Court Hears Arguments for Summary Judgment in Surgical Trainer Patent Case

Judge Zilly heard arguments recently on a pending motion for summary judgment in a case brought by Simulab Corp. involving U.S. Patent No. 6,780,016 for a Human Surgical Trainer and Methods for Training. The accused infringer is Synbone AG, a Swiss company.

A claims construction order was issued by the court back in September after the parties agreed no Markman hearing was necessary. The claims asserted by Simulab are 1, 2, 3, 4, 37, and 43. The three independent claims are 1, 37, and 43. Eight claim terms for the three independent claims were in dispute in the briefing leading up to the court's construction. All but one of these terms appear in claim 37.

Two claim terms in particular will play a major role in the pending motion for summary judgment, which was filed by the Defendant, those terms are "composite layer" and "elastomeric layer,"

From Judge Zilly's claims construction:

Despite having suggested specific elastomers as preferred materials, plaintiff seeks to escape the limitations of the technical definition by pointing to the inventor’s use of the adjective form “elastomeric” rather than the noun “elastomer.” Plaintiff contends that the suffix “ic” is expansive, resulting in a meaning of “like elastomers.” Although the suffix “ic” does transform a noun into an adjective with a general meaning of “having the character or form of” or “being,” as in “panoramic” or “rhombic,” see Webster’s at 1119, plaintiff’s argument is essentially circular. Plaintiff’s interpretation merely informs that the material must be similar to an elastomer; it does not define the properties necessary for a material to be considered elastomeric. As lexicographer, the patentee had the unfettered ability to choose among a variety of terms to express the invention and, in this case, the inventor could have used alternative adjectives like “polymeric” or “thermoplastic,” which appear in other portions of the specification. See Col. 9 at 46-47, Col. 10 at 21-22, Col. 10 at 55-56, Exh. 1 to Prehearing Statement (docket no. 16-3). “Polymeric” has a fairly generic definition, namely “made of repeating subunits,” while the related word “polymer” means a substance “made of giant molecules formed by the union of simple molecules.” McGraw-Hill at 1635. A “thermoplastic” is a “polymeric material with a linear macromolecular structure that will repeatedly soften when heated and harden when cooled; for example, styrene, acrylics, polyethylenes, vinyls, nylons, and fluorocarbons.” McGraw-Hill at 2137.

***

In contrast, plaintiff argues that the elastic property of the material is not relevant because the elastomeric layer is combined with a fibrous layer to form a composite layer, which is not required to stretch. Plaintiff’s contention lacks merit. As indicated in the prosecution history, a necessary feature of the surgical trainer invention is mimicking the resistance to cutting exhibited by actual human tissue. See Amendment & Request for Reconsideration at 15 (docket no. 16-5). Thus, the Court must ascribe significant importance to the patentee’s selection of the
term “elastomeric” as describing a class of materials uniquely suited to the task of providing a realistic response to incision or dissection. Because plaintiff has offered no evidence to the contrary, the Court assumes that this realistic response is due in substantial part to the material’s capacity to expand linearly and retract to its original size. Whether the realistic response can be achieved, however, with a substance that stretches less or rebounds slower than a material meeting the specialized definition of an elastomer remains unclear. The Court therefore declines
at this time to impose the technical requirements proposed by defendant, and instead interprets the term “elastomeric layer” to mean “a layer formed of a material that is capable of recovering size and shape after deformation.” See Webster’s at 730.

The Court struck all pre-trial dates until a decision could be reached with respect to Defendant's motion. The trial and related pre-trial dates will be reinstated "if appropriate" following a decision on this motion.

Simulab%20Claims%20Construction.pdf

In Re Comiskey: Fed. Cir. Narrowly Denies Rehearing En Banc

Rehearing en banc was denied today in the closely watched case dealing with patentable subject matter under 35 USC Section 101, In re Comiskey. The petition for rehearing en banc failed by two votes, (failing to achieve a majority of seven judges) as only Newman, Mayer, Rader, Bryson, Moore, JJ., voted to rehear the case en banc. Hal Wegner, gave a great summary of the decision today:

"The nub of the controversy is the "affirmance" of the PTO’s denial of claims based upon a new ground of rejection, patent-eligibility under 35 USC § 101, as opposed to the PTO’s affirmance of the Examiner on the basis of obviousness under 35 USC § 103.

As explained in an important dissent from denial of rehearing en banc, "[t]his case goes to the fundamental role of the appellate court – to review the decision appealed. In this case, the court declined to address the only ground for rejecting the patent claims decided below and appealed by the parties (§ 103). Instead, the court reached out to decide a new ground of rejection (§ 101), raised sua sponte by the court. The court evaluated both the process and machine claims under its chosen ground, § 101, concluding that the process claims were not directed to patentable subject matter, but that the machine claims, in light of our well established precedent were directed to patentable subject matter." Comiskey, __ F.3d at __ (Moore, J., dissenting from the denial of the petition for reh’g en banc, joined by Newman, Rader, JJ.)

Defending the panel’s action, the author of the panel opinion issued a separate opinion, Comiskey, __ F.3d at __ (Dyk, J., joined by Michel, C.J., Prost, J., concurring in the denial of rehearing en banc). Judge Lourie also issued a concurring opinion, while Judge Newman issued a dissenting opinion.

Open and Troubling Questions Raised by the Dissent: It is difficult to understand how a brand new ground to deny a patent can sua sponte be raised by the court which has nothing whatsoever to do with the proceedings below. Indeed, it is difficult to challenge the logic of Circuit Judge Moore in her opinion. Does the majority’s action now mean that a party can come up with a brand new basis to challenge patent validity in the context of a patent interference? If a party cannot, how can the court sua sponte do so?"

Plyboo Claims Construction Order Issued

Judge Leighton (Tacoma) recently construed the claim terms of U.S. Patent No. 5,543,197, a patent including claims for "parallel, randomly stacked, stranded, laminated bamboo beams and boards." According to the order, the term "beam" as used in the claims is not necessarily limited to something of sufficient size and strength to serve as a structural support. Further, the term "random orientation" as used in the claims means "that the bamboo segments and stocks used to construct the bamboo beam are not placed in an orderly or uniform fashion; they do not have a top or a bottom, or a front or a back. Instead, they are placed at random. As used in the ‘197 patent, the term also requires that the generally parallel bamboo segments have random, not uniform, lengths, and are staggered or lapped along the length of the beam."
teragren%20claims%20const.pdf

National Products, Inc. Wins at Federal Circuit

National Products Inc., a local maker of mounting products under the trademark RAM, won a victory at the CAFC yesterday. The opinion, authored by Chief Judge Michel, affirmed an order from the USDC in the Central District of California (Judge Audrey B. Collins) dismissing an action for declaratory judgment that was filed against NPI about a year ago by Panavise, Inc. Because NPI is a Darby client, I won't comment further other than to include some language from Judge Michel's opinion: "we do note that this appeal approaches wasting the court’s time and unduly delaying more deserving litigants."