United States District Court, S.D. Florida
ALTMAN, UNITED STATES DISTRICT JUDGE
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.
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.
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.
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.
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.
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.
The '886 Patent
Edge's Proposed Construction 
Venus' Proposed Construction
Plain and ordinary meaning.
Alternatively, “wear away by
friction”/“wear away the skin surface
by friction”/“worn away by
“removal of/removing surface layers of
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.
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.”
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
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
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).
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,  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).
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 ...