Opinion
Case C-1-98-858.
February 15, 2002.
ORDER
This matter is before the Court on multiple motions for partial summary judgment. In an Order filed October 18, 2001 ("the Oct. 18th Order"), the Court ruled on a number of these motions and reserved judgment on the remaining motions pending rebriefing by the parties. (Doc. No. 247). In this Order, the Court will address the revised motions for partial summary judgment (Doc. Nos. 248, 249, and 250/251) filed pursuant to its Oct. 18th Order.
I. GENERAL BACKGROUND
The patents at issue, United States Patent No. 5,662,612 ("the `612 patent") and United States Patent No. 5,928,197 ("the `197 patent"), are part of a series of patents that relate to medical devices known as powered injectors which deliver contrast agents from a syringe into a patient's bloodstream for certain medical diagnostic procedures. (Doc. No. 30, Exhs. 1-4). The `612 and `197 patents, filed on June 26, 1995 and August 28, 1997, respectively, involve the automatic control of the plunger drive in order to automate its movement. (Doc. No. 30, Exhs. 3 and 4). The injector disclosed in the patents includes structure and control circuitry that detect physical indicia on a syringe, which relate to various physical properties of the syringe. The control circuitry of the injector uses these various physical properties to compute the location of the plunger, which is then used by the control circuitry to determine when to halt the movement of the plunger drive.
The `612 and `197 patents, both titled "Controlling Plunger Drives for Fluid Injections in Animals", issued on September 2, 1997 and July 27, 1999, respectively. The `612 and `197 patents are continuations of a patent that was filed on November 27, 1993, but was subsequently abandoned. (Doc. No. 167, Exh. 4). Therefore, the `612 and `197 patents claim an effective filing date of November 27, 1993. Furthermore, as continuation applications, the `612 and `197 patents have the same specifications and drawings.
Plaintiff Liebel-Flarsheim Co. ("L-F") initiated this lawsuit on November 13, 1998, claiming that Defendant Medrad, Inc. ("Medrad"), through its manufacture, use, marketing, and/or sale of various injectors and syringes, infringed, contributorily infringed, and/or induced infringement of a number of patents, including the `612 and `197 patents. (Doc. Nos. 1, 4, 5, 23, and 30). Numerous partial summary judgment motions have been filed in this matter. (Doc. Nos. 57, 162, 164, 167, 168, and 169). In its Oct. 18th Order, the Court disposed of a number of these motions but reserved judgment, in whole or in part, on the following motions:
1. Defendant's Motion for Partial Summary Judgment of Non-Infringement of the `612 and `197 Patents Because Defendant Practices its Own Patent Which is Prior Art to the Asserted Patents (Doc. No. 162),
2. Defendant's Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents (Doc. No. 167), and
3. Plaintiff's Motion for Partial Summary Judgment of Infringement on Counts I-IX of the Fourth Amended Complaint (Doc. No. 169).
Per the Court's Oct. 18th Order, the parties have filed the following motions:
1. Defendant Medrad's Revised Motion for Partial Summary Judgment of Non-Infringement of the Asserted Claims of the `612 and `197 Patents Because Medrad Practices the Prior Art (Doc. No. 249),
2. Defendant Medrad Inc.'s Renewed Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents (Doc. Nos. 250/251), and
3. Plaintiff Liebel-Flarsheim's Resubmitted Motion for Partial Summary Judgment of Infringement on United States Patent Nos. 5,662,612 and 5,928,197 (Doc. No. 248).
The parties have filed the appropriate memoranda in opposition (Doc. Nos. 256, 257, and 255) and reply briefs (Doc. Nos. 259, 258, and 262). The Court is now prepared to rule on these motions.
The Court has also considered all sur-replies and responsive pleadings filed by the parties. (Doc. Nos. 263, 266, 268, and 270).
Defendant's Motion for Partial Summary Judgment of Non-Infringement of the `612 and `197 Patents Because Defendant Practices its Own Patent Which is Prior Art to the Asserted Patents (Doc. No. 162); Defendant's Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents (Doc. No. 167), and Plaintiff's Motion for Partial Summary Judgment of Infringement on Counts I-IX of the Fourth Amended Complaint (Doc. No. 169) are superseded by the parties' revised motions (Doc. Nos. 259, 258, and 262) and are, therefore, DENIED, on that basis.
II. DISCUSSION
As a result of the Court's ruling in its Oct. 18th Order, the single remaining issue before the Court is whether the injectors and syringes manufactured and sold by Medrad infringe certain claims of the `612 and `197 patent. In its Oct. 18th Order, the Court discussed in great detail the applicable law relevant to summary judgment, patent claim construction, patent infringement, and patent validity. (Doc. No. 247, pp. 6-14, 5-52, 62-64, and 67-71). The Court will not repeat that discussion here but incorporates it by reference into this Order. of course, the Court will reiterate any previous statements or provide any previously unmentioned information as is necessary.
Because L-F's motion for summary judgment of infringement (Doc. No. 248) and Medrad's motion for summary judgment of non-infringement and invalidity (Doc. Nos. 250/251) overlap on numerous technical issues, the Court will analyze those motions together.
A. Infringement of the `612 and `197 Patents
The `612 and `197 patents disclose an injector which automatically controls the advancement and retraction of the plunger drive, freeing the operator of the injector to complete other tasks. (Doc. No. 30; Exh. 3, Col. 3, lines 7-8; and Exh. 4, Col. 3, lines 6-7). L-F claims that Medrad's Envision™ and Vistron® injectors and the syringes compatible with those injectors ("the Accused Injectors" and "the Accused Syringes") infringe certain claims of the `612 and `197 patents. (Doc. No. 30, ¶ ¶ 21-29 and 72-79). Specifically, L-F alleges that the Accused Injectors and Syringes infringe claims 7, 8, 10, and 11 of the `612 patent and claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, 17, 19, 20, 22, 23, 25, and 27 of the `197 patent ("the asserted claim"). (Doc. No. 248, p. 1; Doc. No. 30, Exh. 3 and 4).
For purposes of the Court's infringement analysis, the relevant claims of the `612 patent are independent claims 7 and 10.
Claim 7 and 10 of the `612 patent state:
7. An injector of the type having a motor which advances and retracts a plunger located within a syringe toward and away from a nozzle located at a distal end of the syringe to inject fluid into or out of an animal subject, adapted for use with syringe assemblies which have differing capacities, comprising:
a detector located proximate to a syringe installed on said injector for detecting a physical indicia on said syringe related to the capacity of said syringe, and generating an electrical signal representative of said physical indicia, and
a control circuit which causes said motor to move and tracks the location of said motor while moving said motor, wherein said control circuit computes the location of a plunger within said syringe relative to an end of said syringe, by relating said electrical signal to the tracked location of said motor.
10. A method of controlling an injector of the type having a motor which advances and retracts a plunger located within a syringe toward and away from a nozzle located at an end of the syringe to inject fluid into or out of an animal subject, adapted for use with syringe assemblies which have differing capacities, comprising:
detecting a physical indicia on said syringe installed on said injector, said indicia being related to the capacity of said syringe, and generating an electrical signal representative of said physical indicia,
causing said motor to move,
tracking the location of said motor while moving said motor, and
computing the location of a plunger within said syringe relative to an end of said syringe by relating said electrical signal to the tracked location of said motor.
(Doc. No. 30, Exh. 3).
For purposes of the Court's infringement analysis, the relevant claims of the `197 patent are independent claims 1, 4, 7, 10, 13, 16, 19, 22, 25, and 27.
Claim 1 and 4 of the `197 patent state:
1. An injector and syringe, comprising:
a syringe having a plunger, a nozzle located in the front of said syringe, and physical indicia related to the distance of the plunger from an end of said syringe when said syringe is initially installed on said injector,
a motor in the injector which advances and retracts the plunger located within the syringe toward and away from the nozzle of the syringe to inject fluid into or out of an animal subject, and
a controller in the injector adapted for use with syringe assemblies which have differing capacities, comprising:
a detector located proximate to the syringe when installed on said injector for detecting the physical indicia on said syringe, and generating an electrical signal representative of said physical indicia, and
a control circuit which causes said motor to move and tracks the location of said motor while moving said motor, wherein said control circuit computes the relative location of said plunger within said syringe, using said electrical signal and the tracked location of said motor.
4. A method of controlling an injector of the type having a motor which advances and retracts the plunger located within the syringe toward and away from a nozzle at an end of the syringe to inject fluid into or out of an animal subject, adapted for use with syringe assemblies which have differing capacities, comprising:
detecting a physical indicia on a syringe installed on said injector, said indicia being related to the distance of the plunger from an end of said syringe when said syringe is initially installed on said injector, and generating an electrical signal representative of said physical indicia,
causing said motor to move,
tracking the location of said motor while moving said motor, and
computing the relative location of said plunger within said syringe, using said electrical signal and the tracked location of said motor.
(Doc. No. 30, Exh. 4).
Claims 7, 10, 13, 16, 19, and 22 are the same as claims 1 and 4 in all relevant respects except that the physical indicia in those claims relate to the amount of fluid in the syringe, the end of travel position of an injector ram, and the range of travel of an injector ram.
Claim 25 and 27 of the `197 patent state:
25. An injector and syringe, comprising:
a syringe having a plunger, a nozzle located in the front of said syringe, and physical indicia,
a motor which advances and retracts the plunger within the syringe toward and away from the nozzle to inject fluid into or out of an animal subject, and
a controller comprising:
a control circuit which causes the motor to move and tracks the location of the motor while moving the motor, and
a memory storing an offset value which is related to the capacity of said syringe,
wherein the control circuit is operable obtain an offset value from physical indicia detected on the syringe, and the control circuit computes a value indicative of the location of said plunger within said syringe by applying the stored offset value to the tracked location of said motor, and ceases motion of said plunger when said computed value indicates that said plunger is at an end of said syringe.
27. A method of controlling an injector of the type having a motor which advances and retracts a plunger within a syringe toward and away from a nozzle located in the front of the syringe to inject fluid into or out of an animal subject, comprising:
causing the motor to move and tracking the location of the motor while moving the motor,
detecting a physical indicia on a syringe installed on said injector, said indicia being related to the capacity of said syringe, to obtain an offset value,
computing a value indicative of the location of said plunger within said syringe by applying the stored offset value to the tracked location of said motor, and
ceasing motion of said plunger when said computed value indicates that said plunger is at an end of said syringe.
(Doc. No. 30, Exh. 4).
The asserted independent claims describe an injector comprised of a syringe, a motor, a detector, and a control circuit. (Doc. No. 30, Exh. 3 and 4). The syringe disclosed in the claims includes physical indicia related to various physical properties of the syringe. ( Id.) During operation of the injector, the detector described in the claims detects the physical indicia on the syringe and generates an electrical signal representative of such physical indicia. ( Id.) The control circuit then uses this electrical signal and other information to determine the location of the plunger drive. ( Id.) The location of the plunger drive is then used by the control circuit to determine when to halt the movement of the plunger drive. ( Id.) Several of the asserted claims also describe the method of operating such an injector. ( Id.).
Medrad argues that the Accused Injectors and Syringes do not infringe the asserted claims because the Accused Injectors and Syringes are missing a number of elements disclosed in the claims. (Doc. Nos. 250/251, p. 1). In particular, Medrad argues that the Accused Injectors and Syringes are missing the following claim elements:
• a motor which advances and retracts a plunger;
• adapted for use with syringe assemblies;
• a detector located proximate to a syringe;
• a detector located proximate to the syringe;
• detecting a physical indicia on a syringe;
• physical indicia on said syringe relating to the capacity of the syringe, the distance of the plunger from the end of the syringe, the amount of fluid in the syringe, the end of travel position of an injector ram, the range of travel of an injector ram, or an offset value;
• relating said electrical signal to the tracked location of said motor;
• using said electrical signal and the tracked location of said motor; and
• an electrical signal representative of said physical indicia.
(Doc. Nos. 250/251, pp. 3-4). Medrad argues that because the Accused Injectors and Syringes are missing these elements, they cannot infringe the `612 and `197 patents as a matter of law, and Medrad is, therefore, entitled to summary judgment of non-infringement of the `612 and `197 patents. (Doc. Nos. 250/251, pp. 4, 27-28)
Before addressing the parties' arguments in more detail, it is worth noting that L-F is only claiming the Accused Injectors and Syringes literally infringe the asserted claims of the `612 and `197 patent. (Doc. No. 248, pp. 15-16, and 20). L-F has not argued infringement under the doctrine of equivalents nor responded to Medrad's argument of non-infringement under this doctrine. Literal infringement occurs when the accused product is precisely described in a patent claim. SRI Int'l v. Matsushita Electric Corp., 775 F.2d 1107, 1123 (Fed. Cir. 1985). It is well recognized that if any claim limitation is absent from the accused device, there can be no literal infringement as a matter of law. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999), cert. denied, 529 U.S. 1066 (2000) (quoting Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998)). Thus, if even one of the elements of the asserted claims is missing from the Accused Injectors and/or Syringes, they cannot infringe the `612 and `197 patents as a matter of law.
In its summary judgment motion of non-infringement, Medrad notes that it is unclear whether L-F is alleging infringement of the `612 and `197 patents under the doctrine of equivalents and argues that even if L-F is making such an allegation, the Accused Injectors and Syringes do not infringe the patents under the doctrine. (Doc. Nos. 250/251, p. 9, fn. 4). In its memorandum in opposition, L-F does not respond to or even acknowledge Medrad's non-infringement under the doctrine of equivalents argument. (Doc. No. 257). Furthermore, in its own summary judgment motion of infringement, L-F only alleges that the Accused Injectors and Syringes literally infringe the `612 and `197 patents. (Doc. No. 248, p. 20).
With this principle in mind, the Court finds that it need not address each and every claim element identified as missing by Medrad because it finds that the Accused Syringes are missing at least one critical element of the asserted claims — physical indicia relating to the capacity of the syringe, the distance of the plunger from the end of the syringe, the amount of fluid in the syringe, the end of travel position of an injector ram, or the range of travel of an injector ram or physical indicia that provides an offset value. Because the Accused Syringes are missing this claim element, it follows that the Accused Injectors are missing any claim elements that rely on the existence of such physical indicia.
In its Oct. 18th Order, the Court construed the term "physical indicia" as a tangible mark on a syringe relating to various properties of the syringe such as capacity of a syringe, the distance of the plunger from the end of a syringe, the amount of fluid in a syringe, the end of travel position of an injector ram, the range of travel of an injector ram, or an offset value. (Doc. No. 247, p. 45). It has become clear to the Court during its analysis for this Order that Claim 25 of the `197 patent does not describe physical indicia in terms of "relating to" an offset value. (Doc. No. 30, Exh. 4). Rather, according to Claim 25, the information detected from the physical indicia actually constitutes the offset value, "a control circuit obtain[s] an offset value from physical indicia detected on the syringe". (Doc. No. 30, Exh. 4; Doc. No. 248, Exh. 16, Helmicki Aff., ¶ 7(f)). Thus, the Court must clarify its construction of the term "physical indicia" with respect to an offset value as "a tangible mark that provides an offset value".
Before proceeding further in its analysis, the Court believes it would be helpful to describe the relevant aspects of the operation of the Accused Injectors and Syringes, a factual issue that does not appear to be in dispute by the parties. The Accused Injectors are compatible with three types of syringes, a 200 ml empty syringe, a 125 ml empty syringe, and a Bracco prefilled syringe. (Doc. Nos. 250/251, Exh. 5, Braunstein Decl., ¶ 8). Each of these syringes has flanges to the rear of the syringe. ( Id. at ¶ 6). Depending on the type of syringe, the flanges have indents at various locations or have no indents at all. ( Id. at ¶ 6). When the syringe is installed on the injector, these indent(s)/lack of indents interact with a series of pins attached to the injector. ( Id.). A pin is depressed or released depending on the presence or absence of an indent. ( Id.). Based on the position of these pins, sensors send electrical signals, representing a value of either a 1 or 0, to the injector head microprocessor which interprets these signals to determine the type of syringe installed. ( Id. at ¶ 6-7). Depending on the syringe type, the injector head microprocessor generates a binary reference number of 1, 2, or 4, for the 125 ml empty syringe, the 200 ml empty syringe, and the Bracco prefilled syringe, respectively. ( Id. at ¶ 7) The head microprocessor communicates the appropriate reference number to the system microprocessor, which then uses the reference number as an index to look up various syringe parameters in a table. (Doc. Nos. 250/251, p. 6)
Bracco pre-filled syringes are available in 75 ml, 100 ml and 150 ml sizes. (Doc. Nos. 250/251, Exh. 5, ¶ 8)
The Vistron injector can also sense an adapter that allows for a fourth type of syringe. (Doc. Nos. 250/251, Exh. 5, Braunstein Decl., ¶ 10).
In his affidavit, L-F's expert, Arthur Helmicki, states that "[t]he Medrad Brief . . . states that the injector microprocessor only receives a value of 1, 2 or 4 from the optical sensors reading the detents . . .". (Doc. No. 257, Exhibit 8, Post-Claim Construction Affidavit of Arthur J. Helmicki, ¶ 12). The description in Medrad's brief, which is based on the declaration of Thomas Braunstein, Manager of Advanced Manufacturing Engineering for Medrad, clearly states that the injector microprocessor generates the values of 1, 2, or 4 from the electrical signals sent by the sensors. (Doc. No. 251, p. 6). In his declaration, Braunstein explains that the injector microprocessor receives an electrical signal of 0 or 1 for each pin depending on the position of the pin. (Doc. Nos. 250/251, Exh. 5, Braunstein Decl., ¶ 6). Based on the configuration of these values, the microprocessor determines the type of syringe installed and then generates a value of 1, 2, or 4 as a reference number. ( Id. at ¶ 7). Thus, the injector microprocessor does not receive values of 1, 2, or 4 but generates these values based on information received from the sensors.
Although Helmicki misstates Medrad's description of the operation of the injector, it appears from the following description in his affidavit that he correctly understands the operation of the injectors:
The determination of the syringe configuration [type][1] as made by the software source code used in the Envision and Vistron CT injectors based upon the electrical signals generated by the switches on the injector.
(Doc. No. 248, Exh. 16, Helmicki Aff., ¶ 10).
[1] Medrad assumes that the term configuration, as used by Helmicki, has the same meaning as the term type. (Doc. No. 255, p. 7, fn. 4). L-F does not dispute this assumption.
For purposes of the Court's analysis, whether the injector microprocessor receives the values of 1, 2, or 4 from the sensors or generates these values based on electrical signals from the sensors is not critical.
Medrad argues that because the only information gleaned from the indents is the "type" of syringe, the Accused Syringes do not have physical indicia as described in the asserted claims. (Doc. Nos. 250/251, p. 16-18). The asserted claims disclose physical indicia related to various syringe properties such as capacity of the syringe, distance of the plunger from the end of the syringe, amount of fluid in the syringe, end of travel position of an injector ram, or range of travel of an injector ram or physical indicia that provide an offset value. As Medrad correctly points out, these properties clearly do not include the "type" of syringe installed on the injector. (Doc. Nos. 250/251, pp. 2 and 16). Thus, according to Medrad, the Accused Syringes are missing the "physical indicia" claim element.
The Court has construed physical indicia as a "tangible mark" relating to various syringe properties. The parties do not dispute that the Bracco prefilled syringes and the 100 ml non-Medrad syringes used with the Vistron injector adapter do not have any indents on the syringe flanges. Despite L-F's argument to the contrary, no reasonable jury could conclude that a complete absence of indents constitutes a "tangible mark". (Doc. No. 257, p. 14-15). See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986). Therefore, the Bracco prefilled syringes and the 100 ml non-Medrad syringes are missing "physical indicia" as that term is used in the asserted claims.
Medrad also argues that the term "physical indicia" is plural and because the Accused Syringes that have indents only have one indent sensed during the operation of the injector, these syringes do not have physical indicia as contemplated by the asserted claims. (Doc. Nos. 250/251, pp. 14-15). This issue is not relevant to the Court's analysis and will, therefore, not be resolved at this time. Furthermore, the parties should not assume the Court is using the term "physical indicia" in either a plural or singular form in this Order.
Additionally, Medrad contends that the term "physical indicia" requires that information be "encoded" on the syringe. ( See Doc. Nos. 250/251, pp. 23-24). Medrad argues that the indents on the Accused Syringes do not have any information encoded in them. (Doc. Nos. 250/251, pp. 23-24). Therefore, according to Medrad, the Accused Syringes do not have physical indicia as required by the claims. (Doc. Nos. 250/251, pp. 23-24). This issue is not relevant to the Court's analysis and will, therefore, not be resolved at this time.
L-F counters that because Accused Injectors use the "type" of syringe to ultimately determine the various syringe properties described in the claims (by looking up the information in a table and using that information to determine syringe properties), the indents are physical indicia related to various syringe properties as disclosed in the asserted claims. (Doc. No. 257, p. 22; Doc. No. 262, p. 8)
The difference in the parties' infringement analyses comes down to an issue of claim construction. Medrad's analysis rests on its construction of the term "related to" as describing a direct one-to-one relationship. According to Medrad, the asserted claims require that the information detected from the physical indicia must actually be the capacity of the syringe, the distance of the plunger from the end of the syringe, the amount of fluid in the syringe, the end of travel position of an injector ram, the range of travel of an injector ram, or an offset value. (Doc. Nos. 250/251, p. 19). L-F, on the other had, views the term "related to" as encompassing direct and indirect relationships. As such, L-F argues that the physical indica are "related to" various syringe properties if the information detected from physical indicia is the actual syringe properties or is merely used in some manner to determine syringe properties, as in the case of the Accused Injectors which use the information detected from the physical indicia as an index to look up syringe parameters in a table and then use those parameters to determine various syringe properties. (Doc. No. 257, p. 22; Doc. No. 262, p. 8).
The Court did not construe the term "related to" in its Oct. 18th Order. The Court used the term in its definition of the term "physical indicia" but took no position on the meaning of the term "related to" as it is used in the asserted claims.
Questions of claim construction are questions of law to be decided by the court. Wang Labs., Inc. v. America Online, Inc., 197 F.3d 1377, 1380-81 (Fed. Cir. 1999). When construing a claim term, the court must first rely on the intrinsic evidence, i.e., the claims, the specification, and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996)). Extrinsic evidence should not be considered unless the intrinsic evidence does not resolve an ambiguity in a challenged claim. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999).
In the present case, the meaning of the term "related to" is readily apparent from the language of the asserted claims themselves. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (In claim construction, the court first considers the language of the claim.). The language of the asserted independent claims, except Claim 27 of the `197 patent, is virtually identical except that each claim refers to a different syringe property. For purposes of the Court's analysis, it will use the claim language of Claim 7 of the `197 patent as an example and will note any differences in the other claims' language as appropriate.
Independent Claims 7 of the `612 and 1, 7, 13, 19, and 25 of the `197 patent describe the injector claimed in the patents. (Doc. No. 30, Exhs. 3 and 4). Independent Claims 10 of the `612 patent and 4, 10, 16, 22, and 27 of the `197 patent describes methods of using an injector which correspond to the claims describing the injector. (Id.).
The pertinent claim language of Claim 7 of the `197 patent states as follows:
An injector and syringe, comprising:
a syringe having . . . physical indicia related to the amount of fluid in the syringe . . ., and . . .
a controller in the injector . . . comprising:
a detector . . . for detecting the physical indicia on said syringe, and generating an electrical signal representative of said physical indicia, and a control circuit . . . wherein said control computes the amount of fluid in said syringe, using said electrical signal and the tracked location of said motor.
From this language, one can conclude that the after detecting the physical indicia on the syringe, a detector located in the injector generates an electrical signal that represents the information detected from the physical indicia:
a detector . . . for detecting the physical indicia on said syringe, and generating an electrical signal representative of said physical indicia , and
The control circuit of the injector then uses this electrical signal and the tracked location of the motor to compute various syringe properties:
control circuit computes the amount of fluid in said syringe, using said electrical signal and the tracked location of said motor.
Claim 13 of the `197 patent uses the term "determines" rather than "computes". The parties have not argued nor does it appear that this difference in language has any significance.
Claim 7 of the `612 patent uses the term "by relating said electrical signal" rather than "using said electrical signal". The parties have not argued nor does it appear that this difference in language has any significance.
Claim 19 of the `197 patent computes the "range of travel of said ram" using the electrical signal without reference to the tracked location of the motor.
Of key importance to the Court's analysis is that the electrical signal referenced in the asserted claims is generated by the detector and not the control circuit. It is the signal generated by the detector that is used in the computation of various syringe properties. The claim language does not describe using the electrical signal generated by the detector to ascertain information from another source and then using this ascertained information to compute syringe properties. Thus, the information from the physical indicia that is represented by the electrical signal generated by the detector must be of the type that can be directly used in the computation of various syringe properties without reference to some outside source of information. Under the plain language of the asserted claims, therefore, physical indicia is/are "related to" various syringe properties when the information detected from the physical indicia is/are the actual syringe properties or can be directly used in the computation of the various syringe properties without reference to some other source of information.
L-F's expert, Helmicki, states the following in his affidavit:
[Medrad's] assertion is based upon the erroneous assumption that the "electrical signal" referenced in the claims is, and can only be, the signal output by the optical sensors (slotted detectors) themselves, excluding the multiple electrical signals derived from the output of the optical sensors, which also represent the syringe information encoded in the indicia. (Doc. No. 257, Exh. 8, Helmicki Post-Claim Construction Aff., ¶ 10).
This excerpt demonstrates that L-F's argument is based on the assumption that the electrical signal disclosed in the claims does not necessarily have to be the same electrical signal generated by the detector. L-F's (and Helmicki's) assumption is incorrect. The only electrical signal described in the claims is the original electrical signal generated by the detector.
Claims 25 and 27 do not track the language of the other asserted claims. As already discussed in footnote 7, the physical indicia described in Claim 25 constitutes an actual offset value rather than just relating to an offset value. Claim 27, which describes the method of controlling an injector, states in pertinent part that:
A method of controlling an injector . . . comprising:
detecting a physical indicia on a syringe installed on said injector, said indicia being related to the capacity of said syringe, to obtain an offset value, . . .
(Doc. No. 30, Exh. 4).
At first glance, it would appear that the term "obtain", as it used in Claim 27, is not the same as the term "compute" and could, arguably, encompass references to an outside source of information. However, the term "obtain" must be read in light of the specification of the `197 patent, which states that "the offset value may be automatically computed by detecting physical indica on the syringe or extender which indicates the length of the syringe." (Doc. No. 30, Exh. 4, Col. 3, line 1 — Col. 4, line 1-2). Thus, the specification equates the term "obtain" with the term "compute".
Thus, the Court adopts neither parties' proposed construction of the term "related to" as it is used in the asserted claims. Rather, the Court finds that the term "related to" encompasses both a direct and indirect relationship, with the indirect relationship being limited to information that can be directly used in the computation of the various syringe properties without reference to some other source of information.
L-F argues that its construction of the term "related to" is supported by the deposition testimony of Thomas Braunstein, Medrad's 30 (b)(6) witness. L-F is incorrect. First, Braunstein's deposition testimony is irrelevant to the Court's claim construction analysis because the Court can construe the term "related to" based solely on the intrinsic evidence. Therefore, the Court should not rely on any extrinsic evidence, such as Braunstein's deposition testimony. Second, Braunstein's deposition testimony regarding the relationship of the indents on the Accused Syringes to various syringe properties is of little assistance to the Court because Braunstein was not testifying about such relationships in terms of the Court's construction of the term "relate to" as it is used in the asserted claims. Consequently, Braunstein's deposition testimony does not support L-F's proposed claim construction. Furthermore, despite L-F's argument to the contrary, there is nothing inconsistent between Braunstein's deposition testimony and his Second Post-Claim Construction Declaration. (Doc. No. 262, pp. 6-7).
Having construed the meaning of the claims, the Court must now apply the asserted claims to the Accused Injectors and Syringes, which is a question of fact. Wang Labs., 197 F.3d at 1380-81. As such, summary judgment is only appropriate if the Court finds that, when viewing the evidence in the light most favorable to L-F, no reasonable jury could conclude the Accused Injectors and Syringes infringe the `612 and `197 patents. See Anderson, 477 U.S. at 250.
As already explained, the information generated by the sensors from the indent(s)/lack of indents on the Accused Syringes are the values of 1 or 0 for each sensor, which are used by the microprocessor to generate reference numbers of 1, 2, or 4. None of these values or reference numbers, standing alone, can be used to compute the various syringe properties disclosed in the asserted claims. It is only by referencing some other source of information, a table, that the injector can ascertain the information necessary to determine various syringe properties. Thus, the information gleaned from the indent(s)/lack of indents is not the type of information that can be used to compute syringe properties without referencing some other source of information. Consequently, the information detected from the indent(s)/lack of indents is not "related to" various syringe properties as that term is used in the asserted claims. Thus, any reasonable jury would find that the Accused Syringes are missing the "physical indicia" claim element because any information detected from the physical indicia does not "relate to" the various syringe properties as required by the asserted claims. Furthermore, it follows that any reasonable jury would find that the Accused Injectors are missing any claim elements that rely on the existence of such physical indicia.
Because of the confusion created by Helmicki's affidavit and mindful that it should consider the evidence in the light most favorable to L-F, the Court is considering the reference numbers generated by the microprocessor in its infringement analysis. In reality, however, the electrical signals representing the values of 1 or 0 generated by the sensors are the only electrical signals that should actually be considered. See supra fn. 10.
The Court is assuming the indents on the Accused Syringes constitute a "tangible mark" for purposes of this analysis only. The Court is not resolving this issue at this time.
Because the Accused Injectors and Syringes are completely missing an essential element of the claims and do not appear to have a substantial equivalent of that element, they do not infringe the'612 and `197 patents, either literally or under the doctrine of equivalents, and Medrad is, therefore, entitled to summary judgment of non-infringement. Elkay Mfg. Co., 192 F.3d at 980 (No literal infringement if claim limitation is missing.); Vehicular Technologies Corp. v. Titan Wheel International, Inc., 141 F.3d 1084, 1089 (Fed. Cir. 1998) (No infringement under the doctrine of equivalents if substantial equivalent of a claim limitation is missing).
Because the Court can resolve the question of infringement of the `612 and `197 patents on the forgoing issue, it need not, at this time, resolve the other numerous and varied issues raised by the parties. To avoid any confusion in any further proceeding on this matter, the Court wishes to make it clear that it is not resolving any of the following issues in this or any other order issued to date in this case:
• whether the indents on the Accused Syringes constitute a tangible mark;
• whether physical indicia, as used in the claims, is plural or singular;
• whether L-F admitted during prosecution of the `612 patent that the apparatus and method used by the Accused Injectors to determine the type of syringe in place in the injector is not covered by the asserted claims;
• whether the Accused Injectors use an electrical signal representative of said physical indicia while moving the motor
• whether the Accused Injectors are adapted for use with syringe assemblies;
To eliminate any confusion created by its Oct. 18th, the Court construes the term "motor" as a stationary mechanism that rotates causing the movement of the gears in the gearbox and the term "tracking the location of the motor" as the monitoring of the rotation of the motor.
• whether the indents on the Accused Syringes encode information;
• whether Medrad's injectors have a detector located proximate to the syringe when installed on said injector for detecting the physical indicia on said syringe, and generating an electrical signal representative of said physical indicia;
• whether Medrad's injectors have a motor which advances and retracts the plunger; and
• whether Medrad's injectors and syringes have an offset value.
Thus, the Court GRANTS, with respect to non-infringement, Defendant Medrad Inc.'s Renewed Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents (Doc. Nos. 250/251), and declares the motion MOOT with respect to invalidity. The Court DENIES Plaintiff Liebel-Flarsheim's Resubmitted Motion for Partial Summary Judgment of Infringement on United States Patent Nos. 5,662,612 and 5,928,197 (Doc. No. 248).
B. Non-Infringement of the Asserted Claims of the `612 and `197 Patents Because Medrad Practices the Prior Art
Based upon the Court's ruling in Section A regarding non-infringement, the Court declares MOOT Medrad's Revised Motion for Partial Summary Judgment of Non-Infringement of the Asserted Claims of the `612 and `197 Patents Because Medrad Practices the Prior Art (Doc. No. 249)
C. Motions to Strike
In conjunction with its revised briefings, L-F filed a Motion to Strike the Post-Claim Construction Declaration of Joseph B. Havrilla (Doc. No. 253) and a Motion to Strike Portions of Medrad's Memorandum in Support of its Renewed Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents and to Strike In Its Entirety Medrad's Revised Motion for Partial Summary Judgment of Non-Infringement of the Asserted Claims of the `612 and `197 Patents Because Medrad Practices the Prior Art (Doc. No. 254). Based upon the Court's ruling in Section A regarding non-infringement, the Court declares these motions to strike MOOT.
III. CONCLUSION
In conclusion:
• Defendants Medrad's Revised Motion for Partial Summary Judgment of Non-Infringement of the Asserted Claims of the `612 and `197 Patents Because Medrad Practices the Prior Art (Doc. No. 249) is MOOT,
• Defendant Medrad Inc.'s Renewed Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents (Doc. Nos. 250/251) is GRANTED IN PART and declared MOOT IN PART, and
• Plaintiff Liebel-Flarsheim's Resubmitted Motion for Partial Summary Judgment of Infringement on United States Patent Nos. 5,662,612 and 5,928,197 (Doc. No. 248) is DENIED;
• Defendant's Motion for Partial Summary Judgment of Non-Infringement of the `612 and `197 Patents Because Defendant Practices its Own Patent Which is Prior Art to the Asserted Patents (Doc. No. 162) is DENIED,
• Defendant's Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents (Doc. No. 167) is DENIED,
• Plaintiff's Motion for Partial Summary Judgment of Infringement on Counts I-IX of the Fourth Amended Complaint (Doc. No. 169) is DENIED,
• Plaintiff Liebel-Flarsheim's Motion to Strike the Post-Claim Construction Declaration of Joseph B. Havrilla (Doc. No. 253) is MOOT;
• Plaintiff Liebel-Flarsheim's Motion to Strike Portions of Medrad's Memorandum in Support of its Renewed Motion for Partial Summary Judgment of Non-Infringement and Invalidity of the Asserted Claims of the `612 and `197 Patents and to Strike In Its Entirety Medrad's Revised Motion for Partial Summary Judgment of Non-Infringement of the Asserted Claims of the `612 and `197 Patents Because Medrad Practices the Prior Art (Doc. No. 254) is MOOT; and
• Defendant Medrad's Motion for Leave to File a Sur-Reply to Plaintiff Liebel-Flarsheim Company's Reply Memorandum in Support of its Resubmitted Motion for Partial Summary Judgment of Infringement of United States Patent Nos. 5,662,612 and 5,928,197 (Doc. No. 263) is GRANTED;
• Defendant Medrad's Motion for Leave to File a Sur-Reply to Plaintiff Liebel-Flarsheim Company's Reply Memorandum in Support of its Motion to Strike Pursuant to Fed.R.Civ.P. 37(C) (Doc. No. 267) is GRANTED; and
• Plaintiff Liebel-Flarsheim Company's Motion for Leave to File Sur-Reply to Medrad's Motion for Leave to File a Sur-Reply to Plaintiff Liebel-Flarsheim Company's Reply Memorandum (Doc. No. 270) is GRANTED.