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.

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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