19
May
By Barry Herman
On May 19, 2009, the Federal Circuit issued its opinion in Erbe Elektromedizin GMBH v. ITC, No. 2008-1358.  Judge Dyk, sitting on a panel with Chief Judge Michel and Judge Rader, affirmed the ITC’s claim construction and findings of no infringement.

By way of background, the ITC instituted the underlying investigation (Certain Endoscopic Probes for Use in Argon Plasma Coagulation Sys., 337-TA-569) based on Erbe Elektromedizin GmbH and ERBE USA, Inc.’s (collectively, “Erbe”) April 10, 2006 complaint against Canady Technology, LLC and Canady Technolology Germany GmbH (collectively, “Canady”), alleging violation of Section 337 by Canady’s importation and sale of certain endoscopic probes for use in argon plasma coagulation (“APC”) systems that coagulate bleeding tissue during electrosurgery.  As we explained in our March 30 post, oral arguments in this matter were heard by the Federal Circuit on April 3, 2009.

The asserted claims of U.S. Patent No. 5,720,745 (the “‘745 patent”) required an endoscope with multiple “working channels,” extending between the ends of the endoscope.  The ITC had previously interpreted “working channels” as “a channel through which a device that performs work may be inserted.”  The ITC additionally found no evidence that any endoscopy probes sold to Canady’s customers were used with multiple “working channel” endoscopes, and that absent evidence of direct infringement by Canady’s customers, there could be no contributory or induced infringement by Canady.

On appeal, the parties agreed that if the Federal Circuit affirmed the ITC’s claim construction of “working channel,” that no other issue raised on appeal needed to be addressed, since under the ITC’s claim interpretation, the endoscopes in question only had a single “working channel.”

Erbe argued that “working channel” should be more broadly 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.”  The fundamental disagreement between the parties boiled down to whether fixed optics constitute a “working channel,” since some of the probes sold by Erbe were used with a fixed optics endoscope.

The Federal Circuit first considered two figures from the ‘745 patent, each of which labeled an optical lens separately from two “working channels.”  For example, figure 1 of the ‘745 patent labels the optical lens as element 5, and separately labels two “working channels as elements 6 and 7.  Citing Phillips, the Federal Circuit also consulted a dictionary definition of “working,” as “activity in which one exerts strength or faculties to do or perform.”  This suggested to the Federal Circuit that a “working channel” is not stationary (as with a fixed optics installation) but a channel through which work or activity may be done during the procedure.

Erbe argued that claim 1 of the ‘745 patent acknowledges that fixed optics could constitute a “working channel,” since the claim requires “optical means positioned within a second working channel of the endoscope.”  The Federal Circuit remained unconvinced, and noted that “in light of the figures showing that a fixed optics installation is not a ‘working channel,’ claim 1 must be construed to refer to movable, not fixed, optics.  The fact that the optics are described as “positioned” does not suggest that they are fixed rather than movable.”  The Federal Circuit additionally found that the ‘745 specification contemplated movable optics, and noted uncontroverted testimony in the record that movable optics were well-known and widely used at the time of the patent application.

In view of the party’s agreement that the accused devices have only a single “working channel” if the fixed optics are not a “working channel,” the Federal Circuit affirmed the ITC’s final determination and held that the ITC correctly concluded that there was no evidence of direct infringement and thus no basis for finding induced or contributory infringement.
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