Rasmussen Instruments, LLC v. Depuy Synthes Prods., Inc.

568 F.Supp.3d 117

RASMUSSEN INSTRUMENTS, LLC, Plaintiff,

v.DEPUY SYNTHES PRODUCTS, INC., DePuy Synthes Sales, Inc., and Medical Device Business Services, Inc., Defendants.

CIVIL ACTION NO. 20-11807-WGY

United States District Court, D. Massachusetts.

Filed October 26, 2021

Jason M. Zucchi, Pro Hac Vice, Fish & Richardson, PC, Minneapolis, MN, Joy Backer Kete, Pro Hac Vice, Kurt L. Glitzenstein, Grant T. Rice, Jacob B. Pecht, Joy B. Kete, Fish & Richardson, P.C., Boston, MA, Christopher B. Hadley, Jones Waldo Holbrook & McDonough, PC, Park City, UT, for Plaintiff

Calvin P. Griffith, Pro Hac Vice, Patrick J. Norton, Pro Hac Vice, Thomas S. Koglman, Pro Hac Vice, Jones Day, Cleveland, OH, Christopher M. Morrison, Jones Day, Boston, MA, David E. Anderson, Pro Hac Vice, Jones Day, Columbus, OH, Marlee R. Hartenstein, Pro Hac Vice, Jones Day, Pittsburgh, PA, for Defendants.

MEMORANDUM & ORDER

YOUNG, D.J.¹

The plaintiff Rasmussen Instruments, LLC ("Rasmussen") and the defendants DePuy Synthes Products, Inc., DePuy Synthes Sales, Inc., and Medical Device Business Services, Inc. (collectively, "DePuy") ask this Court to determine whether certain claim terms of United States Patent No. 9,492,180 (the "’180 Patent") and United States Patent No. 10,517,583 (the "’583 Patent") are means-plus-function terms pursuant to 35 U.S.C. § 112, ¶ 6. This Court answers that question in the negative.

The parties also ask this Court to construe certain claim terms pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). This Court sets forth its constructions infra Section IV.

I. INTRODUCTION

In 2005, orthopedic surgeon Dr. Gary Lynn Rasmussen ("Dr. Rasmussen") filed a provisional patent application for his "minimally-invasive or reduced-invasive instrumentation for guiding resection that uses the ligamentous structure of the knee to guide placement of the instrumentation and the resulting optimal alignment and physiological positioning of the knee prosthesis." First Am. Compl. Patent Infringement ("Am. Compl.") ¶¶ 2, 18-19, ECF No. 31. Seeking to license his intellectual property, Dr. Rasmussen met and negotiated with representatives of DePuy. Id. ¶¶ 21-28. Negotiations broke down in 2014, and no license issued. Id. ¶ 28.

In November 2016, the United States Patent and Trademark Office issued the ’180 Patent to Dr. Rasmussen. Id. ¶ 11; see generally Decl. Joy B. Kete Supp. Rasmussen Instruments, LLC's Opening Claim Construction Br. ("Kete Decl."), Ex. A, United States Patent No. 9,492,180 ("’180 Patent"), ECF No. 44-1. Three years later, the United States Patent and Trademark Office issued the ’583 Patent to Dr. Rasmussen. Am. Compl. ¶ 12; see generally Kete Decl., Ex. B, United States Patent No. 10,517,583 ("’583 Patent"), ECF No. 44-2. Dr. Rasmussen then assigned the ’180 Patent and ’583 Patent to Rasmussen, a limited liability company that he had formed. Am. Compl. ¶¶ 1-2, 11-12.

In January 2021, Rasmussen filed the operative complaint against DePuy for patent infringement. See generally id. DePuy filed an answer and affirmative defenses the following month. See generally Defs.’ Answer & Affirmative Defenses Pl.’s First Am. Compl., ECF No. 34. DePuy filed an unopposed motion to increase the number of claim terms for construction, Defs.’ Unopposed Mot. Increase Number Claim Terms Construction (to 19) & Increase Page Limit Claim Construction Brs. (to 25), ECF No. 39, which this Court allowed, Electronic Order (Apr. 23, 2021), ECF No. 41. The parties subsequently filed a joint claim construction statement and briefs in support of their proposed constructions. See generally Joint Claim Construction Statement Pursuant L.R. 16.6(e)(1)(D) ("First Statement"), ECF No. 40; Pl. Rasmussen Instruments, LLC's Opening Claim Construction Br. ("Pl.’s Br."), ECF No. 42; Defs.’ Opening Claim Construction Br. ("Defs.’ Br."), ECF No. 43; Pl. Rasmussen Instruments, LLC's Resp. Claim Construction Br., ECF No. 55; Defs.’ Resp. Claim Construction Br. ("Defs.’ Resp."), ECF No. 56.

This Court held a Markman hearing on July 29, 2021. See generally Tr. Markman Hr'g, ECF No. 74. This Court tentatively ruled at the hearing that DePuy had failed to sustain its burden of demonstrating that the disputed claim terms are means-plus-function terms. Id. 23-24. This Court ordered the parties to file a joint supplemental claim construction statement and supplemental briefs setting out their proposed plain-and-ordinary meaning constructions. Id. 24-28; see generally Pl. Rasmussen Instruments, LLC's Suppl. Claim Construction Br. ("Pl.’s Suppl. Br."), ECF No. 81; Defs.’ Suppl. Claim Construction Br. ("Defs.’ Suppl. Br."), ECF No. 82; Defs.’ Suppl. Br., Ex. 2, Suppl. Claim Construction Chart ("Second Statement"), ECF No. 82-2; Defs.’ Suppl. Resp. Claim Construction Br., ECF No. 86; Pl.’s Suppl. Resp. Claim Construction Br., ECF No. 93.

II. LEGAL STANDARDS

A. Means-Plus-Function Principles

Section 112, ¶ 6 of title 35 of the United States Code "applies only to purely functional limitations that do not provide the structure that performs the recited function." Phillips v. AWH Corp., 415 F.3d 1303, 1311 (Fed. Cir. 2005) (en banc); see MPEP 2173.05(g) (9th ed. Rev. 10.2019, June 2020) ("A claim term is functional when it recites a feature by what it does rather than by what it is ...." (quotations omitted)). Section 112, ¶ 6 provides:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

35 U.S.C. § 112, ¶ 6 (2006 ed.).² "In enacting this provision, Congress struck a balance in allowing patentees to express a claim limitation by reciting a function to be performed rather than by reciting structure for performing that function, while placing specific constraints on how such a limitation is to be construed ...." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). Specifically, "in return for generic claiming ability, the applicant must indicate in the specification what structure constitutes the means." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007).

The inclusion of the word "means" in a term creates a presumption that section 112, ¶ 6 applies, and the absence of the word "means" in a term creates a presumption that section 112, ¶ 6 does not apply. Williamson, 792 F.3d at 1349. The party seeking to rebut this presumption must demonstrate by a preponderance of the evidence "that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Id. (quotations omitted); Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir. 2016) ; see Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319-20 (Fed. Cir. 2004) (holding that a patentee has no burden to prove that a term recites structure). This determination is based not on the disputed terms "in isolation," MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019), but rather, "under the traditional claim construction principles, on an element-by-element basis, and in light of evidence intrinsic and extrinsic to the asserted patents," Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018).

In so determining, this Court may "review[ ] various sources, such as the claims themselves, the specification, the prosecution history, dictionaries, and any other relevant evidence." Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d 999, 1002-03 (Fed. Cir. 2016). Arguments and conclusory language unsupported by record evidence do not rebut the presumption. Zeroclick, 891 F.3d at 1007-08. Moreover, "the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions." Id. at 1008.

B. Customary Claim Construction Principles

Where section 112, ¶ 6 does not apply, Federal Circuit "precedent for the construction of limitations that are not means-plus-function limitations is applied in the customary way." Watts v. XL Sys., Inc., 232 F.3d 877, 881 (Fed. Cir. 2000). In these customary claim construction proceedings, "[t]he words of a claim are generally given their ordinary and customary meaning, which is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Ruckus, 824 F.3d at 1002 (quotations omitted). "There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution." Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The standards for both exceptions are "exacting." See id. at 1365-66.

"In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Phillips, 415 F.3d at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (stating that terms which "are not technical terms of art ... do not require elaborate interpretation")). A term needs no construction when "the plain and ordinary meaning of the disputed claim language is clear." Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015).

In other cases, however, "[a] determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or...