Case 1:12-cv-01630-LJM-DKL Document 102 Filed 04/10/13 Page 1 of 45 PageID #: 2307
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF INDIANA
`INDIANAPOLIS DIVISION
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` No. 1:12-cv-01630-LJM-DKL
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`)))))))))
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`ENDOTACH LLC,
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` Plaintiff,
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` vs.
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`COOK MEDICAL INCORPORATED,
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` Defendant.
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`ORDER ON CLAIM CONSTRUCTION
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`After consideration of the parties’, Endotach LLC and Cook Medical Incorporated
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`(“Cook”), briefs on the issue of claim construction of the two patents-in-suit, U.S. Patent
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`No. 5,122,154 (the “’154 patent”) and U.S. Patent No. 5,593,417 (the “’417 patent”)
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`(collectively, the “Rhodes patents”), on March 6, 2013, the Court held a hearing
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`pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (hereinafter,
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`“Markman II”). During the hearing, Endotach and Cook presented argument and expert
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`witnesses regarding the construction of two disputed terms in the patents-in-suit, “stent
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`means” in the ‘154 patent; and “anchoring means” in the ‘417 patent. The Court has
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`considered the parties’ arguments and construes the claims as set forth below.
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` I. CLAIM CONSTRUCTION STANDARDS
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`When construing the terms in the assert claims of the Rhodes patents, the Court
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`must determine the meaning of the language used before it can ascertain the scope of
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`the claims Plaintiff asserts are infringed. See Markman v. Westview Instruments, Inc.,
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`52 F.3d 967, 979 (Fed. Cir. 1995) (hereinafter, “Markman I”). In doing so, the Court’s
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`interpretive focus is not the subjective intent of the party employing a certain term, but
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`the objective test of what one of ordinary skill in the art at the time of the invention would
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`have understood the term to mean. See Phillips v. AWH, 415 F.3d 1303, 1313 (Fed.
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`Cir. 2005); Innova/Pure Water v. Safari Water Filtration, 381 F.3d 1111, 1116 (Fed. Cir.
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`2004). When the Court undertakes its duty to construe the claims, it first must look to
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`the intrinsic evidence: the asserted and unasserted claims, the specification, and the
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`prosecution history. See Phillips, 415 F.3d at 1314; Ecolab, Inc. v. Envirochem, Inc.,
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`264 F.3d 1358, 1366 (Fed. Cir. 2001); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1581 (Fed. Cir. 1996); Markman I, 52 F.3d at 979. Most of the time, such
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`evidence will provide sufficient information for construing the claims. See Vitronics, 90
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`F.3d at 1583.
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` The patent claims should “particularly point out and distinctly clai[m] the subject
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`matter which the applicant regards as his invention.” Markman II, 517 U.S. at 373
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`(citing 35 U.S.C. § 112). During claim construction, the appropriate starting point for the
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`Court’s inquiry is always the words of both the asserted and unasserted claims. See
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`Phillips, 415 F.3d at 1314; Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed.
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`Cir. 1999); see also Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243,
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`1248 (Fed. Cir. 1998). As the Federal Circuit has noted, “[c]ommon words, unless the
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`context suggests otherwise, should be interpreted according to their ordinary meaning.”
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`Desper Prods., Inc. v. Qsound Labs., Inc., 157 F.3d 1325, 1336 (Fed. Cir. 1998) (citing
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`York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir.
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`1996)). See also Phillips, 415 F.3d at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352
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`(Fed. Cir. 2001)). Further, when there are several common meanings for a term, “the
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`patent disclosure serves to point away from the improper meanings and toward the
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`proper meaning.” Renishaw, 158 F.3d at 1250. Accord Phillips, 415 F.3d at 1315-17
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`(discussing the role of the specification in claim construction).
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`The correct claim construction is also the one that “stays true to the claim
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`language and most naturally aligns with the patent’s description of the invention.”
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`Renishaw, 158 F.3d at 1250. See also Phillips, 415 F.3d at 1316. That description, or
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`specification, serves an important purpose. In it, the patentee must provide a written
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`description of the invention that would allow a person of ordinary skill in the art to make
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`and use the invention. See Phillips, 415 F.3d at 1313-14; Markman I, 52 F.3d at 979.
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`The applicable statute requires that “[t]he specification shall contain a written
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`description of the invention, and of the manner and process of making and using it, in
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`such full, clear, concise, and exact terms as to enable any person skilled in the art to
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`which it pertains . . . to make and use the same . . . .” 35 U.S.C. § ¶112, ¶ 1. See also
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`Phillips, 415 F.3d at 1312, 1315; Johnson Worldwide Assocs.v. Zebco Corp., 175 F.3d
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`985, 993 (Fed. Cir. 1999). Therefore, to discover the correct meaning of a disputed
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`claim term, the Court must refer to the specification’s description of the invention.
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`In addition, a patentee may be his or her own lexicographer and use terms in a
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`manner different from their ordinary meaning. See Phillips, 415 F.3d at 1316; Johnson
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`Worldwide Assocs., 175 F.3d at 990; Vitronics, 90 F.3d at 1582. If the patentee
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`chooses to do that, he or she must clearly state the special definition in the specification
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`or file history of the patent. See Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). The specification then serves
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`as a dictionary when it defines terms, either expressly or by implication, that are used in
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`the claims.
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`Although claims must be read in light of the specification, limitations from the
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`specification may not be read into the claims. See Phillips, 415 F.3d at 1323; Comark
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`Communs. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). In particular, the
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`Court should not limit the invention to the specific examples or preferred embodiment
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`found in the specification. See Phillips, 415 F.3d at 1323; Tex. Instruments, Inc. v. U.S.
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`Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986). Therefore, the “repetition in
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`the written description of a preferred aspect of a claim invention does not limit the scope
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`of an invention that is described in the claims in different and broader terms.” Laitram
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`Corp. v. NEC Corp., 163 F.3d 1342, 1348 (Fed. Cir. 1998). See also Phillips, 415 F.3d
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`at 1323 (describing how to distinguish between a best mode disclosure and a limitation
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`disclosure in a specification).
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`Interpreting the meaning of a claim term “‘is not to be confused with adding an
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`extraneous limitation appearing in the specification, which is improper.’” Laitram, 163
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`F.3d at 1348 (quoting Intervet Am., Inc. v. Kee-Vet Lab., Inc., 887 F.2d 1050, 1053
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`(Fed. Cir. 1989) (further citation omitted by Intervet court)). See also Innova/Pure
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`Water, 381 F.3d at 1117. An extraneous limitation is a limitation added “wholly apart
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`from any need to interpret what the patentee meant by particular words and phrases in
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`the claim.” Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993). See
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`also Phillips, 415 F.3d at 1323; Renishaw, 158 F.3d at 1249. Although there is a fine
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`line between reading a claim in light of the specification and reading a limitation from the
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`specification into the claim, the Court must look cautiously to the specification for
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`assistance in defining unclear terms. See Phillips, 415 F.3d at 1323-24; Innova/Pure
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`Water, 381 F.3d at 1117.
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`The third source of intrinsic evidence is the prosecution history of the patents-in-
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`suit. See Phillips, 415 F.3d at 1317; Desper Prods., 156 F.3d at 1336-37; Vitronics, 90
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`F.3d at 1582. In a patent’s prosecution history, the Court will find a complete record of
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`the proceedings before the PTO leading to issuance of the patent. See Vitronics, 90
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`F.3d at 1582. The prosecution history contains both express representations made by
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`the patentee concerning the scope of the patent, as well as interpretations of claim
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`terms that were disclaimed during the prosecution. See id. at 1582-83; see also
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`Phillips, 415 F.3d at 1317; Ecolab, 264 F.3d at 1368. “The prosecution history can often
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`inform the meaning of the claim language by demonstrating how the inventor
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`understood the invention and whether the inventor limited the invention in the course of
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`prosecution, making the claim scope narrower than it would otherwise be.” Phillips, 415
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`F.3d at 1317.
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`In some cases, it may be necessary for the Court to consult extrinsic evidence to
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`aid it in construing the claim language. See id.; Vitronics, 90 F.3d at 1584. Extrinsic
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`evidence is any evidence outside of the patent and prosecution history, “including
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`expert and inventor testimony, dictionaries, and learned treatises.” Markman I, 52 F.3d
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`at 980. See also Phillips, 415 F.3d at 1317. It may be used to assist the Court’s
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`understanding of the patent or the field of technology. See Markman I, 52 F.3d at 980-
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`81. However, “courts [should] not rely on extrinsic evidence in claim construction to
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`contradict the meaning of claims discernible from thoughtful examination of the claims,
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`the written description, and the prosecution history—the intrinsic evidence.” Pitney
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`Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (emphasis in
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`original) (citing Vitronics, 90 F.3d at 1583). Judges are not usually “conversant in the
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`particular technical art involved,” or capable of reading the patent specification and
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`claims as one skilled in the art might. See Markman I, 52 F.3d at 986; see also Pitney
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`Bowes, 182 F.3d at 1308-09. Therefore, “consultation of extrinsic evidence is
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`particularly appropriate to ensure that [the Court’s] understanding of the technical
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`aspects of the patent is not entirely at variance with the understanding of one skilled in
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`the art.” Pitney Bowes, 182 F.3d at 1309. See also Phillips, 415 F.3d at 1318. When
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`the Court relies on extrinsic evidence to assist with claim construction, and the claim is
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`susceptible to both a broader and a narrower meaning, the narrower meaning should be
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`chosen if it is the only one clearly supported by the intrinsic evidence. See Digital
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`Biometrics v. Identix, 149 F.3d 1335, 1344 (Fed. Cir. 1998); see also Phillips, 415 F.3d
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`at 1317-19 (discussing the proper use of extrinsic evidence). It is entirely proper for the
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`Court to accept and admit extrinsic evidence, such as an expert’s testimony, to educate
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`itself but then base its construction solely on the intrinsic evidence. See Mantech Envt’l
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`Corp. v. Hudson Envt’l Servs., Inc., 152 F.3d 1368, 1373 (Fed. Cir. 1998).
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`Further, the Federal Circuit has taken special note of the use by courts of
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`dictionaries. In its Vitronics opinion, the court explained that although technical treatises
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`and dictionaries are extrinsic evidence, judges are free to consult these resources at
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`any time in order to get a better understanding of the underlying technologies. 90 F.3d
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`at 1584 n.6. The Vitronics court stated that judges may rely on dictionaries when
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`construing claim terms as long as the dictionary definition does not contradict the
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`definition found in, or ascertained by, a reading of the patent. Id. The Federal Circuit
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`affirmed this approach in Phillips. 415 F.3d at 1322-23.
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`In the instant case, the parties dispute whether the terms “stent means” in the
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`‘154 patent and “anchoring means” in the ‘417 patent must be construed according to
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`35 U.S.C. § 112, ¶ 6. “Use of the word ‘means’ in claim language creates a
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`presumption that § 112 ¶ 6 applies.” Trimed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259
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`(Fed. Cir. 2008) (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583
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`(Fed. Cir. 1996)). However, the presumption may be overcome either if the element
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`recites no function corresponding to the means, see Rodine PLC v. Seaget Tech., Inc.,
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`174 F.3d 1294, 1302 (Fed. Cir. 1999), or if “the claim recites sufficient structure for
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`performing the described functions in their entirety.” Trimed, 514 F.3d at 1259.
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`“Sufficient structure exists when the claim language specifies the exact structure that
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`performs the function in question without need to resort to other portions of the
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`specification or extrinsic evidence for an adequate understanding of the structure.” Id.
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`at 1259-60 (citing Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003);
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`Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000)).
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`In cases where the Court determines that § 112, ¶ 6 applies, the Court uses
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`special rules of construction. See, e.g., Mas-Hamilton Group v. LaGard, Inc., 156 F.3d
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`1206, 1211 (Fed. Cir. 1998) (describing the rules of construction for patent claim
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`elements written in means-plus-function format). Specifically, the “means” term “is
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`essentially a generic reference for the corresponding structure disclosed in the
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`specification.” Chiuminatta Concrete Concepts v. Cardinal Indus., 145 F.3d 1303, 1308
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`(Fed. Cir. 1998). By using this format, a patentee is allowed to claim a function without
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`expressing all of the possible means of accomplishing that function. See O.I. Corp. v.
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`Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997). “The price that must be paid for use
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`of that convenience is limitation of the claim to the means [or acts] specified in the
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`written description and equivalents thereof.” Id.
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`Thus, a claim expressed in means-plus-function language constitutes an
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`exception to the rule that prohibits reading limitations from the specification into the
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`claims. See Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed. Cir.
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`1993). When dealing with a means-plus-function claim, specific alternative structures to
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`accomplish the function mentioned in the specifications, and equivalents thereto,
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`delineate the scope of the patent claim. See Mas-Hamilton Group, 156 F.3d at 1211;
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`Serrano v. Telular Corp., 111 F.3d 1578, 1583 (Fed. Cir. 1997). The alternative
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`structures must be specifically identified, not just mentioned as possibilities, in order to
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`be included in the patent claim’s scope. See Fonar Corp. v. Gen. Elec. Co., 107 F.3d
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`1543, 1551 (Fed. Cir.), cert. denied, 522 U.S. 908 (1997).
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`II. THE PATENTED TECHNOLOGY
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`Endotach is the exclusive licensee of the Rhodes patents and has the right to
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`enforce the Rhodes patents against all infringers. Dkt. No. 1, ¶ 11. The Rhodes patents
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`are directed to intraluminal and endovascular grafts for placement within a blood vessel,
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`duct or lumen to hold it open. ‘154 patent, Abstract; ‘417 patent, Abstract. The grafts
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`are composed of a flexible, tubular member or sleeve with multiple stents mounted on
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`the periphery of the tube. Id. Both the ‘154 and the ‘417 patents issued in the 1990s.
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`‘154 patent, Date of Patent: June 16, 1992; ‘417 patent, Date of Patent, Jan. 14, 1997.
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`A. THE ‘154 PATENT
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`In the ‘154 patent, the sleeve and stents are expandable such that the inner
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`cross-sectional area of the sleeve is increased. ‘154 patent, Abstract. Once expanded,
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`“the stents[, whether internal or external to the sleeve,] are resistant to contraction back
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`to the compact state.” Id. The graft in the ‘154 patented invention is able to bend along
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`its longitudinal axis to accommodate curved vessels, ducts or lumens. Id. The ‘154
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`patented invention claimed to overcome the problems associated with prior art
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`intraluminal endovascular grafts such as chronic and/or acute restenosis; lack of
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`effective control over the final expanded configuration of the graft; and relative rigidity,
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`which prevents use in longer, curved vessels. Id. col.2, l.11 to col.3, l.52.
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`Although the ‘154 patent has thirty-one (31) claims (some of which are method
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`claims), Endotach is asserting only independent claims 1, 14 and 15 against Cook. Id.
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`col 9, l.28 to col.14, l.18; Dkt. No. 81, at 2. The asserted claims read:
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`1. An intraluminal graft of introduction within a portion of a blood
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`vessel, duct or lumen of a living being, said graft comprising a sleeve and
`at least two stent means mounted thereon, said sleeve being an elongated
`member of a generally tubular shape having a longitudinal axis and
`formed of a
`first, relatively
`flexible, material, said material being
`impervious to the ingrowth of tissue therein, each of said stent means
`being generally ring-like in shape, [s]aid stent means being mounted about
`the periphery of a surface of said sleeve at selected points therealong to
`form (a) [sic] respective first sleeve sections, each of said first sleeve
`sections extending for respective portions of the length of said sleeve and
`being spaced from each other, said sleeve additionally comprising at least
`one second section, said second section being interposed between said at
`least two first sections, each of said stent means being arranged to be
`expanded from a compact state to an expanded states as said sleeve is
`so expanded so that the cross-section area of the interior of said sleeve is
`enlarged, said stent means when is said expanded state being resistant to
`contraction back to said compact state to thereby hold said sleeve in said
`compact state to thereby hold said sleeve in said expanded stated, said
`graft being able to bend longitudinally with respect to said axis to enable
`said graft to be readily accommodated within a curved blood vessel, duct
`or lumen.
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`14. An intraluminal graft for introduction within a portion of a blood
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`vessel, duct or lumen of a living being, said graft comprising a sleeve and
`stent means mounted thereon, said sleeve being an elongated member of
`a generally tubular shape having a longitudinal axis and formed of a first,
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`* * *
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`relatively flexible, material, said material being impervious to the ingrowth
`of tissue therein, said sleeve comprising an outer peripheral surface, said
`stent means being generally ring-like in shape and mounted on said outer
`peripheral surface of said sleeve to form a first sleeve section, said stent
`means being arranged to be expanded from a compact state to an
`expanded state as said sleeve is so expanded so that the cross-sectional
`area of the interior of said sleeve is enlarged, said stent means when in
`said expanded state being resistant to contraction back to said compact
`state to thereby hold said sleeve in said expanded state, said graft being
`able to bend longitudinally with respect to said axis to enable said graft to
`be readily accommodated within a curved blood vessel, duct or lumen.
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`15. An intraluminal graft for introduction within a portion of a blood
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`vessel, duct or lumen of a living being, said graft comprising a sleeve and
`stent means mounted thereon, said sleeve being an elongated member of
`a generally tubular shape having a longitudinal axis, an outer peripheral
`surface, and being formed of a first, relatively flexible, material, said
`material being impervious to the ingrowth of tissue therein, said stent
`means being generally ring-like in shape and mounted on said outer
`peripheral surface of said sleeve to form a first sleeve section, said first
`sleeve section extending for only a portion of the length of said sleeve to
`form a first sleeve section, said first sleeve section extending for only a
`portion of the length of said sleeve, said sleeve additionally comprising a
`second sleeve section contiguous with said first sleeve section, said stent
`means being arranged to be expanded from a compact state to an
`expanded state as said sleeve is so expanded so that the cross-sectional
`are of the interior of said sleeve is enlarged, said stent means when in
`said expanded state being resistant to contraction back to said compact
`state to thereby hold said sleeve in said expanded state, said first and
`second sleeve sections being able to bend longitudinally with respect to
`said axis to enable said graft to be readily accommodated within a curved
`blood vessel, duct or lumen.
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`Id. col.9, l.28 to col.10, l.67.
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`The parties have stipulated to the meaning of two terms in the ‘154 patent: “first
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`sleeve section[s]” means “section[s] of sleeve where the [stent means or stent] is/are
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`located;” and “second sleeve section[s]” means “section[s] of sleeve where the [stent
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`means or stent] is/are not located.” Dkt. No. 87, at 1. The disputed terms of the ‘154
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`patent include: “stent means” and “when in said expanded state being resistant to
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`contraction back to said compacted state to thereby hold said sleeve in said expanded
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`state.” Id. at 2.
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`B. THE ‘417 PATENT
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`In the ‘417 patent, the stents are mounted on the outer surface of the sleeve.
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`‘417 patent, Abstract. The stents have “anchoring projections” that “are preferentially
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`oriented to include portions extending at an acute angle to the direction of the fluid flow
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`to tightly engage the interior of the wall of the vessel, duct, or lumen under the force
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`applied by the fluid flowing through the device.” Id.
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`The ‘417 patent has fifteen (15) device claims. ‘417 patent, col.9, l.23 to col.10,
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`l.45. Endotach is asserting claims 1, 2 and 13 of the ‘417 patent against Cook. Dkt. No.
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`81, at 7. The asserted claims of the ‘417 patent read:
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`1. An intraluminal medical device for securement within a vessel,
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`duct, or lumen of a living being, the vessel, duct, or lumen having an
`interior surface, said device comprising a tubular member and anchoring
`means, said
`tubular member having a passageway extending
`therethrough and an outer periphery, said tubular member being arranged
`to have a body fluid flow through said passageway in a first direction when
`said device is located within the vessel, duct, or lumen, whereupon a force
`is applied to said tubular-member, said anchoring means being located
`adjacent said outer periphery of said tubular member and comprising
`plural projections arranged for engagement with the interior surface of the
`vessel, duct, or lumen, each of said projections having a leading portion
`located in the upstream direction of the fluid flow and a trailing portion
`located in the downstream direction thereof, said trailing portion including
`at least one surface preferentially oriented to extend at an acute angle to
`the first direction, whereupon the force applied to said tubular member by
`the fluid flowing through said passageway produces on each of said
`projections a force component to cause said at least one surface to tightly
`engage the interior surface of the vessel, duct, or lumen to fixedly secure
`said device in place.
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`2. The device of claim 1 wherein said at least one surface is
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`inclined upward in the first direction.
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`* * *
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`9. The device of claim 1 wherein said tubular member is a stent.
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`10. The device of claim 9 wherein said stent is expandable from a
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`contracted state to an expanded state, said anchoring means engaging
`the interior surface of the vessel, duct, or lumen when said stent is in said
`expanded state to secure said device in place.
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`* * *
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`13. The device of claim 10 wherein said device is an endovascular
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`graft, said endovascular graft additionally comprising a graft sleeve, said
`sleeve being coupled to said stent and having an outer surface and inner
`passageway through which the body fluid flows in the first direction to
`apply the force to said projections.
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`Id. col.9, l.23 to col.10, l.40.
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`The parties have stipulated to the meaning of two terms in the ‘417 patent: “first
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`direction” means “direction of
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`fluid
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`flow;” and “preferentially oriented” means
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`“positioned.” Dkt. No. 87, at 1. The parties dispute the meaning of the following terms:
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`“tubular member;” “anchoring means;” “projections;” “engagement with” or “engaging;”
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`“to tightly engage the interior surface of the vessel, duct or lumen to fixedly secure said
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`device in place;” “a leading portion;” “a trailing portion;” “at least one surface;” and
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`“stent.” Dkt. No. 87, at 2-3.
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`III. CONSTRUCTION OF THE DISPUTED TERMS OF THE ‘154 PATENT
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`A. STENT MEANS
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`The parties dispute whether the Court should interpret the term “stent means”
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`according to § 112, ¶ 6. The use of the word “means” creates a presumption that § 112,
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`¶ 6 applies, but the presumption can be rebutted if either (1) the claim element recites
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`no function corresponding to the means; or (2) “even if the element specifies a function,
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`[] it also recites sufficient structure or material for performing that function.” Rodine, 174
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`F.3d at 1302. Endotach argues that the term “stent” had a well understood structure in
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`the art at the time of the invention and that “the claim language includes sufficient
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`structure to perform the recited function.” Dkt. No. 82, at 9. Specifically, a “stent” is a
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`tubular structure used to support a blood vessel. Id. at 11. Endotach asserts that “stent
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`means” and “stent” are used interchangeably in the specification to describe the part
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`that holds the graft open, which implies that the terms mean the same thing. Id. at 12.
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`Further, the lack of a more precise structure does not render the term indefinite because
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`the term “stent” implies a broad class of structures well known in the art. Even if the
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`Court decides that the strictures of § 112, ¶ 6 should apply to the term, Endotach avers
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`that the term should be broadly construed to be any “ring-shaped or tubular shaped
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`stent.” Id. at 14-15.
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`Cook asserts that the § 112, ¶ 6 presumption should apply. Dkt. No. 92, at 18-
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`20. Specifically, Cook argues that the function is to hold the sleeve in an expanded
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`state. Id. at 18. Further, there is insufficient recitation of the structure in the claims to
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`perform this function; therefore, the “stent means” is limited to the structures identified in
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`the specification, which are deformable, non-resilient ring-like members 30 or 40. Dkt.
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`No. 19-21. Cook states that the term “stent means” is too generic to overcome the
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`presumption that it is a means-plus-function term. Dkt. No. 93, at 6. Cook also
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`contends that, even if the Court decides that the “stent means” is not amenable to
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`interpretation under § 112, ¶ 6, the term should be limited to exclude self-expanding
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`stents because the patent disparages such devices. Dkt. No. 92, at 21-23.
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`The Court concludes that the strictures of § 112, ¶ 6 do not apply to the term
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`“stent means” because the term “stent” had a well-known structure in the art at the time
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`of the invention and that structure combined with the additional structure set forth in the
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`claims is sufficient to perform the recited function. The parties presented the testimony
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`of experts on the subject of whether there was enough structure in the claims to perform
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`the function. See, generally, Dkt. No. 96, Hr’g Tr. The Court does not find it necessary
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`to resort to their opinions with respect to the legal issue of the application of § 112, ¶ 6.
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`However, the Court found it instructive that both experts testified that a “stent” had an
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`ordinary meaning to one skilled in the art at the time of the invention; and referred to a
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`broad class of hollow or tube-like structures that hold something open or provided
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`support. Hr’g Tr. at 20-21 (Silver-Direct); 90 (McLean-Cross). See also, STEDMAN’S
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`MEDICAL DICTIONARY, at 1674 (Williams & Wilkins, 26th Ed. 1995) (defining “stent” as
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`“[s]lender thread, rod, or catheter, lying within the lumen of tubular structures, used to
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`provide support during or after their anastomosis, or to assure patency of an intact but
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`contracted lumen”) (hereinafter, “STEDMAN’S’”). Further, the term, broadly construed,
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`covered both self-expanding stents and stents that required a secondary tool, such as a
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`balloon, to cause them to expand. Hr’g Tr. at 22 (Silver-Direct); 89-90 & 92 (McLean-
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`Cross).
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`Starting with the claim language, each independent device claim uses a “stent
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`means” to perform the function of holding open the graft sleeve. ‘417 patent, col.9, ll.31,
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`35-40, 44-50; col.10, ll.25, 31-39; id. ll.45, 50-63. Further, the structure recited in the
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`independent claims, other than the use of the word “stent” itself, is the “generally ring-
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`like [] shape.” Id. col.9, ll.35-36; id. col.10, ll. 31, 51. However, the claims also suggest
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`a material or mechanical requirement that allows the stent means to perform its
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`function. The claims require that the stent means be “resistant to contraction back to [a]
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`compact state” once it has been expanded. Id. col.9, ll.47-49; id. col.10, ll.37-49 & ll.60-
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`62.
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`Cook asserts that this element merely recites what the stent means does, not the
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`structure that performs the recited function. But, Cook misses the connection between
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`the class of objects that were known to those skilled in the art and the requirements set
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`forth here that they are ring-like and resistant to contraction once expanded. These
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`requirements narrow the structure of the class of devices known as stents. Further,
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`Cook itself acknowledges that the correct interpretation of stent means has a special
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`structural property, regardless of whether or not § 112, ¶ 6 applies, because it
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`advocates that any stent means be “deformable” and “non-resilient.” Dkt. Nos. 92, at
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`18-23; 93, at 2-10. As the Federal Circuit has stated, if the claim recites enough
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`structure or materials for performing the stated function, then the presumption that §
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`112, ¶ 6 applies is overcome. Rodine, 174 F.3d at 130. Combined with the knowledge
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`of one skilled in the art at the time of the invention as to the plain meaning of stent (a
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`hollow support), according to the claims of the ‘417 patent, a “stent means” is a
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`generally ring-like, hollow support that is resistant to contraction back to a compa