Confluent Surgical, Inc. v. HyperBranch Medical Technology, Inc.
1:17-cv-00688
D. Del.Jul 5, 2019Background
- Plaintiffs (Confluent Surgical and Integra entities) assert infringement of seven patents in two related families that claim liquid-mixing/dispensing spray assemblies incorporating a connector/manifold, an elongated body (shaft/member/portion), a tip, and an insert.
- The parties dispute construction of fifteen claim terms; this Report & Recommendation addresses several contested terms focusing on "elongated" and phrases describing the relationship between the connector/manifold and the elongated body, plus one phrase about a connector extending proximally from the body.
- Plaintiffs proposed broadly descriptive constructions (e.g., "elongated" = "extended" or simply a "structure of the applicator"), which the court found unhelpful because they render "elongated" meaningless in context.
- Defendant (HyperBranch) proposed constructions requiring an objective length/width relationship for "elongated" ("longer in the longitudinal dimension than in the dimensions perpendicular to the longitudinal axis") and, alternatively, argued several relationship-phrases are indefinite unless they require the connector and elongated body to be distinct parts.
- The intrinsic record (specification and figures) discloses elongated components that are longer than wide and also discloses embodiments where connector and elongated body are "integrally formed" (unitary/Y-shaped piece), creating the core definiteness dispute.
- The court concluded HyperBranch’s strict-separateness remedy was not supported and recommended constructions that give "elongated" a length/width meaning while permitting integrally formed connector/body embodiments and finding the challenged phrases definite.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Meaning of "elongated" and related terms ("elongated shaft/member/portion") | "Elongated" means "extended"; modifier is a descriptive name indicating spatial relationship, not a length/width requirement. | "Elongated" should be read in its ordinary sense: longer in the longitudinal dimension than perpendicular dimensions; constructions should reflect that relation. | Adopted defendant's meaning: "elongated" = "longer in the longitudinal dimension than in the dimensions perpendicular to the longitudinal axis"; analogous constructions for shaft/member/portion. |
| Phrases describing connector/manifold vs. elongated body (e.g., "elongated portion extending distally from the connector portion") — definiteness / separateness | Claims do not require separate manufacturing or distinct, detachable parts; elements can be integrally formed (unitary) and still satisfy the claim if a POSA can identify the required portions. | Claims are indefinite for embodiments where connector and elongated body are unitary; if not indefinite, require constructions that demand the elements be structurally distinct. | Rejected defendant's separateness requirement. Construed phrases to require an elongated element (as above) that "extends distally away from the connector along its longitudinal axis," and held terms definite because specification and claims provide sufficient boundaries. |
| Whether court must require objective boundary between connector and body to avoid indefiniteness | No; POSA can determine presence of required elements by visual inspection and claim context even if exact start/end points are imprecise. | Yes; without objective boundary, POSA cannot determine whether structure is only a connector or connector plus elongated body, making claims indefinite. | Found defendant failed to prove indefiniteness by clear and convincing evidence; claims are not indefinite despite unitary embodiments. |
| Construction of "a connector extending proximally from and operably connected to the body" | Broad, functional description (structure extending toward source and operably joined). | Asserted term may be indefinite; if not, should require that connector be joined to proximal end of a distinct body so joined elements operate together. | Construed to mean "a connector joined to the proximal end of a body so the joined elements are capable of operation." (consistent with allowing integrally formed embodiments) |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) (definiteness standard: claims must inform with reasonable certainty in view of specification and prosecution history)
- All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774 (Fed. Cir. 2002) (purpose of definiteness is to provide public notice of claim scope)
- Festa Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (patentee and public must know boundaries of claimed invention)
- Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) (claim construction should give meaning to all claim terms)
- Unique Concepts, Inc. v. Brown, 939 F.2d 1558 (Fed. Cir. 1991) (all claim limitations must be considered meaningful)
- Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357 (Fed. Cir. 2003) (clear-and-convincing standard for factual issues critical to indefiniteness)
- Spansion, Inc. v. Int'l Trade Comm'n, 629 F.3d 1331 (Fed. Cir. 2010) (complexity of infringement analysis does not alone render a claim indefinite)
- Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332 (Fed. Cir. 2018) (patentee need not define invention with mathematical precision for definiteness)
- SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005) (definiteness focuses on whether claim delineates the bounds of the invention to a skilled artisan)