two members [i.e., the grips]”; and (2) “about which the
`
`10
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 118 Filed 03/30/21 Page 15 of 25 PageID #: 6602
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`members [i.e., the grips] hinge or rotate,” as required by the claim and the Court’s “pivot point”
`
`construction. A structure in the handle must meet both criteria (1) and (2) above to meet the
`
`“pivot point” limitation of the claims. Hologic has failed to show there is any such structure.
`
`B.
`
`All Three of Hologic’s Theories of Literal Infringement Fail as a Matter of
`Law
`
`Hologic and its expert allege that Minerva’s Spring Handle device literally infringes
`
`based on three theories. As discussed below, each theory fails because Hologic has not
`
`identified any structure that is both (1) “a point of attachment between two members [i.e., grips]”
`
`such that the grips are “pivotally attached to one another at a pivot point” as claimed; and (2) is
`
`“a point…about which the members [i.e., grips] hinge or rotate,” as required by the claim and the
`
`Court’s “pivot point” construction.
`
`Unable to identify a structure that meets both criteria (1) and (2) above for the “pivot
`
`point” (which is not surprising as there is none), Hologic’s expert, Mr. Leinsing, resorts to
`
`several artifices summarized, and then addressed in more detail, below:
`
`1.
`
`Mr. Leinsing only identifies a “theoretical” point at the center of a green circle he
`
`added to a schematic as the claimed “pivot point.” But the claims are apparatus claims.
`
`Therefore, his “theoretical” point cannot satisfy the claim requirements, which must read on a
`
`structure.
`
`2.
`
`Mr. Leinsing argues that the accused grips have “a point of attachment.” But of
`
`course, mere attachment by some means other than at “a pivot point” likewise fails. Mr.
`
`Leinsing relies on select quotes from Minerva witnesses, but those quotes only support the
`
`unremarkable observation that the grips can touch or make contact—not that they are actually
`
`attached to one another at “a pivot point” as claimed.
`
`11
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`3.
`
`Mr. Leinsing invents a non-existent claim requirement. He repeatedly contends
`
`that the grips “rotate relative to one another,” as if this were sufficient to find infringement. It is
`
`not. Just because the grips can “rotate relative to one another” is neither a requirement of the
`
`claims, nor sufficient to show infringement. Moreover, in an attempt to support this theory, Mr.
`
`Leinsing altered the accused device so he could manipulate it in a misleading way to avoid
`
`showing in his video the lateral sliding movement of the grips due to Minerva’s spring design.
`
`1.
`
`Hologic Relies on a “Theoretical Point” That is Not a Structure and
`Does Not Meets the Claim Requirements
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`Hologic’s expert confirmed at his deposition that the “best way” to describe where the
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`pivot point is under Hologic’s theory is in the figure below from page 54 of Mr. Leinsing’s
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`Opening Report:
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`Ex. 6 (Leinsing Op. Rpt.) at 54, ¶ 97; see also Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 121:3-5. In
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`his report, Mr. Leinsing shows the above engineering drawing of the front (distal) grip of
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`Minerva’s Spring Handle device—but adds his own annotations. Ex. 8 (LEINSINGK_000075);
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`Ex. 5 (Tucker Rbtl. Rpt.) at ¶ 218. First, the actual schematic does show the crosshairs within
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`the green circle, but there are no crosshairs in the actual accused product. On the left below is a
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`photo of the inside of the actual front grip side-by-side with Mr. Leinsing’s annotated schematic
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`(on the right). One can see that the crosshairs are not an actual structure:
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`Ex. 5 (Tucker Rbtl Rpt.) at 114, ¶ 218. The crosshairs appear on the schematic where
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` used to be, but are no longer. Id. at ¶ 219. In other
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`words, the crosshairs in the schematic on the right above do not correspond to any actual
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`structure in the accused device on the left. Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 112:16 (“it’s
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`not a structure”).
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`Second, Mr. Leinsing annotated the schematic to add both the green circle and the blue
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`words and arrows. Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 112:3-6; Ex. 8 (LEINSINGK_000075);
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`Ex. 5 (Tucker Rbtl Rpt.) at ¶ 218. Mr. Leinsing clearly labels the center of the crosshairs as the
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`claimed “Pivot Point.” Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 113:11-16 (“Q. All right. What
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`you labeled here as pivot point, there is no physical crosshairs in the Minerva spring handle,
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`correct? A. There’s no physical crosshairs, but there doesn’t need to be physical crosshairs to
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`identify a point.”); Ex. 5 (Tucker Rbtl. Rpt.) at ¶ 218.
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`Fatal to Hologic’s infringement theory, Mr. Leinsing concedes at his deposition that the
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`“pivot point” he labeled and identified as the claimed “pivot point,” is merely “a theoretical
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`point that is not a structure.” Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 105:7-10. He further
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`confirmed that the center of the green circle is “a single point with no finite size.” Id. at 113:18-
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`19; see also at 112:11–113:20; Ex. 9 (Leinsing Reply Rpt.) at ¶ 36 (“I did not conclude in my
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`Infringement Report that this annotation identifies a physical structure within the distal grip”).
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`Because Hologic fails to identify an actual structure—as opposed to a dimensionless “theoretical
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`point that is not a structure”—it cannot meet its burden of showing there is a structure in the
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`accused device that meets the claimed “pivot point” requirements. That alone is fatal to
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`Hologic’s claim of literal infringement.
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`2.
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`Hologic’s Alleged “Point of Attachment” Also Fails to Meet the “Pivot
`Point” Requirements and Relies on a Highly Misleading
`Demonstration Based on Tampering With the Accused Device
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`The Court’s “pivot point” construction requires the claimed “pivot point” to be “a point
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`of attachment” between the two grips. Mr. Leinsing also fails to show how the center of the
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`green circle constitutes “a point of attachment” for the grips. Indeed, Mr. Leinsing testified in no
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`uncertain terms at his deposition: “No, I don’t identify a point of attachment” and confirmed
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`“[s]o there’s not a point of attachment.” Ex. 7 (03/05/21 Leinsing Dep. Tr.) at 122:10, 15. As
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`Dr. Tucker confirms, Mr. Leinsing’s “theoretical” point at the center of the green circle is not a
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`structure that acts as “a point of attachment.” Ex. 10 (Tucker Surreply Rpt.) at ¶ 24.
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`It appears that where Mr. Leinsing discusses his “point of attachment,” he identifies “
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`).” Ex. 6 (Leinsing Op. Rpt.) at 50-51, ¶ 97. In short, Mr. Leinsing
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`refers to the unremarkable fact that the grips are attached using
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`” He, in effect, attempts to decouple the “attached” requirement from the rest of the
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`claim construction, which requires more than just any sort of attachment. The claim language
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`and construction quite explicitly requires the grips to be “pivotally attached to one another at a
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`pivot point”—not just attached in the sense that they do not fall apart or separate. In addition,
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`the construction further requires that “the point of attachment between the [grips]” also be the
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`same point “about which the [grips] hinge or rotate.” Mr. Leinsing fails to show how his
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`theoretical pivot point meets these criteria.
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`Relying on vague statements, Mr. Leinsing annotates Minerva’s schematic to add his
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`arrow labeled “Pivot Surface.” Ex. 6 (Leinsing Op. Rpt.) at 54, ¶ 97. He then contends that
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` form a pivot point…[.]” Ex. 6 (Leinsing Op. Rpt.) at 52, ¶ 97; Ex. 15
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`(LEINSINGK_000007). But just by virtue of the fact that the
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` shows that there is no structural “point of attachment” along
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`this curved surface—much less a point that qualifies as the claimed “pivot point.” So his “pivot
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`surface” cannot be a point of attachment. And as already discussed, his one identified
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`“theoretical” pivot point at the center of his green circle does not lie along his “pivot surface”; is
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`not a structure; and likewise does not meet the “attachment” criteria of the claim.
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`Contact is Not Attachment. Mr. Leinsing cut open a hole in the distal grip of a Minerva
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`Spring Handle device in an effort to show how when the device is at rest,
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`
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`”
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` Ex. 11 (LEINSINGK_000069); Ex. 15
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`(LEINSINGK_000007). By manipulating the device in an unusual way (by fastening the top
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`with a zip tie), and not actually squeezing the grips the way a surgeon would to deploy the
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`device, Mr. Leinsing shows
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` in a video. Ex. 7
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`(03/05/21 Leinsing Dep. Tr.) at 128:20-24, 129:9-10, 141:17-143:6; Ex. 14 (Leinsing Dep. Ex. 7,
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`LEINSINGK_000001); Ex. 15 (Leinsing Dep. Ex. 8, LEINSINGK_000007). But as noted
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`above, this sliding movement just reinforces that where the tab contacts his “pivot surface”
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`cannot be a “point of attachment” because
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`. Ex. 15 (LEINSINGK_000007).
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`In support of his “point of attachment” theory, Mr. Leinsing relies on the testimony of
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`Minerva’s CTO, Dominique Filloux. But Mr. Filloux only describes how the grips “come into
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`contact,” or how one grip “contacts” the other. Ex. 9 (Leinsing Reply Rpt.) at ¶ 27. From there,
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`Mr. Leinsing makes the unwarranted leap that “the grips are attached to one another at these
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`plastic tabs.” Id. But just because the grips make contact when at rest, does not mean they are
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`“pivotally attached to one another at a pivot point” as claimed. In contrast, Dr. Tucker shows in
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`his own video (and in the image on the right below) how when the grips are properly squeezed
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`together in a manner consistent with the claim,
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`” Ex. 12 (TUCKER-925_0001); Ex. 13 (TUCKER-925_0002); Ex. 19 (’348
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`patent) at Claim 1, 19:26-29. In short, there is no “point of attachment” as claimed.
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`Notably, what Mr. Leinsing fails to show in his image (on the left below) or in his video
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`is that he fastened a zip tie to the top of the device so he could manipulate it without actually
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`squeezing the grips. In his video, the zip tie is off camera. He did this to avoid showing
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`5 But as Dr. Tucker shows
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`(in the images from his video on the right below), when a user properly squeezes the grips,
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`
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`5 Mr. Leinsing further testified that he could not be “certain” whether he actually took apart and
`modified Minerva’s flat spring prior to making his video using the zip tie. Ex. 7 (03/05/21 Leinsing
`Dep. Tr.) at 161:7-16; see also id. at 146:7-10.
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`. There is no “point of attachment” since the grips
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`.
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`
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`Ex. 6 (Leinsing Op. Rpt.) at 53, ¶ 97; Ex. 11
`(LEINSINGK_000069 with emphasis added)
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`Ex. 12 (TUCKER-925_0001) (video at time
`00:06 with emphasis added); see also Ex. 10
`(Tucker Surreply Rpt.) at 15, ¶ 26; Ex. 13
`(TUCKER-925_0002).
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`Accordingly, Hologic second theory of literal infringement fails. Hologic fails to meet its
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`burden of identifying a structure that acts both as (1) “a point of attachment between two
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`[grips]”; and (2) “a point . . . about which the [grips] hinge or rotate.” Ex. 10 (Tucker Surreply
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`Rpt.) at ¶ 27.
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`3.
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`Hologic’s “Rotate Relative to One Another” Theory is Neither a
`Requirement of the Cl