Massachusetts Patent Litigation Wrap Up – November 2019
April 29, 2020
Massachusetts Patent Litigation Wrap Up – November 2019
April 29, 2020
This post is a part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders.
MedIdea, L.L.C. v. DePuy Orthopaedics, Inc., No. CV 17-11172-LTS, 2019 WL 6052370 (D. Mass. Nov. 7, 2019 and Nov 15, 2019) (Sorokin, J.)
In November, Judge Sorokin construed multiple claim terms in a patent litigation between MedIdea and DePuy Orthopaedics.
The disputed patents were directed towards total knee replacement implants involving “cam-and-post” designs. MedIdea claimed that DePuy’s Attune® knee replacement systems directly and willfully infringed MedIdea’s patents.
The Court construed the following terms as described below.
The Court construed “cam” to mean “a structure that makes sliding or rolling contact with the tibial post as the knee bends.” The Court rejected MedIdea’s argument that “cam” “need not be construed on its own, as it will be discussed extensively at trial, the plain and ordinary meaning can be discerned and applied, and each time the word appears [in the patents] it is accompanied by a modifier that informs its meaning.” The Court rejected this argument because “cam” was “not a term with which laypeople are likely to be familiar, and it will be critical for the factfinders in this case” noting that “it is not the jury’s role, but the Court’s exclusive obligation, to construe a patent’s terms.” (citing Markman).
Cam Action Surface; Point of Cam Action; Cam Action Point
The Court construed these terms to mean “the surface of a cam that contacts the tibial post.” The parties agreed that a skilled artisan would understand these three terms “to have one common meaning.” MedIdea argued that these terms didn’t need construction because they “had a plain and ordinary meaning. . . .” Similar to the “cam” term, the Court rejected this argument determining that, under Markman and O2 Micron (Fed. Cir. 2008), it was “required  to construe patent terms when the parties disagree as to their meaning.”
The Court further determined these claim terms were limited to convex surfaces. The Court found that “[e]very embodiment in the specification discloses points of cam action that are convex.” The Court also discussed MedIdea’s previous pleadings which the Court found showed that “MedIdea steadfastly and repeatedly maintained that the claimed points of cam action were met by convex surfaces.”
Cam Mechanism; A Member of the Distal Femoral Component Bridging the Intercondylar Region
The parties agreed that these two terms had the same meaning in the disputed patents but “they disagree[d] on what that construction should be.” The Court largely adopted DuPuy’s construction, determining the terms to mean “a structure including two or more cams.” The Court found the intrinsic evidence to be aligned with this construction as the patents’ “common specification criticizes single-cam structures and repeatedly references multiple cams and/or multiple points of cam action” and the patents’ “claims consistently pair these terms with references to at least two separate cams or cam action surfaces.” The Court also found the inventor’s documents and testimony corroborative of the Court’s construction (albeit unnecessary in light of the clear intrinsic evidence).
The claims also used the word “separate.” MedIdea argued that “separate” meant “distinct.” DePuy proposed “separate” to mean “spaced apart.” The Court rejected MedIdea’s proposed construction as ambiguous and adopted DePuy’s proposed construction because it was consistent with the patents’ intrinsic evidence and conformed to the word’s “widely accepted meaning.”
The parties agreed that MedIdea defined this term to the patent examiner during prosecution and that that definition controlled. But the parties’ disagreed “how that definition should be worded here.” The court concluded that the term meant “the bridging material that extends from a first cam to a second, separate cam, together with the second, separate cam.” The Court found that this construction “account[ed] for the various references to the terms appearing in the prosecution history.”
Cam Mechanism of the Femoral Component Has a . . . Convex Portion, a Concave Central Portion, and [a] . . . Convex Posterior Portion
The parties’ disputed whether this “term’s definition should specify that the ‘concave central portion’ may not contact the tibial post.” The Court found that it should not because such a construction would encompass embodiments “explicitly criticized in the specification” and “disavowed by [the inventor] as outside the scope of his invention.” The Court also found relevant that no embodiment in the patents’ common specification disclosed the “concave central portion” contacting the tibial post. Accordingly, the Court construed this term to mean “a first convex cam surface and a second, posterior convex cam surface that are separated by a concave portion of the cam mechanism that does not contact the tibial post.”
The Court adopted DuPuy’s proposal and construed “proximal” and “proximally” to mean “toward the hip,” and construed “distal” and “distally” to mean “away from the hip.” The Court found these constructions “clear, consistent with the plain and ordinary meaning of these terms to a person of ordinary skill in the art, and supported by the intrinsic record.”
Early After the Initiation of Flexion
The Court adopted DuPuy’s proposal and construed this term to mean “prior to 30 degrees of flexion.” The Court supported its construction with the patents’ common specification, which “criticizes prior art [where] the relevant contact occurs at 25 or 30 degrees of flexion.” The Court found this construction consistent with other disclosures in the specification and consistent with the term’s “the plain and ordinary meaning[.]” The Court found that MedIdea’s construction, which used 60 degrees instead of 30 degrees, “offer[ed] no intrinsic or extrinsic support, and no non-arbitrary basis. . . . ”
The Court’s construction of these terms led to summary judgment or stipulated dismissal of all of MedIdea’s infringement contentions. MedIdea has appealed the case to the Federal Circuit.
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Canon, Inc. v. Avigilon USA Corp. Inc., No. CV 19-10931-NMG, 2019 WL 6211225 (D. Mass. Nov. 20, 2019) (Gorton, J.)
On November 20, Judge Gorton considered a motion to dismiss in a patent dispute between Canon and Avigilon. The asserted patent related “to a method of transmitting web-accessed, compressed videos.” Avigilon moved to dismiss Canon’s claims for induced and willful infringement because they “contain[ed] only conclusory allegations.”
The Court noted that for Avigilon to be liable for induced infringement it must “have had actual knowledge of the  patent.” The Court found Canon’s complaint inadequate as it contained mere “[c]onclusory assertions.”
The Court also considered Canon’s argument that “Avigilon has continued to induce infringement after it became aware of the  patent as a result of the instant lawsuit.”
The Court found that there was a court split “as to whether an alleged inducer must be shown to have had knowledge of the patent prior to the filing of a lawsuit.” The Court determined that the majority view was that “an infringer who continues to induce infringement even after becoming aware of the subject patent cannot evade liability merely because it learned of the patent as a result of a lawsuit.”
The Court compared this to the minority of courts which “have held that allowing induced infringement claims to proceed without evidence of pre-suit knowledge constitutes an improper attempt to ‘bootstrap the knowledge [d]efendants now have based on Plaintiff’s filing of the Complaint onto defendant’s acts before Plaintiff filed its complaint.’”
The Court also considered a further nuance of the majority view which only “allow[ed] a claim of knowledge arising from the lawsuit’s complaint” when knowledge was pled in an amended complaint. Since Canon relied on its original complaint to establish post-lawsuit knowledge, “Canon [did] not alleged facts sufficient to support  a pleading [of knowledge] at the time of the filing.” But the Court gave Canon leave to file an amended complaint.
The Court also dismissed Canon’s willful infringement claim as similarly faulty.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Bobby Hampton is an Associate in Fish & Richardson’s Boston office. In addition to his intellectual property practice, Mr. Hampton represents low-income clients pro bono in housing and immigration matters. While in law school, Mr. Hampton focused on intellectual property through research, advanced courses, and the Giles Sutherland...