Contract analysis

I. INTRODUCTION Plaintiff Apex Surgical Innovations, Inc. ("Apex") and Defendant Solstice Biomedical, Inc. ("Solstice") respectfully submit this Joint Claim Construction Brief pursuant to the Scheduling Order entered by this Court on July 2, 2024 (D.I. 34), and in accordance with the Court's Local Patent Rules, D. Del. L.P.R. 4.1 et seq., in advance of the Markman hearing scheduled for November 18, 2024. Apex commenc

1. U.S. Patent No. 9,814,237 ("the '237 Patent"), entitled "Locking Seal Assembly for Minimally Invasive Surgical Access Device," issued on November 14, 2017, with an expiration date of June 22, 2035. Apex asserts Claims 1, 3, 7, and 12 of the '237 Patent.

2. U.S. Patent No. 10,271,884 ("the '884 Patent"), entitled "Retractable Blade Deployment Mechanism for Trocar Systems," issued on April 30, 2019, with an expiration date of September 15, 2036. Apex asserts Claims 1, 2, 5, 9, and 14 of the '884 Patent.

3. U.S. Patent No. 10,932,105 ("the '105 Patent"), entitled "Integrated Insufflation Valve and Seal for Laparoscopic Trocar," issued on March 2, 2021, with an expiration date of January 10, 2038. Apex asserts Claims 1, 4, and 8 of the '105 Patent. The named inventor on all three patents is Dr. Raymond Szabo, who serves as Vice President of Engineering at Apex. All three patents were assigned to Apex and Apex is the c

II. LEGAL STANDARD FOR CLAIM CONSTRUCTION Claim construction is a question of law to be decided by the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 388–91 (1996). The construction of patent claims determines the scope of the patent owner's right to exclude and, consequently, is a necessary predicate to the infringement and validity analyses that follow. O2 Micro Int'l Ltd. v. Beyond Innovation Tec

III. THE ASSERTED PATENTS — OVERVIEW A. The '237 Patent — "Locking Seal Assembly for Minimally Invasive Surgical Access Device" U.S. Patent No. 9,814,237, entitled "Locking Seal Assembly for Minimally Invasive Surgical Access Device," was issued on November 14, 2017 to named inventor Dr. Raymond Szabo. The '237 Patent claims priority to U.S. Provisional Application No. 62/182,456, filed June 20, 2015, through a non-p

IV. THE NINE DISPUTED CLAIM TERMS — OVERVIEW TABLE Pursuant to D. Del. L.P.R. 4.2, the parties have prepared the following summary table identifying each of the nine disputed claim terms, the patent(s) and claim(s) in which each term appears, and the parties' respective proposed constructions. A more detailed Joint Claim Construction Chart is attached as Appendix B. As the table reflects, the central dispute between

V. AGREED CONSTRUCTIONS Pursuant to D. Del. L.P.R. 4.3, the parties have attempted in good faith to resolve as many claim construction disputes as possible without the need for judicial intervention. The parties exchanged proposed claim constructions on October 22, 2024, and subsequently met and conferred on October 28, 2024 and October 30, 2024. Despite these efforts, the parties were unable to agree on the construc

1. Person of Ordinary Skill in the Art. The parties agree that a person of ordinary skill in the art ("POSITA") at the time of the inventions disclosed in the patents-in-suit would have at least a Bachelor of Science degree in mechanical engineering, biomedical engineering, or a closely related field, and approximately three to five years of professional experience in the design of minimally invasive surgical instrum

2. No Means-Plus-Function Terms. The parties agree that none of the nine disputed terms at issue in this brief are drafted in means-plus-function format under 35 U.S.C. § 112(f), and that construction under Section 112(f) is not required or appropriate for any of the disputed terms.

3. No Indefiniteness Challenge to Disputed Terms. Solstice does not contend that any of the nine disputed terms at issue in this brief are indefinite under 35 U.S.C. § 112(b). Solstice reserves the right to assert indefiniteness as to other claim terms not at issue in this brief. Beyond these agreements, the parties' positions diverge as set forth in the term-by-term analysis that follows.

VI. DISPUTED TERM NO. 1: "LOCKING SEAL ASSEMBLY" ('237 Patent, Claims 1, 3, 7, 12) A. Apex's Proposed Construction Apex's proposed construction: "An assembly that includes a seal and a locking mechanism that, when engaged, secures the seal in a closed position around a surgical instrument." Apex contends that its proposed construction faithfully reflects the plain and ordinary meaning of the term "locking seal assemb

VII. DISPUTED TERM NO. 2: "SEALING MEMBER IN CONTINUOUS CONTACT WITH" ('237 Patent, Claims 1, 7) A. Apex's Proposed Construction Apex's proposed construction: "A sealing component that maintains contact with the instrument shaft during use of the device." Apex contends that the phrase "sealing member in continuous contact with" should be given its plain and ordinary meaning, which requires that the sealing member mai

VIII. DISPUTED TERM NO. 3: "BIASING ELEMENT CONFIGURED TO URGE" ('237 Patent, Claims 1, 12) A. Apex's Proposed Construction Apex's proposed construction: "A component that applies a force to push or move another element in a particular direction, including but not limited to springs, elastomeric elements, and resilient foam." Apex contends that "biasing element configured to urge" is a broad functional term that enco

IX. DISPUTED TERM NO. 4: "RETRACTABLE BLADE DEPLOYMENT MECHANISM" ('884 Patent, Claims 1, 2, 5, 9, 14) A. Apex's Proposed Construction Apex's proposed construction: "A mechanism that deploys a cutting blade for tissue penetration and subsequently retracts or withdraws the blade." Apex contends that the phrase "retractable blade deployment mechanism" should be given its plain and ordinary meaning. The term describes a