OrthoPediatrics Corp. v. Wishbone Med.

ORTHOPEDIATRICS CORP., et al., Plaintiffs, v. WISHBONE MEDICAL, INC., et al., Defendants.

No. 3:20-CV-929 JD

United States District Court, N.D. Indiana, South Bend Division

October 4, 2022

OPINION AND ORDER

JON E DEGUILIO CHIEF JUDGE UNITED STATES DISTRICT COURT

The Plaintiffs in this case allege that the Defendants are infringing on a patented computer program that makes it easier for orthopedic professionals to correctly position bones for optimal healing. The parties have conferred and remain divided on how three phrases within the disputed patent's claims should be construed. The parties have fully briefed their disputes and presented oral argument at a hearing before the Court on August 29, 2022. The Court now resolves the outstanding claim construction disputes.

A. Factual Background

Orthopedic professionals sometimes use devices called external fixators to treat patients suffering from broken bones or other bone abnormalities. An external fixator fits around an individual's limb and often has a certain number of struts that run into the limb and attach to the bone to ensure the bone is positioned for proper healing. Prior to the advent of the patented technology at issue in this case, orthopedic professionals had to rely on their own estimations and experience to determine exactly how to position the external fixator and accompanying struts on a limb. (DE 105-2 at 1:15-44) (“Patent”). The new technology, patented under patent number 10,258,377 (“‘377 Patent”), allows orthopedic professionals to look at an X-ray or other photographic image of a patient's bone and the fixator apparatus on a computer screen, use a mouse or other device to inscribe lines and points on the images as needed, and then generate calculations showing the optimal way to position the bones using the external fixator. (DE 105-2 at 1:48-2:39, 3:13-67.)

Plaintiff Orthex LLC, a wholly owned subsidiary of Plaintiff OrthoPediatrics Corp., is the assignee of the ‘377 Patent, and Plaintiff Vilex, a medical device company, is an exclusive licensee. (DE 33 at 3.) The three Plaintiffs sued Defendants Wishbone Medical, Inc., an OrthoPediatrics competitor, and Nick Deeter, an OrthoPediatrics founder who is now chairman and chief executive officer of Wishbone, in part because they allege that Wishbone is already or is imminently going to be infringing on the ‘377 Patent through the sale, use, and promotion of Wishbone's Smart Correction External Fixation System, which allegedly copies the process described in the ‘377 Patent. Those allegations underly the Plaintiffs' surviving claims for patent infringement (Count 1) and declaratory judgment of infringement (Count 2). The three Plaintiffs brought each of the infringement-related claims only against Defendant Wishbone. (DE 33 at 26, 37; DE 68 at 30.) There is also a surviving claim for breach of contract that OrthoPediatrics brought against Mr. Deeter. (DE 33 at 40; DE 68 at 30.)

The parties' claim construction disputes center on three phrases within the Patent as well as on the relevant Person of Ordinary Skill in the Art (“POSITA”) description that the Court will use to analyze the disputes. The parties' first dispute is over the meaning of the bolded language in the excerpt:

Taking at least two medical images of a patient to create two views, with each view's showing at least one bone with at least one external fixator, said external fixator comprising external fixator hardware having at least one ring and said ring's further forming a part of a six-axis external fixator device and further comprising fixator hardware, with said at least two views being oriented from different angles and displayed on said input screen . . .

(DE 105-2 at 14:44-52) (emphasis added). Their second dispute is over the meaning of the bolded language in the excerpt:

providing a computer, said computer having an input screen in association therewith wherein said input screen has a plurality of sensors associated therewith to detect and register a plurality of position data inscribed on said input screens . . .

(DE 105-2 at 14:33-40) (emphasis added). And their third dispute is over the meaning of the bolded language in the excerpt:

Marking by said orthopedic professional one or more points or one or more lines on said input screen to create said position data, with said position data's representing either or both of a position or positions of a bone, bones, bone segments, joint space, anatomic loci or osteotomy or one or more elements of said external fixator hardware . . .

(DE 105-2 at 14:53-59) (emphasis added).

The parties have each filed their respective claim construction briefs and responses and have had the opportunity to present their arguments orally in a hearing before the Court. (DE 105; DE 107; DE 109; DE 110; DE 116.)

B. Standard of Review

As a matter of law, the Court must construe the patent claims for a jury. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977 (Fed. Cir. 1995). Claim construction is crucial because it “defines the scope of the protected invention.” Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 619 (Fed. Cir. 1995).

When interpreting a disputed claim, the court must first look at the intrinsic evidence of record-the patent itself, including the claims, the specification, and, if in evidence, the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The process begins with the words of the claims. Teleflex, Inc. v. Ficosa North American Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). “It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotations and citations omitted); Teleflex, 299 F.3d at 1324 (“The claim language defines the bounds of claim scope.”). Absent an express intent otherwise, claim terms should be given “the ordinary and customary meaning . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1313. “[T]he context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.” ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).

However, the claims do not stand alone and they “must be read in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 979). The specification includes the drawings and the written description of the invention. Playtex Prods., Inc. v. Procter & Gamble, Co., 400 F.3d 901, 909 (Fed. Cir. 2005). The specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582). It can resolve ambiguities between the ordinary and customary meaning of words if the words used in the claim are not sufficiently clear to allow the scope of the claim to be determined from words alone. Teleflex, 299 F.3d at 1325. Yet, there's a difference “between using the specification to interpret the meaning of a claim,” which is permissible, and “importing limitations from the specification into the claim,” which is not. Phillips, 415 F.3d at 1323. “[T]he general principle is that limitations from the specification are not to be read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (citation omitted).

Finally, the court can look to the patent's prosecution history, which “consists of the complete record of the proceedings before the [USPTO] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. “The prosecution history can often 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 the prosecution, making the claim scope narrower than it would otherwise be.” Id. A patentee may modify the “meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution.” Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006).

If intrinsic evidence does not resolve the ambiguity in a disputed claim term, a court may then look to extrinsic evidence, such as expert testimony, inventor testimony, dictionaries, and treatises. Vitronics, 90 F.3d at 1584. Extrinsic evidence may help the court better understand “the way in which one of skill in the art might use the claim terms.” AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1380 (Fed. Cir. 2005) (citations omitted). But extrinsic evidence may not be used to “contradict any definition found in or ascertained by a reading of the patent documents.” Phillips, 415 F.3d at 1322-23 (quoting Vitronics, 90 F.3d at 1584, n.6). As the Federal Circuit explained in Phillips: “Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.” Id. at 1316 (citation omitted).

C. Discussion

The parties dispute the meaning of three phrases within Claim 1 of the Patent as well as the relevant background and experience that a POSITA would have.^[1] Because the POSITA determination is essential to the Court's analysis of whether and how to construe the three disputed phrases in the Patent, the Court begins there. It then turns to...