Case 1:10-cv-00631-RGA-MPT Document 410 Filed 10/12/12 Page 1 of 10 PageID #: 11165

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

ST. JUDE MEDICAL, CARDIOLOGY DIVISION, INC., ST. JUDE MEDICAL SYSTEMS AB, and ST. JUDE MEDICAL S.C., INC., Plaintiffs,
V.

Civil Action No. 10-631-RGA

VOLCANO CORPORATION, Defendant.

AMENDED ORDER

The Court having considered the Parties' Joint Claim Construction Brief (D.I. 269), as well as the papers filed in connection therewith, and oral argument;
IT IS HEREBY ORDERED that, as used in the asserted claims in the patents referenced

below:
U.S. Patent Nos. 6,112,598 (the '"598 Patent") and 6,167,763 (the "'763 Patent")

1.

The term "it does not contact any surrounding rigid structures" is construed to

mean "the sensor element does not come into contact with any rigid structures that are peripheral to the mounting structure." "Said sensor element" is the antecedent basis for the word "it." 2. The term "recess" is construed to mean "recess." The parties argue for "hollow"

or "indentation." As far as the Court can tell from the argument, the dispute is pointless. The proposed constructions do not change the meaning. The proposed constructions also will not help the jury. 3. The term "surrounding the sensor" is construed to mean "around a portion of the

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sensor." The specification shows that the tube 21 is positioned around a portion of sensor 19. '598 Patent, figs. 3-9. Part of the sensor is exposed in every drawing and not enclosed by the tube. See, e.g., id., fig. 4. Therefore, the tube surrounds only a portion of the sensor. 4. The term "pressure sensitive end of the pressure transducer does not contact any

structure other than the mount" is construed to mean "the pressure sensitive end of the pressure transducer contacts the mount and no other structure." The plain grammatical language ofthe claim requires this construction. The '763 Patent specification further supports this construction.

See, e.g., '763 Patent, col.61.62 to col.7 1.2.

5. The term "pressure transducer" is construed to mean "a device that converts

pressure to a signal." Pressure transducer would be understood by a person of ordinary skill in the art as a device that converts pressure to a signal. The specification supports this construction as well, reciting with respect to Figure 3 that blood pressure "act[s] on the sensor, which in its tum delivers a signal40 representative of the exerted pressure." '763 Patent, col.5 11.39-41.
U.S. Patent Nos. 5,938.624 (the "'624 Patent"); and 6,196,980 (the "'980 Patent")

6.

The term "core wire" means "a wire that extends through the guide wire." The

parties agree on the construction of this term. 7. The term "fills the male connector to prevent capillary action" is construed to

mean "the male connector is completely filled without any gaps, joints or spaces with insulating material to stop capillary action from occurring." The specification does not suggest that the insulating material merely delays or hampers capillary action but rather makes clear that it stops capillary action. See, e.g., '624 Patent, co1.211.6-8; id., col.411.60-62; id., col.5 11.40-47. The '624 Patent specification also confirms that the insulating material is continuous and completely 2

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fills the male connector to prevent or preclude capillary action that could lead to contamination or a short circuit. See, e.g., '624 Patent, col.211.7-8; id, col.211.26-29; id, col.2 11.47-50; id, col.4ll.60-62; id, col.5 11.40-47. By continuously and completely filling the connector, capillary action is stopped because there are no gaps, joints or other openings in the insulating material that would otherwise permit capillary action. U.S. Patent No. 6,248,083 (the '"083 Patent") 8. The term "interface cable" is construed to mean "insulated electrical wire(s) used

to transmit electronic signals." This construction is consistent with the words of the claim and the disclosure of the '083 Patent. '083 Patent, col.5 11.22-25 ("The actual passive calibration circuit is provided on an interface cable 4, i.e. a cable of larger dimensions, interfacing with external power supplies, calculation means such as computers, monitors, etc."). 9. The term "connectable" is construed to mean "able to be joined, linked or fastened

together directly or indirectly." The parties agree that the claim term "connectable" means "able to be joined, linked or fastened together." The dispute is whether the construction should also include the phrase "including by connectors or otherwise." Although one way to join the interface cable with a guide wire or with a control unit is with a connector added to one end of the interface cable, dependent claim 12 makes clear that to be connectable does not require a connector. St. Jude's proposed construction of"connectable" creates confusion by suggesting connectors or other components can be considered part of the interface cable, when the patent makes clear they cannot. See, e.g., '083 Patent, col.8 11.43-45 (claim 12 recites the "guide wire assembly as set forth in claim 10, further comprising a connector between the guide wire and the cable.").

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10.

The term "information storing means" is a means-plus-function claim. The

claimed function is "storing information." The corresponding structure is "EPROM, PROM, resistor net or bar code." The parties agree that the claimed function is "storing information." With respect to the corresponding structure, there is no disclosure of EEPROM or other forms of memory chip in the '083 Patent other than PROM and EPROM. 11. The term "provided on said interface cable" means "supplied on the interface

cable." This construction is consistent with the plain meaning of"provided." 12. The term "uniquely characteristic of said measuring device ( 14)" is construed to

mean "uniquely descriptive of the sensor." The '083 Patent explains that "the object of the invention is to provide devices for pressure measurements having an ultraminiature sensor and calibration/compensation circuitry specific to each individual sensor." '083 Patent, col. I 11.2837; id, col.211.10-13. St. Jude's proposed construction would limit the scope ofthe claim to a single disclosed embodiment while disregarding another, which is improper. This construction is meant to include both embodiments when the measuring device is not assembled and when it is assembled in the guide wire. 13. The term "EPROM" is construed to mean "a programmable read only memory

that can be erased by ultraviolet light." This construction is consistent with the ordinary meaning of this term as EPROM is an acronym well known to those in the electrical engineering field at the time of the filing of the '083 Patent. See IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONIC TERMS 368(6th ed. 1997) (defining "EPROM" as "[a] type of programmable readonly memory that can be erased and reprogrammed using ultraviolet light."). U.S. Patent No. 5,178,159 (the "'159 Patent")

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14.

The term "extending along the length thereof' is construed to mean "extending

along the [guide wire/flexible cable]." One of ordinary skill in the art reading the '159 Patent would understand the purpose of the conductors in the guide wire is to transmit electrical signals along the guide wire. Nothing in the specification requires the conductors to extend to the very tip of the guide wire. 15. The term "insulating sleeve" is construed to mean "a non-conductive tubular

piece." The word "sleeve" is normally defined in technical dictionaries as an "[i]nsulating tubing used over wires or components." MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 174 7 (4th ed. 1989). This common definition of sleeve as a "tubular part" or "tubing" is consistent with the '159 Patent specification. The drawings in the specification depict a sleeve as a tube. See, e.g., '159 Patent, figs. 1, 2, 4, 5, 6, & 7. 16. The term "extending along the length of the tubular member" means "extending
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along the guide wire." The dispute here is whether the conductors must extend to the tip of the guide wire. Nothing in the specification requires the conductors to extend to the very tip of the guide wire. 17. The term "cylindrical insulating member" is construed to mean "a cylindrical non-

i !

conductive tubular piece." This construction is consistent with the construction of "insulating sleeve" set forth in paragraph 15 of this Order. U.S. Patent No. 5,797.856 (the '"856 Patent") 18. The term "flexible elongate member" is construed to mean "a long, flexible core

wire." Volcano's construction of"flexible elongate member" as "core wire or mandrel" does not explain the words "elongate" or "flexible" and is, therefore, not a useful construction.

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19.

The term "coaxially disposed on at least a portion of the flexible elongate

member" is construed to mean "the flexible elongate tubular member shares a common axis with at least a portion of the core wire." The dispute here concerns only the "flexible elongate member" and, therefore, the construction of the term "flexible elongate member" resolves it. 20. The term "coil assembly" is construed to mean "an assembly that includes at least

one coil." The words of the claim term do not require multiple coils. In addition, claim 4 of the '856 Patent, which depends from claim 1, requires the coil assembly to include two coils, thereby making clear that the coil assembly of independent claim 1 need not have two coils. The term "coil assembly" must therefore be broad enough to include both a single- and multiple-coil assembly. 21. The term "distal extremity" is construed to mean "distal section." St. Jude

proposes to construe this term as "distal end." However, the specification ofthe '856 Patent is consistent with the construction "distal section." The specification uses the term "distal extremity tip," making clear that distal extremity refers to a section, not an end. '856 Patent, col.3 11.62-66. 22. The term "said flexible elongate member having a first transition counting from

the proximal extremity from a larger diameter to a smaller diameter" is construed to mean "the diameter of the flexible elongate member having a first change from a larger diameter to a smaller diameter when viewed from the proximal to distal direction." The parties agree that "transition" means "a change in diameter." The dispute here is whether the transition must taper. Nothing in the words of the claim or specification suggests that the transition must taper. A transition in diameter could occur at a single point or at multiple points along the core wire.

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23.

The term "said flexible elongate member is provided with an additional transition

distal of the distal extremity of the flexible elongate tubular member and being disposed within the coil assembly" is construed to mean "the diameter of the flexible elongate member changes distally of the distal end of the flexible elongate tubular member and within the coil assembly." This construction is consistent with the construction of "said flexible elongate member having a first transition counting from the proximal extremity from a larger diameter to a smaller diameter" set forth in paragraph 21 of this Order. U.S. Patent No. 6,976,965 (the '"965 Patent") 24. The term "hole ... such that a portion of the pressure sensitive region is disposed

opposite the hole" is construed to mean "an opening located opposite a portion of the pressure sensitive region of the solid state pressure sensor." The dispute here is whether the claimed "hole" should be construed as "opening" or "pin hole." This construction is consistent with the specification. It describes the claimed hole with reference to the opening or cutout shown in Figure 3. Although the specification does not use the word "hole," every embodiment shown in the figures and the accompanying text describes a cutout or opening designed to enable the pressure-sensitive region of the pressure sensor to be exposed to ambient fluid. See, e.g., '965 Patent col.811.60-64 & figs. 13-14. 25. The term "distal extremity of the guidewire" is construed to mean "a distal section

of the guidewire." Claim 7 of the '965 Patent associates the proximal and distal "extremities" of the guidewire with reference numbers 42 and 43, which correspond to proximal and distal sections, not ends, of the guidewire. '965 Patent, col.3 11.33-39; id, col.4ll.16-37. In addition, claim 8 recites a core wire with a "tapered distal extremity." A taper can exist in a section of

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core wire, as shown in Figure 17 ofthe '965 Patent, but cannot exist in an "end" of the core wire. The '965 Patent specification also refers to a "distal extremity" in describing Figures 3, 13, and 16. These figures show the sensor housing mounted in the distal section of the wire, not at its end. '965 Patent, col.2 11.28-64. 26. The term "mounted within the sensor housing such that the pressure sensitive

region projects into the lumen" is construed to mean "affixed within the sensor housing so that the pressure sensitive region extends into the open space within the sensor housing." The dispute here is whether "projects" should be construed to mean "extends" or "juts out." The plain meaning of"projects" is "extends."
U.S. Patent No. 7.134,994 (the '"994 Patent")

27.

The term "multi-mode graphical user interface with at least two distinct displays

for presenting diagnostic parameter values of multiple types" is construed to mean "a humancomputer interface with at least two distinct displays for presenting diagnostic information of at least two types." The claimed "multi-mode graphical user interface" presents at least two visual displays for the user to choose from. This construction is also consistent with the specification: "A multifunctional invasive cardiovascular diagnostic measurement host is disclosed that interfaces a variety of sensor devices, such as guide wire-mounted pressure sensors, flow sensors, temperature sensors, etc, and provides a multi-mode graphical user interface providing a plurality of displays in accordance with the various types of sensors and measurements rendered by the sensors." '994 Patent at [57]. Figure 3 shows an exemplary multi-mode graphical user interface, which is also consistent with this construction. See id at col.9 1.16 to col.1 0 1.6. 28. The term "multi-mode graphical user interface host" is construed to mean
8

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"software that supports the multi-mode graphical user interface." The claimed "multi-mode graphical user interface" resides on a "host" and, thus, the main issue here is the definition of host. St. Jude proposes the same construction for "multi-mode graphical user interface host" as it proposed for the construction of"multi-mode graphical user interface," which cannot be correct. The parties agree that a "host" is software. (D.I. 269 at 174, 175). This construction is

consistent with the specification, which recites "the multi-mode graphical user interface supported by the host application 222." '994 Patent, col.9 11.17-18. 29. The term "kernel mode drivers" is construed to mean "software components that

execute on the most privileged level in a computer, which permit a computer system to communicate with a device." The dispute here is whether the components execute on the most privileged level of a "computer" or of a "processor in a computer." The '994 Patent claims a "multi-purpose host system." '994 Patent, claim 1. The specification explains: "[k]emel mode drivers 204 executing on the host 100 facilitate communicating commands and data between the PCI card 112 and a set of user mode processes 206 that drive input parameter values for the multiple graphical user interface modes supported by the host system 100." Id., col.711.26-30. The specification appears (at this portion) to use host in the sense of a computer or computer system. 1 30. The term "processed sensor data" is construed to mean "sensor data that has been

The argument for "processor in a computer" rather than "computer" primarily is supported by extrinsic evidence consisting of declarations and deposition testimony. The Federal Circuit has cautioned against reliance on such evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) ("Extrinsic evidence consisting of expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence. The effect of that bias can be exacerbated if ... the expert's opinion is offered in a form that is not subject to cross-examination.")

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systematically modified, including by means of analog to digital conversion." Volcano's proposed construction requires the use of appropriate mathematical operations. However, there is no support in the specification for a requirement of mathematical operations. The patent does disclose a variety of exemplary "processes," including analog to digital conversion. '994 Patent, col.6 11.25-30. 31. The term "peripheral interface card" is construed to mean "a printed circuit board

or adapter that can be plugged into a computer to provide added functionality or new capability, which provides specialized services that are not built into the computer, and that interfaces with peripherals." Those with ordinary skill in the art would understand this to be the definition of "peripheral interface card." See MICROSOFT COMPUTER DICTIONARY 84 (5th ed. 2002). This construction is also consistent with the specification. See, e.g., '994 Patent col.5 11.28-30 & figs.

1 &2.

Entered this

{1 day of October, 2012.

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