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Federal Circuit Affirms the ITC’s Finding of Noninfringement After Construing Claim Term in Light of Specification’s Figures and Dictionary Definitions

May 19, 2009

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Last Month at the Federal Circuit - June 2009

Judges: Judges: Michel, Rader, Dyk (author)

[Appealed from: ITC]

In ERBE Elektromedizin GmbH v. International Trade Commission, No. 08-1358 (Fed. Cir. May 19, 2009), the Federal Circuit affirmed the ITC’s ruling in favor of Canady Technology, LLC and Canady Technology Germany GmbH (collectively “Canady”) that Canady did not infringe claims of U.S. Patent No. 5,720,745 (“the ’745 patent”).

ERBE Elektromedizin GmbH and ERBE USA, Inc. (collectively “ERBE”) is the assignee of the ’745 patent. The ’745 patent relates to electrosurgery by argon plasma coagulation (“APC”) in which a high-frequency current is conducted to tissue via ionized argon. Such electrosurgery is minimally invasive and stops bleeding through the use of a flexible probe containing an electrode positioned within a “working channel” in an endoscope. The electrode is used to ionize argon gas, which may cause an “eschar” (i.e., scab) to form over bleeding tissue, thereby stopping the bleeding. In addition to a channel for the probe, a second “working channel” may be used for a manipulator so that the top of the probe “can be aligned to the tissue to be coagulated.” The endoscope must also contain optics in order for the operator to view the area to be treated and to ascertain when the tip of the probe is near an area of bleeding.

The probes at issue in this appeal are manufactured by KLS Martin GmbH & Co. (“KLS Martin”) and are imported and sold by Canady. ERBE accused Canady of importing and selling probes to various hospitals that allegedly used endoscopes and Canady’s probes in ways that directly infringed independent claims 1 and 35 of the ’745 patent. In addressing the issue of infringement, the ALJ construed various terms, including “working channel.” The ALJ construed “working channel” as “a channel through which a device that performs work may be inserted.” Slip op. at 6. After a hearing, the ALJ found that ERBE presented no evidence that any of the institutions ever used the KLS Martin probes with a multiple “working channel” endoscope, as that term was construed by the ALJ. As there was no evidence of direct infringement of any of the asserted claims, the ALJ found no evidence of contributory infringement or induced infringement of the ’745 patent. Also, the ALJ found that there was no domestic industry because ERBE presented no evidence that “any user of its APC system uses an endoscope with a plurality of working channels.” Id. at 7. The ITC adopted the ALJ’s findings in all respects, except for the ALJ’s construction of the term “predetermined minimum safety distance,” and affirmed the ALJ’s determination of no violation by Canady.

ERBE appealed the ITC’s findings of noninfringement and a finding of no domestic industry. The parties agreed that if the Federal Circuit agreed with the ITC’s construction of the term “working channel,” then the Court should affirm the ITC’s noninfringement determination, and it need not reach any further issues on appeal.

On appeal, ERBE argued for a broader interpretation such that “working channel” should be construed to mean “‘a channel of an endoscope through which work is performed,’ where ‘work’ includes visualization through an optical means, coagulation of tissue, irrigation, inflation, and suction.” Id. at 8. The Federal Circuit initially noted that ERBE’s construction was overly broad as it tended to treat channels dedicated exclusively to suction or gas delivery as “working channels.” Because ERBE conceded that a “working channel” must be an “instrument channel,” the Court determined that channels that perform only suction or gas delivery are not working channels because such channels are not instrument channels. Therefore, the fundamental disagreement between the parties turned on whether fixed optics were a “working channel.”

Noting that the Court generally does not construe claim language to be inconsistent with the clear language of the specification, the Court found ERBE’s contention that fixed optics constitute a “working channel” inconsistent with the figures in the specification. The figures disclosed a fixed optics installation but did not label that installation as constituting a “working channel.” In so doing, the ’745 patent distinguished “working channels” from viewing optics. Further, nowhere did the specification indicate that a “working channel” can be a fixed optics installation.

The Court further supported the ITC’s finding by looking to the dictionary definitions of “working” as “adequate to permit work to be done,” and “work” as “activity in which one exerts strength or faculties to do or perform.” Id. at 12. These definitions suggested that a “working channel” was not stationary (as with a fixed optics installation) but rather was a channel through which work or activity may be done during the procedure. Also, contrary to ERBE’s argument, the ’745 patent did not contemplate a movable optics installation. Rather, the Court found that the “specification [made] clear that an instrument channel is a channel in which surgical tools can be inserted during the procedure” and, therefore, fixed optics did not involve a “working channel.” Id. at 13.

Based on the Court’s claim construction, the Court affirmed the ITC’s decision that there was no evidence of direct infringement and thus no basis for induced or contributory infringement.


Summary authored by Jessica Winchester, student associate at Finnegan.