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Edge Systems LLC v. Venus Concept USA Inc.

United States District Court, S.D. Florida

August 19, 2019




         THIS MATTER comes before the Court upon the Plaintiff's Claim Construction Brief [ECF No. 55]; the Defendant's Response in Opposition [ECF No. 57]; and the Plaintiff's Reply [ECF No. 60]. The Court held a hearing on May 24, 2019 (the “May 24th hearing”), at which the parties presented their oral arguments. The Court has carefully reviewed the parties' filings and arguments, the record, and the applicable law.

         THE FACTS

         On October 26, 2018, the Plaintiff, Edge Systems, LLC (“Edge”), brought this action for injunctive relief and damages against the Defendant, Venus Concept USA Inc. (“Venus”). See Compl. [ECF No. 1].[1] Edge alleges that Venus has introduced into the marketplace a hydradermabrasion skin-treatment device that infringes on the following five Edge patents:

1) U.S. Patent No. 7, 789, 886 (“the '886 Patent”), issued Sep. 7, 2010 [ECF No. 31-1];
2) U.S. Patent No. 8, 066, 716 (“the '716 Patent”), issued Nov. 19, 2011 [ECF No. 31-2];
3) U.S. Patent No. 8, 337, 513 (“the '513 Patent”), issued Dec. 25, 2012 [ECF No. 31-3];
4) U.S. Patent No. 9, 468, 464 (“the '464 Patent”), issued Oct. 18, 2016 [ECF No. 31-4]; and
5) U.S. Patent No. 9, 775, 646 (“the '646 Patent”), issued Oct. 3, 2017 [ECF No. 31-5].

See Am. Compl. at 2-11. As relevant here, the parties' dispute centers around the proper construction of several salient terms in these patents' claims.

         THE LAW

         Resolving disputes over the construction of patent claims is a task left exclusively to the federal courts. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996). “The construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims.” Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005) (internal quotation marks omitted). “The purpose of claim construction is to give claim terms the meaning understood by a person of ordinary skill in the art at the time of invention.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017). “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).

         In construing claim terms, courts look first “to the language of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). And, because claims “do not stand alone, ” they “must be read in view of the specification, of which they are a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (internal quotation marks omitted); see also 35 U.S.C. § 112(b) (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”). “Usually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. But “there is a fine line between reading a claim in light of the written description [of the specification] and reading a limitation into the claim from the written description.” Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1321 (Fed. Cir. 2016). “When the claims leave little doubt as to what is intended, re-shaping the claims with material from the written description is clearly unwarranted.” Id. at 1322.

         Courts should also consider, if it is in evidence, a patent's prosecution history, which “consists of the complete record of the proceedings before the [Patent and Trademark Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. “Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. Finally, a court may use “extrinsic evidence” as a tool of claim construction-but always with the caveat that such evidence “is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Id. at 1319. “The sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law.” Id. at 1324.


         I. The '886 Patent

         1. “abrade”/“abrade the skin”/“abraded”

Edge's Proposed Construction [2]

Venus' Proposed Construction

Plain and ordinary meaning.

Alternatively, “wear away by friction”/“wear away the skin surface by friction”/“worn away by friction”

“removal of/removing surface layers of skin”

         The Court very much doubts that, without additional explanation, the average juror will readily understand the word “abrade.” Accordingly, the Court declines Edge's invitation to construe “abrade” according to its “plain and ordinary meaning.” Edge Br. at 3-4.

         On the other hand, the Court finds unconvincing Venus' proposal to limit “abrade” only to instances in which multiple “layers of skin” are removed. See Venus Br. at 5-6. The '886 Patent's repeated reference to “abrading surface layers of the patient's epidermis, ” the “abrasion of the surface layers, ” and the “abrading [of] skin layers, ” [ECF No. 31-1] at 2, 13, 16, strongly suggests that the definition of “abrade” does not include “surface layers of skin.” Cf. Phillips, 415 F.3d at 1314 (noting that the patent's use of the term “steel baffles . . . strongly implies that the term ‘baffles' does not inherently mean objects made of steel”). Were it otherwise-that is, were the Court to construe the verb “abrade” to include the words “surface layers of skin”-the claims' inclusion of the additional modifiers (e.g. “surface layers” or “skin layers”) would be nothing short of superfluous. This the Court may not-and will not-do. See Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts 176 (2012) (“If a provision is susceptible of (1) a meaning that gives it an effect already achieved by another provision, or that deprives another provision of all independent effect, and (2) another meaning that leaves both provisions with some independent operation, the latter should be preferred.”). The word “abrade, ” in sum, must mean something short of removing “surface layers of skin.”

         At the May 24th hearing, the parties approached agreement on a kind of middle ground for the word “abrade.” Venus wanted the Court to define “abrade” as any “removal of the skin surface by friction, ” see May 24, 2019 Hearing Tr. [ECF No. 70] (“Hearing Tr.”) at 52, while Edge preferred “removal of a portion of the skin surface by friction.” Id. (emphasis added). When the Court suggested its preference for Edge's construction, Venus agreed to a definition that would include Edge's “removal of a portion of the skin surface by friction, ” but only so long as “a portion” were further defined to mean something more than a de minimis amount of skin. Id. at 101-02. Edge then promptly agreed that the Court should provide the jury with an instructive footnote to this effect. Id. at 108. In this way, the parties reached full agreement on this term. Accordingly, the Court hereby construes “abrade” in accordance with the parties' agreement as follows: to “remove a portion of the skin surface by friction. Note that ‘a portion' means more than a de minimis amount of skin.”[3]

         2. “abrasive structure”

Edge's Proposed Construction

Venus' Proposed Construction

Plain and ordinary meaning.

Alternatively, “a structure that abrades [wears away by friction]”

“part of the working surface that carries sharp edged apices in a rasplike or sandpaper-like structure for abrading tissue. The abrasive structure on the working surface does not rotate relative to the longitudinal axis of the instrument body”

         The Court agrees with Edge that “a structure that abrades” is the most natural definition of “an abrasive structure.” Unlike “abrade, ” the word “structure” is a relatively common noun, whose meaning the average juror is very likely to understand. And, in patent construction (as elsewhere), commonly used words should, as much as possible, be given their plain and ordinary meaning. See Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999) (“[A] court must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms.”). It is, therefore, unsurprising that, through the years, courts construing patent claims have frequently afforded the word “structure” its plain and ordinary meaning-without additional construction. See, e.g., Fractus, S.A. v. ZTE Corp., No. 2:17-CV-00561-JRG, 2018 WL 4282783, at *26-27 (E.D. Tex. Sept. 7, 2018); Epistar Corp. v. Lowes Companies, Inc., 326 F.Supp.3d 952, 974-75 (C.D. Cal. 2018); Cosmo Techs. Ltd. v. Actavis Labs. FL, Inc., No. CV-15-164-LPS, 2016 WL 4697953, at *4 (D. Del. Sept. 7, 2016); Coprecitec, S.L. v. Brinkmann Corp., No. 1:12-CV-1480-AT, 2013 WL 12061898, at *4 (N.D.Ga. Nov. 20, 2013).

         Venus offers two arguments in support of its alternative construction. First, Venus asks the Court to import into this term a proposed limitation-“part of the working surface that carries sharp edged apices in a rasp-like or sandpaper-like structure for abrading tissue”-it transposes from the prosecution history of United States Patent No. 6, 641, 591 (“the '591 Patent”) [ECF No. 55-9], which is the parent of the '886 Patent. See Venus Br. at 7-8. That prosecution history includes a letter from John H. Shadduck, the putative inventor, [4] to the PTO, in which the inventor advanced the following argument to distinguish a prior invention: “[T]he Applicant discloses an instrument with a working surface that carries sharp-edged apices in a rasp-like or sandpaper-like structure for abrading tissue and teaches away from the [prior art].” [ECF No. 57-2] at 60. The inventor's statement followed the PTO's rejection of an independent “Claim 1” for a skin-treatment system that included, inter alia, “a skin interface compris[ing] a plurality of projecting ridges with substantially sharp edges.” See Id. at 20. An inventor's statement during a patent's prosecution can, of course, affect the scope of that patent's claims and, under some circumstances, may be used to construe the claims contained in later patents-but only to the extent those patents belong to the same family. See Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 942- 44 (Fed. Cir. 2013).

         However alluring Venus' position might at first glance appear, it ignores the undisputed fact that the inventor subsequently amended his '591 Patent application and received approval from the PTO for a new and broader “Claim 1.” See [ECF No. 55-9] at 15. This amendment makes all the difference here because, whereas the “skin interface” in the rejected Claim 1 comprised, as Venus points out, “a plurality of projecting ridges with substantially sharp edges, ” the “skin interface” in the amended Claim 1 includes “an abrading structure with substantially sharp edges for abrading tissue.” Id. Put another way, the amended '591 Patent relegated the narrower phrase, “plurality of projecting ridges, ” together with the “apices” referenced in the inventor's statement to the PTO, to Claims 2 and 4, which are indisputably dependent of Claim 1. See Id. (dependent Claims 2 and 4); see generally 35 U.S.C. § 112(d) (describing structure of claims in dependent forms). It is well-settled that “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips, 415 F.3d at 1315 (emphasis added). Venus has done precious little ...

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