the description comes from: http://www.patenthawk.com/blog/2007/06/cats_claw.html#more
6,502,579 goes to a declawing procedure for housecats, formally termed onychectomy.
1. A feline onychectomy surgical method using a laser cutting instrument, the method comprising:
(a) forming a first circumferential incision in the epidermis near the edge of the ungual crest of the claw, thereby severing at least some of the epidermis from the ungual crest;
(b) applying cranial traction to the epidermis severed from the ungual crest to displace the distal edge of the epithelium cranially;
(c) incising the extensor tendon near its insertion on the ungual crest;
(d) incising the synovium of the PII-PIII joint; (e) applying traction to the claw in the palmar direction for disarticulating the PII-PIII joint;
(f) ablating the medial and lateral collateral ligaments;
(g) incising the digital flexor tendon; and
(h) incising the subcutaneous tissues of the pad of the second phalanx.
Young sued Lumenis July 23, 2003.
Lumenis is a manufacturer, seller, and distributor of surgical laser instruments that were alleged to have been used to perform Young's patented surgical procedure. Young asserted that Lumenis had been teaching veterinarians to perform the patented procedure in connection with its sales efforts. Lumenis responded by denying infringement and asserting a counterclaim of patent invalidity.
In June 2004, Lumenis requested reexamination of the '579 patent by the United States Patent & Trademark Office ("PTO").
Lumenis petition for reexam included a prior art veterinary textbook with a chapter edited by Professor Theresa Fossum, "Small Animal Surgery," which had a chapter on an onychectomy procedure.
While the reexamination of the '579 patent was proceeding at the PTO, the district court continued to adjudicate the suit between Young and Lumenis. On March 1, 2005, the district court conducted a Markman hearing.
Professor Hedlund, author of the textbook that includes the Fossum Reference, testified at the Markman hearing. A ruckus was later to erupt over Young timely disclosing a scrap of her testimony that wasn't exactly, well, the cat's meow; no big deal, at least to the reexam examiner.
On November 1, 2005, the court issued an order holding, inter alia, claims 1 through 5 to be invalid under § 112, ¶ 2 because the claim term "near" was indefinite. The court relied on Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1218 (Fed. Cir. 1991), for the principle that a word of degree can be indefinite when it fails to distinguish the invention over the prior art and does not permit one of ordinary skill to know what activity constitutes infringement. Indefiniteness Order, slip op. at 6-7. The district court stated:
Applying Amgen to Claim 1, Step (a), the Court finds the word "near" indefinite pursuant to 35 U.S.C. § 112 ¶ 2, for failing to distinguish the claimed subject matter from the prior art. Defendant has convinced this Court, by clear and convincing evidence, that a veterinary surgeon attempting to avoid infringement would be unable to do so because "near" fails to distinguish Plaintiff's patent from prior art.
Meanwhile the reexamination proceeded, with Lumenis throwing another stone in court after Young replied to the first reexam office action.
On January 9, 2006, after Young had filed his October 2005 Response at the PTO, Lumenis filed a motion in the district court for summary judgment of unenforceability due to inequitable conduct during the reexamination. Lumenis asserted that Young engaged in inequitable conduct during the reexamination because: (1) he failed to disclose the Hedlund deposition testimony to the PTO, which was material, and (2) his attorney made false statements to the PTO in his October 2005 Response to the first Office Action. Subsequently, on January 30, 2006, Young did submit Hedlund's deposition testimony to the PTO, which was thus before the examiner issued a second Office Action.
The district court found Young guilty of inequitable conduct for failing to disclose the Hedlund disposition in a timely manner.
Young argued that his submission of the Hedlund deposition testimony to the PTO on January 30, 2006, before the examiner had issued its second Office Action, mooted the issue of whether the failure to disclose that testimony constituted inequitable conduct. In a footnote, the court disagreed and stated that "[i]f the court finds his conduct before the PTO inequitable, Plaintiff's recent submission does not cure his misconduct." Inequitable Conduct, slip op. at 20 n.19. The court further stated that Young "did not provide the updated information to the PTO until Defendant filed this motion" and cited Rohm & Haas Co v. Crystal Chemical Co., 722 F.2d 1556, 1572 (Fed. Cir. 1983), for the principle that to cure inequitable conduct, one must take the necessary action on one's own initiative. The court also noted that Rohm & Haas sets forth other specific requirements for remedying inequitable conduct and that Young had not proved by clear and convincing evidence that he had taken the necessary steps to cure the inequitable conduct, although the court did not state which other specific requirements were not fulfilled.
The district court also slammed Young for mischaracterizing, in his October 2005 office action reply, the Fossum prior art reference, particularly in light of the interpretation provided by Hedlund in March 2005.
With regard to intent, the district court stated that "[g]iven the highly material nature of Plaintiff's misleading statements and his failure to disclose Hedlund's deposition testimony, which the Court finds to be material information, this Court may properly infer an intent to deceive."
On appeal -
Indefiniteness
On appeal, Young argues that the district court incorrectly determined that the term "near" is indefinite. According to Young, the district court never considered the intrinsic evidence to determine the meaning of the term "near," and instead only relied on extrinsic evidence, such as the prior art Fossum Reference and the Hedlund deposition testimony. Young asserts that the term "near" is clearly defined in the specification and can be construed such that it is not indefinite. Moreover, Young asserts that all the witnesses understood the term, including Hedlund, who, in fact, used the term "near" in the Fossum Reference to describe the location of an incision. Finally, Young contends that the court misapplied Amgen, which involved a limitation that was not supported in the specification or the prosecution history.
The CAFC agreed.
The purpose of the definiteness requirement is to "ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude." Datamize, 417 F.3d at 1347 (internal citation omitted). Claims are considered indefinite when they are "not amenable to construction or are insolubly ambiguous . . . . Thus, the definiteness of claim terms depends on whether those terms can be given any reasonable meaning." Id. Indefiniteness requires a determination whether those skilled in the art would understand what is claimed. To make that determination, we have explained that "in the face of an allegation of indefiniteness, general principles of claim construction apply." Id. at 1348. In that regard, claim construction involves consideration of primarily the intrinsic evidence, viz., the claim language, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1202, 1314 (Fed. Cir. 2005) (en banc).
"Near' did "not depart from the ordinary and customary meaning of the phrase." The specification backed the usage. Also, the term was in the original claims, untarnished as unambiguous with regard to prior art.
Reference to the specification shows that it is consistent with that understanding of the term.
Moreover, because the term "near" describes a location on an animal, its use, as opposed to a precise numerical measurement, is not inappropriate because the size of the appendage and the amount of skin required to be incised will vary from animal to animal based on the animal's size. Akin to the term "approximately," a person having ordinary skill in the art would know where to make the cut; thus the use of the word "near" does not deprive one of ordinary skill from being able to ascertain where the cut should be made.
Unlike the situation in Amgen, here the intrinsic evidence does provide guidance on the meaning of the term "near." When intrinsic evidence resolves the claim construction, a term is not "insolubly ambiguous," and thus reference to the prior art is not needed. That is the situation here. In addition, there were no office actions issued by the PTO during the original prosecution rejecting the claims over the prior art. There were also no amendments or arguments filed by the patentee. Thus, unlike in Amgen, the claims were not amended to include vague language in order to overcome close prior art.
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