Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 1 of 15 PageID #: 6734
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`
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`Case No. 6:15-CV-201-JRG-KNM
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`FLEXUSPINE, INC.,
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`Plaintiff,
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`v.
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`GLOBUS MEDICAL, INC.,
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`Defendant.
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`MEMORANDUM OPINION AND ORDER
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`On April 8, 2016, the Court issued an order construing the disputed claim terms of
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`United States Patent Numbers 7,204,853 (“the ’853 Patent”), 7,316,714 (“the ’714 patent”),
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`7,909,869 (“the ’869 Patent”), 8,123,810 (“the ’810 Patent”), and 8,647,386 (“the ’386 Patent”)
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`asserted in this suit by Plaintiff Flexuspine, Inc. (“Plaintiff”) against Defendant Globus Medical,
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`Inc. (“Defendant”). During the Pretrial Conference held on July 7, 2016, the parties identified a
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`dispute regarding the scope of the terms “configured to” and “configured such that.” The Court
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`allowed the parties to file supplemental claim construction briefing. After considering the
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`parties’ supplemental briefing (Doc. Nos. 151, 153, and 163), the Court issues this Supplemental
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`Claim Construction Memorandum Opinion and Order, and ADOPTS the constructions set forth
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`below.
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 2 of 15 PageID #: 6735
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`I.
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`BACKGROUND
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`
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`The asserted patents relate to expandable intervertebral implants. The ’853 and ’714
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`Patents disclose device claims directed toward artificial spinal unit assemblies. The ’810
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`Patent discloses an intervertebral implant with a “wedged” expansion member. The term
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`“configured to” appears in claim 1 of the ’853 Patent, claims 1 and 2 of the ’714 Patent, and
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`claim 17 of the ’810 Patent. The term “configured such that” appears in claim 1 of the ’714
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`Patent. Claim 1 of the ’853 Patent is an exemplary claim and recites the following elements
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`(disputed term in italics):
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`1. An intervertebral implant for a human spine, comprising:
`an upper body comprising an inferior surface and a superior
`surface, wherein the superior surface of the upper body is
`configured to engage a first vertebra of the human spine;
`a lower body comprising a superior surface and an inferior
`surface, wherein the inferior surface of the lower body is
`configured to engage a second vertebra of the human
`spine;
`an insert configured to be positioned between the superior
`surface of the lower body and the inferior surface of the
`upper body before insertion of the intervertebral implant
`between the first vertebra and the second vertebra of the
`human spine; and
`an expansion member configured to elevate the insert to
`increase a separation distance between the upper body and
`the lower body after insertion of the intervertebral implant
`in the human spine, and wherein a portion of the superior
`surface of the lower body is configured to inhibit backout
`of the expansion member from the intervertebral implant.
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`II.
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`APPLICABLE LAW
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` “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415
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`F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water
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`Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts
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`examine the patent’s intrinsic evidence to define the patented invention’s scope. See id.;
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 3 of 15 PageID #: 6736
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`C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl.
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`Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
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`This intrinsic evidence includes the claims themselves, the specification, and the prosecution
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`history. See Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim
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`terms their ordinary and accustomed meaning as understood by one of ordinary skill in the
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`art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at
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`1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
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`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
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`terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
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`or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
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`lexicography governs. Id. Also, the specification may resolve ambiguous claim terms “where
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 4 of 15 PageID #: 6737
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`the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
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`permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at
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`1325. But, “‘[a]lthough the specification may aid the court in interpreting the meaning of
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`disputed claim language, particular embodiments and examples appearing in the specification
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`will not generally be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
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`1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
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`1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another
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`tool to supply the proper context for claim construction because a patent applicant may also
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`define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352,
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`1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term
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`in prosecuting a patent.”).
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`Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition is entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id.
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 5 of 15 PageID #: 6738
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`III. CONSTRUCTION OF DISPUTED TERM
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`1. “configured to” and “configured such that”
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`Disputed Term
`“configured to” /
`“configured such that”1
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`Plaintiff’s Proposal
`“constructed to operate without
`modification”
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`Defendant’s Proposal
`“designed to”
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`a) The Parties’ Positions
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`The parties dispute whether the term “configured to” means “constructed to operate
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`without modification,” as Plaintiff proposes, or if it means “designed to,” as Defendant proposes.
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`Plaintiff argues that the asserted claims are apparatus claims, and that infringement of the claims
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`occurs when the accused apparatus “is used or is available for use.” (Doc. No. 151 at 2) (citing
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`Mass Engineered Design, Inc. v. Ergotron, Inc., 633 F. Supp. 2d 361, 378 (E.D. Tex. 2009)).
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`According to Plaintiff, the appropriate interpretation of “configured to” is that the accused
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`implant is actually constructed such that it is capable of operating in the manner specified by the
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`asserted claims at any time, without modification. (Id. at 3.)
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`Plaintiff further argues that the specification describes how the structure of the preferred
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`embodiment “operates to expand the implant from a contracted to an expanded state, and how it
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`interacts within the human spine.” (Id.) According to Plaintiff, “[t]his suggests that the patentee
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`contemplated that the components would be arranged and the implant would be constructed such
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`that it is capable of, and actually does perform, a particular operation when used.” (Id.) Plaintiff
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`further contends that a “precise arrangement of components to achieve the claimed operation (or
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`a specific intent to arrange them or operate them in a certain way) is not required.” (Id.) Plaintiff
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`also argues that the extrinsic evidence indicates that “configured” means “to set up for
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`operation” or “to arrange or prepare (something) so that it can be used” (Id.) (citing Merriam-
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`1 The order will generally discuss the term “configured to” with the understanding that the
`analysis applies equally to the term “configured such that.”
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 6 of 15 PageID #: 6739
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`Webster’s Collegiate Dictionary 241 (10th ed. 2001); Merriam-Webster’s Learner’s Dictionary,
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`available at Merriam-Webster.com.)
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`Regarding Defendant’s construction, Plaintiff argues that Defendant will contend that the
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`accused products were not “configured to” have certain limitations asserted in the claims
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`because Defendant did not intend them to have those limitations. (Id. at 5.) Plaintiff contends
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`that “the designer’s intention behind the design does not play any part in determining direct
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`infringement of an apparatus claim.” (Id.) Plaintiff further argues that “[a]ny construction that
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`would infuse a requirement to prove the subjective intent of a designer into the infringement
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`inquiry would confuse the scope of the claims and should be rejected.” (Id.)
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`Plaintiff also contends that it “is not arguing that the [a]sserted [c]laims be read to cover
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`implants that are ‘configured to’ operate in a certain manner because they are capable of being
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`modified to operate” in such a fashion. (Id. at 6.) Plaintiff further contends that it is not arguing
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`that the asserted claims “be read to cover implants that are merely capable of infringing only
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`when used in a contraindicated manner that differs from its indicated use.” (Id.) According to
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`Plaintiff, the Court’s construction “should reflect that the implant is constructed to operate in the
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`manner further claimed in the remainder of the limitation.” (Id.)
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`Defendant responds that courts have found that “configured to” does not mean “capable
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`of,” and instead requires that the component is intentionally designed to perform the claimed
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`function.2 (Doc. No. 153 at 2.) Defendant contends that Plaintiff “erroneously suggests that cases
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`have held that ‘configured to’ can have the broad interpretation it advocates.” (Id. at 4.)
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`Defendant argues that “the asserted claims set forth certain required characteristics or
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`2 The parties cite to a number of district court cases, both within the district and outside of the
`district. The Court appreciates the value of this persuasive authority, and was informed by the
`facts and disputes in each of the cited cases. The Court has fully considered the findings and
`conclusions of the cited cases in the light of the parties’ arguments and the facts in this case.
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`Page 6 of 15
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 7 of 15 PageID #: 6740
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`components that perform certain functions.” (Id.) Defendant argues that the claims describe
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`upper and lower bodies ‘configured to engage’ a first or second vertebra.” (Id.) According to
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`Defendant, “[t]he patentees did not describe an intervertebral implant that is merely ‘capable of’
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`engaging a first and second vertebrae.” (Id.) Defendant further contends that Plaintiff’s
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`“interpretation would render these limitations devoid of meaning because anything in the implant
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`is capable of engaging the vertebrae.” (Id.)
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`Defendant also argues that “configured to elevate” in claim 1 of the ’853 Patent “cannot
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`simply mean that the insert (or the entire implant) is ‘capable of’ elevating under some set of
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`circumstances.” (Id.) Defendant contends that “’configured to elevate’ indicates that the
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`expansion member must be designed to elevate the insert to accomplish the specified objective
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`of increasing a separation distance between the upper and lower bodies.” (Id.) According to
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`Defendant, “[n]othing in the claim supports the broader interpretation that the expansion member
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`is simply ‘capable of’ elevating the insert or that the insert is merely ‘capable of’ elevating as an
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`unintended consequence of expansion.” (Id. at 5.)
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`Defendant further argues that “the phrase ‘a portion of the superior surface of the lower
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`body is configured to inhibit backout’ must be construed to mean ‘a portion of the superior
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`surface of the lower body is designed to inhibit backout.’” (Id.) Defendant contends that claim 1
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`of the ’714 Patent “requires the claimed intervertebral implant to be designed to allow
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`articulation (or increased articulation) as the separation distance between the upper and lower
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`bodies increases.” (Id.) Defendant argues that “[c]laim 1 is meaningless if the implant need only
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`be ‘capable of’ articulation or increased articulation once the distance between the upper and
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`lower bodies is increased.” (Id.)
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`Defendant also argues that the specification of the ’853 Patent “describes an expansion
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 8 of 15 PageID #: 6741
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`member that is specifically designed to raise the insert—not simply that the expansion member .
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`. . is ‘capable of’ raising the insert under some hypothetical set of circumstances.” (Id.) (’853
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`Patent at 5:21–25, 5:32–34). Defendant further argues that “[t]he specification also confirms that
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`a portion of the superior surface of the lower body must be intentionally designed to inhibit
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`backout.” (Doc. No. 153 at 6) (citing ’853 Patent at 9:38–40). Defendant also contends that
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`“articulation (or increased articulation) is one of the ’714 Patent’s primary goals.” (Doc. No. 153
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`at 6) (citing ’714 Patent at 3:31–37). Defendant argues that the specification of the ’714 Patent
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`“describes the articulation that results from an increase in the separation distance between the
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`upper and lower bodies in terms of specific design.” (Doc. No. 153 at 6) (’714 Patent at 5:37–
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`40). Defendant contends that the specification “show[s] that the claimed implant should be
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`designed to allow articulation or increased articulation, not that it is merely ‘capable of’ doing
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`so.” (Doc. No. 153 at 7.)
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`Defendant further contends that “[i]t is not enough for an implant to elevate or for an
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`insert to elevate.” (Id. at 7.) Defendant argues that claim 1 “requires that the ‘expansion member’
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`be ‘configured to elevate the insert.’” (Id.) Defendant also argues that “mere inhibition of
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`backout is not enough under claim 1 of the ’714 Patent.” (Id.) According to Defendant, “a
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`portion of the superior surface of the lower body must be configured to inhibit backout of the
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`expansion member.” (Id.) Defendant further argues that articulation or increased articulation
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`must result from increasing the separation distance between the upper and lower bodies. (Id.)
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`Defendant also contends that the dictionary definitions cited by Plaintiff “look back in time to
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`the design process and require inquiry into how a device was ‘set up’ ‘arranged’ or ‘prepared’ to
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`operate.” (Id.)
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`Defendant also argues that it is not attempting to impose “use” limitations on apparatus
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`Page 8 of 15
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 9 of 15 PageID #: 6742
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`claims. (Id. at 8) Defendant contends that it “seeks to impose ‘meaningful limits’ on the claims,
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`which define the invention in terms of function, e.g., ‘configured to elevate.’” (Id.) According to
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`Defendant, “[t]he patentees elected to use the terms ‘configured to’ in their claims, and ‘designed
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`to’ is the only construction that gives the claims’ structural language any meaning.” (Id.)
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`Defendant contends that Plaintiff’s construction “reads out ‘configured to’ from the claim
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`language.” (Id.) Defendant also argues that it “does not seek to impose a mens rea element on
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`direct infringement.” (Id.) Defendant further contends that its construction “properly imposes
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`meaning on the claims’ functional language and sets forth the attributes, i.e., the metes and
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`bounds, of the claimed implants.” (Id. at 9.)
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`Finally, Defendant argues that “[w]hether an accused device performs the claimed
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`function ‘some of the time’ has no bearing on the threshold issue of whether the scope of the
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`claims requires that an accused device be designed to perform the claimed function.” (Id. at 11.)
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`Defendant contends that Plaintiff “may also argue that inhibiting of backout or articulation does
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`in fact occur when implants are placed in the human body, and so the claim limitations at issue
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`are met no matter what the Court’s construction is.” (Id.) According to Defendant, “[t]he
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`question is what mechanism performs those functions under the claims and whether those
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`mechanisms are designed with that function in mind.” (Id.)
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`Plaintiff replies that Defendant’s construction is improper because “the use of the term
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`‘designed’ introduces the subjective intent of the person or party doing the ‘designing.’” (Doc.
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`No. 163 at 2.) Plaintiff argues that “[t]his goes too far and will result in a very high risk of
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`misleading . . . the jury into believing that subjective intent to infringe is required.” (Id.) Plaintiff
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`also argues that its construction “focuses on the operation of the device exactly as it is
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`constructed.” (Id.) Plaintiff contends that it “specifically included ‘without modification’ in its
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 10 of 15 PageID #: 6743
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`proposal to ensure that there are no issues of infringement based on any modifications to the
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`device.” (Id.) Plaintiff also argues that its construction “requires that the device actually does
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`perform the claimed function, as constructed, when . . . used in its intended environment between
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`two vertebrae in the human spine.” (Id. at 2–3.)
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`Plaintiff further argues that whether “a device was ‘designed’ with subjective intent to
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`perform a recited function is irrelevant to whether that device is ‘configured to’ perform it.” (Id.
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`at 3.) Plaintiff contends that “[p]roducts can be, and often are, constructed such that they can
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`perform a function without being subjectively designed to do so.” (Id.) According to Plaintiff,
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`the accused devices are “either structured such that the expansion member is elevated, that
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`backout of the expansion is inhibited, or that the expansion allows for articulation, or they are
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`not.” (Id.)
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`For the following reasons, the terms “configured to” and “configured such that”
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`should be given their plain and ordinary meaning.
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`b) Analysis
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`The term “configured to” appears in claim 1 of the ’853 Patent, claims 1 and 2 of the
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`’714 Patent, and claim 17 of the ’810 Patent. The term “configured such that” appears in claim 1
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`of the ’714 Patent. The terms are used consistently in the claims and are intended to have the
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`same general meaning in each claim. As an initial matter, the Court rejects both parties’
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`constructions because the proposals are inconsistent with the intrinsic evidence. Although both
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`sides downplay the intent of their respective constructions, the import of the constructions is
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`clear. Specifically, Plaintiff argues that “configured to” only requires the implant to be
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`“constructed such that [it] is capable of operating in the manner specified by the Asserted
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`Claims.” (Doc. No. 151 at 3) (emphasis added). Likewise, Defendant argues that “configured to”
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 11 of 15 PageID #: 6744
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`requires the component to be “intentionally designed to perform the claimed function.” (Doc.
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`No. 153 at 2) (emphasis added).
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`With respect to Plaintiff’s construction, interpreting “configured to” as requiring only
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`mere capability would eliminate any meaningful limits to the claims. See, e.g., SIPCO, LLC v.
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`Abb, Inc., Case No. 6:11-cv-48, 2012 U.S. Dist. LEXIS 106659, *29–33 (E.D. Tex. July 30,
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`2012). Here, the asserted claims set forth certain required characteristics or components that
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`perform certain functions. For example, the claims describe upper and lower bodies “configured
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`to engage” a first or second vertebra. The patentees did not describe an intervertebral implant
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`that is merely “capable of” engaging a first and second vertebrae. Such an interpretation would
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`render these limitations “devoid of meaning” because anything in the implant is capable of
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`engaging the vertebrae. Id. at *32.
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`For the same reason, “configured to elevate” in claim 1 of the ’853 Patent requires more
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`than an insert that is merely “capable of” elevating. Likewise, claim 1 of the ’714 Patent would
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`be meaningless if the implant needed to only be “capable of” articulation or increased
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`articulation. In sum, a “capable of” construction would eviscerate the claim’s limitation that the
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`implant is configured to perform the function of allowing articulation or increased articulation
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`through expansion.
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`The specification further confirms that “configured to” does not mean merely capable.
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`The Summary of the Invention section in the ’853 Patent describes an expansion member that
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`raises the insert, and not simply an expansion member that is “capable of” raising the insert. See,
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`e.g., ’853 Patent at 5:21–24 (“The expandable joint insert is raised above the bottom of the
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`channel by means of an expansion screw, an expansion plate, or other similar device . . . .”); ’853
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`Patent at 5:32–34 (“… the expandable joint is raised above the floor of the channel and lifts the
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 12 of 15 PageID #: 6745
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`upper body above the lower body to the desired disc height.”). Likewise, the specification
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`describes “a locking lip to ensure that the expansion plate is properly installed and to minimize
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`the potential for dislocating expansion plate 82.” ’853 Patent at 9:38–40.
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`Similarly, the ’714 Patent states that one of its primary goals is articulation (or increased
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`articulation) to “provide an anatomically correct range of motion.” ’714 Patent at 3:31–37.
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`Accordingly, the specification describes the articulation that results from being flexed and
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`extended. ’714 Patent at 5:40–43 (“As the artificial implant is flexed and extended, the convex
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`superior surface of the expandable joint insert articulates with the concave inferior surface of the
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`upper body.”). The figures of the ’714 Patent reinforce “articulation” as a functional
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`requirement. See, e.g., Figures 4a and 4b. These statements and figures show that the claimed
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`implant requires more than merely “capable of” articulation or increased articulation.
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`Plaintiff appears to suggest that it is not arguing “mere capability,” but its construction
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`and arguments indicate otherwise. For example, Plaintiff argues that “the patentee contemplated
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`that the components would be arranged and the implant would be constructed such that it is
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`capable of, and actually does perform, a particular operation when used.” (Doc. No. 151 at 3.)
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`(emphasis added). Yet, Plaintiff’s construction does not include the words “actually does
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`perform” or “actually configured” language. Accordingly, the Court rejects Plaintiff’s
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`construction.
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`With respect to Defendant’s arguments, Defendant’s construction improperly confuses
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`the scope of the claims by suggesting that the intent of a designer must be established to
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`determine the bounds of the claim. As noted by Plaintiff, the asserted claims are apparatus
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`claims, and the subjective intent of the designer does not expand or contract the claim’s scope. In
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`other words, the infringement inquiry is based on the structure of the accused devices as claimed.
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 13 of 15 PageID #: 6746
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`Furthermore, the Court agrees with Plaintiff that products can be constructed such that they
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`perform a function without being subjectively designed to do so.
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`Defendant argues that it “does not seek to impose a mens rea element on direct
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`infringement.” (Doc. No. 153 at 8.) Yet, Defendant also argues that “‘configured to’ does not
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`mean ‘capable of,’ and instead requires that the component is intentionally designed to perform
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`the claimed function.” (Doc. No. 153 at 2) (emphasis added). It is hard to understand how
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`“intentionally designed” would not require determining the “intent” of the designer.
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`Accordingly, the Court rejects Defendant’s construction.
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`In summary, the Court appreciates that the parties would like a construction that clearly
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`establishes whether a product does or does not infringe. However, that is not the Court’s role in
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`construing the disputed terms. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
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`1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe
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`every limitation present in a patent’s asserted claims.”). Instead, the Court is to give the disputed
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`terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art at
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`the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312–13; Alloc,
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`Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003). Here, the term “configured
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`to” means that the apparatus performs the recited limitations when used as an intervertebral
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`implant for a human spine. Indeed, Plaintiff appears to agree by arguing that its “construction
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`requires that the device actually does perform the claimed function, as constructed, when in use
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`in its intended environment between two vertebrae in the human spine.” (Doc. No. 163 at 2–3)
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`(emphasis added). As discussed, this requires proving more than mere capability, but less than
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`proving that a device was “intentionally designed to perform the claimed function.” (Doc. No.
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`153 at 3.)
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`Page 13 of 15
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`

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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 14 of 15 PageID #: 6747
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`Having resolved the parties’ claim construction dispute, whether an apparatus is
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`“configured to” meet the claim limitations is a question of fact that is properly submitted to the
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`jury. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter
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`the court has defined the claim with whatever specificity and precision is warranted by the
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`language of the claim and the evidence bearing on the proper construction, the task of
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`determining whether the construed claim reads on the accused product is for the finder of fact.”).
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`Accordingly, the terms “configured to” and “configured such that” should be given their plain
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`and ordinary meaning.
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`c) Court’s Construction
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`In light of the evidence submitted by the parties, the terms “configured to” and
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`“configured such that” will be given their plain and ordinary meaning. The Court’s
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`construction prohibits Defendant from arguing to the jury that the accused products do not
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`infringe because they were not designed to perform the recited function. The Court’s
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`construction also prohibits Plaintiff from arguing to the jury that the accused products infringe
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`because they are merely capable of performing the recited function. In summary, the Court’s
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`construction requires proving that the apparatus actually does perform the recited limitations
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`when used as an intervertebral implant for a human spine.
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`IV. CONCLUSION
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`The Court adopts the above constructions. The parties are ordered to not refer, directly or
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`indirectly, to each other’s claim construction positions in the presence of the jury. Likewise, the
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`parties are ordered to refrain from mentioning any part of this opinion, other than the definitions
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`adopted by the Court, in the presence of the jury. However, the parties are reminded that the
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`testimony of any witness is bound by the Court’s reasoning in this order but any reference to
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`Page 14 of 15
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`Case 6:15-cv-00201-JRG-KNM Document 191 Filed 08/05/16 Page 15 of 15 PageID #: 6748
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`claim construction proceedings is limited to informing the jury of the definitions adopted by the
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`Court.
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`Page 15 of 15
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`So ORDERED and SIGNED this
`Aug 5, 2016