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Ethicon Endo-surgery, Inc., Plaintiff/counterclaim Defendant-appellant,andethicon, Inc., Counterclaim Defendant-appellant, v. United States Surgical Corporation,defendant/counterclaimant-appellee
United States Court of Appeals, Federal Circuit. - 93 F.3d 1572
Aug. 29, 1996.Rehearing Denied Oct. 17, 1996
Gerald Sobel, Kaye, Scholer, Fierman, Hays, and Handler, LLP, New York City, argued, for plaintiff/counterclaim defendant-appellant Ethicon Endo-Surgery, Inc. and counterclaim defendant-appellant Ethicon, Inc. With him on the briefs were Aaron Stiefel, Daniel P. DiNapoli, New York City, Robert A. Pitcairn, Jr., Cincinnati, OH, and Eric I. Harris, New Brunswick, NJ.
Eric J. Lobenfeld, Chadbourne & Parke LLP, New York City, argued, for defendant/counterclaimant-appellee. With him on the brief was Drew M. Wintringham. Of counsel were Thomas R. Bremer and John C. Andres, United States Surgical Corporation, Norwalk, Connecticut.
Before CLEVENGER, Circuit Judge, COWEN, Senior Circuit Judge, and SCHALL, Circuit Judge.
CLEVENGER, Circuit Judge.
Ethicon Endo-Surgery, Inc. (Ethicon) appeals a decision of the District Court for the Southern District of Ohio granting summary judgment of noninfringement to United States Surgical Corp. (U.S. Surgical) with respect to claims 6 and 24 of U.S. Reissue Patent No. 34,519 ('519). Ethicon Endo-Surgery v. United States Surgical Corp., 900 F.Supp. 172, 38 USPQ2d 1385 (S.D.Ohio 1995). We affirm-in-part, vacate-in-part, and remand.I
Linear cutter staplers (staplers) are surgical instruments used to cut internal body tissue while simultaneously placing rows of staples along both sides of the incision in order to prevent excessive bleeding. It is important, therefore, that the stapler not be used when its staple cartridge is empty. The '519 patent discloses a "lockout mechanism" for ensuring that once the staple cartridge is emptied, the stapler cannot be used again before the spent staple cartridge is replaced. The '519 patent is a reissue of U.S. Patent No. 4,892,244 ('244).
The reissue patent discloses several embodiments which work similarly. Illustratively, Fig. 1 of the reissue patent, reproduced below, depicts a stapler 101 comprising an upper jaw 20, a firing means 30, a lower jaw 40 and a staple cartridge 50 which fits within lower jaw 40. During operation, firing knob 42 is pushed forward which causes both knife 34 and pusher bars 32 (also known as "cam bars") to advance. As knife 34 creates an incision, pusher bars 32 enter slots 33 (shown in Fig. 2 below) in the staple cartridge where they engage staple drivers and cause the staple drivers to eject staples along the two sides of the incision.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
William D. Fox et al., assignors to Ethicon, applied for and received the '244 patent, which issued on January 9, 1990. Claim 6 of that patent, the only claim from the original patent which is at issue in this case, recites:
In a staple cartridge insertable within a surgical stapler and containing staples and comprising an elongated body including one or more longitudinal slots for slidably receiving one or more longitudinal pusher bars comprising a firing mechanism of said surgical stapler, and a plurality of drivers engageable by said pusher bars for ejecting the staples from the cartridge, said staple cartridge releasably fastened to a said surgical stapler,
the improvement comprising a lockout mechanism connected to said longitudinal slots for preventing said pusher bars from passing more than one time through said longitudinal slots.
(emphasis added).
Subsequently, Ethicon became concerned that this claim might not read on several lockout mechanisms employed by its competitor U.S. Surgical. As is illustratively shown in the trial exhibit drawings reproduced below, the lockout mechanism on U.S. Surgical's open staplers functions by impeding the cam bar retainer, rather than the pusher bars.2 In addition, U.S. Surgical's endoscopic staplers utilize a somewhat different lockout mechanism which engages another portion of the firing assembly called the "actuating channel." Arguably, then, U.S. Surgical's lockouts do not infringe claim 6 because they do not comprise a barrier which enters the longitudinal slots to prevent the pusher bars from reentering the staple cartridge.NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Two types of staplers are at issue in this case. The first are called "open" staplers and are used in conventional surgery. The second are called "endoscopic" staplers and are used in endoscopic surgery. The stapler shown in the '519 patent is an open stapler
The cam bar retainer holds the pusher bars and is located behind the pusher bars in the stapler's firing assembly
In its opinion denying Ethicon's motion for a preliminary injunction, the district court pointed out that Ethicon and U.S. Surgical are, for practical purposes, the only two manufacturers of the type of surgical staplers involved in this suit. Ethicon Endo-Surgery v. United States Surgical Corp., 855 F.Supp. 1500, 1505 (S.D.Ohio 1994)
Although not necessary to resolve this case because of the clear prosecution history, we note in passing that the word "assembly" itself implies a multi-component apparatus. The McGraw Hill Dictionary of Scientific and Technical Terms 133 (4th ed.1989), for example, defines "assembly" as: "A unit containing the component parts of a mechanism, machine, or similar device."
That the cam bar retainer is part of the pusher assembly is evident from the fact that recitation of the cam bar retainer is prefaced by the word "and." If the cam bar retainer was not part of the pusher assembly, then cam bar retainer would simply be the penultimate limitation in the claim and would not be prefaced by the word "and." In addition, comparison of Tompkins' claim 1 with Ethicon's chart reveals that the chart contains a typographical error. In Tompkins' claim, the cam bar and cam bar retainer recitations are separated by a comma, another indication that both elements are part of the pusher assembly; the chart, in contrast, mistakenly separates those elements with a semicolon
Ironically, this chart was one of the pieces of prosecution history relied on by the district court to support its holding that the "pusher assembly" consists only of the pusher bars. In doing so, the district court was apparently misled by the fact that row 3, column 1 of the chart begins with the phrase "a pusher assembly slidably mounted on said cartridge frame" which Ethicon (in row 3, column 2) seems to equate with its pusher bars 32. As we have noted, however, a better reading of the chart is that the "pusher assembly" comprises two components: the cam bars (row 3) and a cam bar retainer (row 4), both of which, Ethicon contended, are disclosed in Fox's specification.
On similar grounds we reject Ethicon's argument that U.S. Surgical's endoscopic lockout literally meets claim 24's limitation requiring "movement [of the pusher assembly] to [a] retracted position." As noted above, the term "pusher assembly" includes only the pusher bars and the cam bar retainer. U.S. Surgical's endoscopic staplers, however, do not appear to contain a cam bar retainer and the pusher bars are not retracted after firing but rather are left in the forward position
The district court also misinterpreted the second piece of prosecution history which it cited in support of its interpretation. During the reissue proceedings, the examiner rejected claim 1 of the original '244 patent which recited a lockout mechanism located "on the stapler" saying: "there is no support in the [Fox] specification for a lockout mechanism that is mounted to the stapler.... The disclosed mechanism is mounted to the cartridge;" and "[c]laim 1 implies that the lockout mechanism is not part of the cartridge." From these statements, the district court erroneously inferred that the examiner considered all of the claims to be limited to a lockout mechanism located on the staple cartridge. In doing so, the district court confused a claim not supported by the specification, which is not allowable, with a broad claim, which is
Claim 1 was properly rejected because it recited an element not supported by Fox's disclosure, i.e., a lockout "on the stapler." It does not follow, however, that Fox's disclosure could not support claims sufficiently broad to read on a lockout off of the cartridge. See, e.g., In re Vickers, 141 F.2d 522, 525, 31 C.C.P.A. 985, 61 USPQ 122, 125 (1944) ("an applicant ... is generally allowed claims, when the art permits, which cover more than the specific embodiment shown.") If Fox did not consider the precise location of the lockout to be an element of his invention, he was free to draft claim 24 broadly (within the limits imposed by the prior art) to exclude the lockout's exact location as a limitation of the claimed invention. See 35 U.S.C. § 112 (1994) (allocating to the inventor the task of claiming what "the [inventor] regards as his invention." (emphasis added)). Such a claim would not be unsupported by the specification even though it would be literally infringed by undisclosed embodiments. The district court should not have imposed on claim 24 an additional limitation which it does not contain.