Acera Surgical, Inc. v. Nanofiber Solutions, LLC

District Court, D. Delaware·Decided May 25, 2023·No. 1:20-cv-00980·Unknown

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

ACERA SURGICAL, INC., RETECTIX, LLC, and WASHINGTON UNIVERSITY,

Plaintiffs, C.A. No. 20-980-CFC-JLH v.

NANOFIBER SOLUTIONS, LLC, PARAGEN TECHNOLOGIES LLC, ATREON ORTHOPEDICS LLC, and RENOVODERM LLC,

Defendants,

and

NANOFIBER SOLUTIONS, LLC, and THE RESEARCH FOUNDATION FOR THE STATE UNIVERSITY OF NEW YORK,

Counterclaim Plaintiffs,

v.

ACERA SURGICAL, INC.,

Counterclaim Defendant.

REPORT AND RECOMMENDATION

Plaintiffs Acera Surgical, Inc., Retectix, LLC, and Washington University (collectively, “Plaintiffs”) brought this patent infringement action against Defendants Nanofiber Solutions, LLC, Paragen Technologies LLC, Atreon Orthopedics LLC, and Renovoderm LLC (collectively, “Defendants”) on July 23, 2020. Currently pending before the Court are the parties’ claim construction disputes regarding two terms in U.S. Patent No. 11,224,677 (the ’677 patent). I previously issued a Report and Recommendation in this case on October 12, 2022 (D.I. 147) resolving other claim construction disputes, which the Court ultimately adopted (D.I. 177). At that time, the ’677 patent was not yet in the case. On November 7, 2022, Plaintiffs added a claim of direct infringement of the ’677 patent against Defendants. (D.I. 152.) I held a Markman hearing on April 14, 2023 to address the

’677 disputes. (“Tr __.”) For the reasons discussed below, I recommend that the disputed terms be construed as follows: Term Recommended Construction “commingled in the non-woven electrospun plain and ordinary meaning (i.e., the two fibers polymeric scaffold” sets are mixed or blended in the scaffold) (claim 15) “poly(lactide-co-caprolactone)” poly(L-lactide-co-caprolactone), poly(D- (claim 22) lactide-co-caprolactone), or poly(D,L-lactide- co-caprolactone)

Further, I recommend that the parties’ agreed-upon constructions1 be adopted as follows:

Term Recommended Construction “first set of non-woven electrospun polymeric first group of non-woven electrospun fibers”/“second set of non-woven electrospun polymeric fibers/ polymeric fibers” second group of non-woven electrospun polymeric fibers “pores formed by the first set of non-woven open spaces between fibers electrospun polymeric fibers and the second set of non-woven electrospun polymeric fibers” “top surface”/“bottom surface” top exterior boundary of the scaffold/ bottom exterior boundary of the scaffold “protrusions arising from the top or bottom protrusions arising from the top or bottom surface” exterior boundary of the scaffold “depressions in the top or bottom surface” depressions in the top or bottom exterior boundary of the scaffold. A mere pore, is not a “depression” in the surface.

1 (See D.I. 184 at 1.) I. LEGAL STANDARDS The purpose of the claim construction process is to “determin[e] the meaning and scope of the patent claims asserted to be infringed.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). When the parties have an actual dispute

regarding the proper scope of claim terms, their dispute must be resolved by the judge, not the jury. Id. at 979. The Court only needs to construe a claim term if there is a dispute over its meaning, and it only needs to be construed to the extent necessary to resolve the dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). “[T]here is no magic formula or catechism for conducting claim construction.” Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005). But there are guiding principles. Id. “The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation.” Id. at 1313. In some cases, the ordinary meaning of a claim term, as understood by a person of ordinary skill in the art, is readily apparent even to a lay person and requires “little more than the application of the widely accepted meaning

of commonly understood words.” Id. at 1314. Where the meaning is not readily apparent, however, the court may look to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Those sources include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. “The claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d at 1314. For example, “the context in which a term is used in the asserted claim can be highly instructive.” Id. Considering other, unasserted, claims can also be helpful. Id. “For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Id. at 1314–15.

In addition, the “claims must be read in view of the specification, of which they are a part.” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The specification “is always highly relevant to the claim construction analysis.” Id. (quoting Vitronics, 90 F.3d at 1582). The specification may contain a special definition given to a claim term by the patentee, in which case, the patentee’s lexicography governs. Id. at 1316. The specification may also reveal an intentional disclaimer or disavowal of claim scope. Id. However, “even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal marks omitted).

Courts should also consider the patent’s prosecution history. Phillips, 415 F.3d at 1317. It may inform “the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. Statements made by a patentee or patent owner during inter partes review may also be considered. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017). In appropriate cases, courts may also consider extrinsic evidence, which “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. For example, dictionaries, especially technical dictionaries, can be helpful resources during claim construction by providing insight into commonly accepted meanings of a term to those of skill in the art.

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Acera Surgical, Inc. v. Nanofiber Solutions, LLC, (D. Del. 2023).

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