                        NOTE: This disposition is nonprecedential.

  United States Court of Appeals for the Federal Circuit
                                         06-1289

                        MEDTRONIC NAVIGATION, INC.
           (formerly known as Surgical Navigation Technologies, Inc.),
   MEDTRONIC SOFAMOR DANEK, INC., and SOFAMOR DANEK HOLDINGS, INC.,

                                                       Plaintiffs-Appellants,

                                            and

                                 ST. LOUIS UNIVERSITY,

                                                       Plaintiff-Appellant,

                                            and

                        TRUSTEES OF DARTMOUTH COLLEGE,

                                                       Plaintiff-Appellant,

                                             v.

              BRAINLAB MEDIZINISCHE COMPUTERSYSTEME GMBH,
              BRAINLAB AG, BRAINLAB USA, INC., and BRAINLAB, INC.,

                                                       Defendants-Appellees.


       Martin R. Lueck, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis, Minnesota,
argued for all plaintiffs-appellants. On the brief were Brian E. Ferguson, Raphael V. Lupo,
and Bureden J. Warren, McDermott Will & Emery LLP, of Washington, DC; Terrence P.
McMahon and Vera E. Elson, of Palo Alto, California; and Daniel R. Foster and
Christopher D. Bright, of Irvine, California. Of counsel were David W. Harlan, Senniger
Powers, of St. Louis, Missouri; and Munir R. Meghjee, Robins, Kaplan, Miller & Ciresi
L.L.P., of Minneapolis, Minnesota.

       Jay R. Campbell, Renner, Otto, Boisselle & Sklar, LLP, of Cleveland, Ohio, argued
for defendants-appellees. With him on the brief were John J. Del Col, Joshua M. Ryland,
and Mark C. Johnson. Of counsel on the brief was Thomas H. Shunk, Baker & Hostetler
LLP, of Cleveland, Ohio. Also of counsel was Thomas G. Fistek, Renner, Otto, Boisselle
& Sklar, LLP, of Cleveland, Ohio.

Appealed from: United States District Court for the District of Colorado

Senior Judge Richard P. Matsch
                         NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit
                                         06-1289

                      MEDTRONIC NAVIGATION, INC.
         (formerly known as Surgical Navigation Technologies, Inc.),
 MEDTRONIC SOFAMOR DANEK, INC., and SOFAMOR DANEK HOLDINGS, INC.,

                                                 Plaintiffs-Appellants,

                                           and

                                ST. LOUIS UNIVERSITY,

                                                 Plaintiff-Appellant,

                                           and

                       TRUSTEES OF DARTMOUTH COLLEGE,

                                                 Plaintiff-Appellant,

                                            v.

             BRAINLAB MEDIZINISCHE COMPUTERSYSTEME GMBH,
             BRAINLAB AG, BRAINLAB USA, INC., and BRAINLAB, INC.,

                                            Defendants-Appellees,
                           ____________________________

                             DECIDED: February 5, 2007
                           ____________________________

Before NEWMAN, LOURIE, and BRYSON, Circuit Judges.

LOURIE, Circuit Judge.

                                       DECISION

      Medtronic Navigation, Inc., Medtronic Sofamor Danek, Inc., Sofamor Danek

Holdings, Inc., St. Louis University, and Trustees of Dartmouth College (collectively

“Medtronic”) appeal from the judgment of the United States District Court for the District
of Colorado setting aside a jury verdict in favor of Medtronic and granting judgment of

noninfringement of U.S. Patents 5,383,454, 4,722,056, 5,389,101, and 5,603,318 in

favor of BrainLAB Medizinische Computersysteme GmbH, BrainLAB AG, BrainLAB

USA, Inc., and BrainLAB, Inc. (collectively “BrainLab”) as a matter of law. Because the

district court did not err in its claim constructions and properly granted judgment of

noninfringement as a matter of law in favor of BrainLab, we affirm.

                                     BACKGROUND

       The patents in suit relate to image-guided surgery products that enable the

precise localization of surgical instruments used during surgery.        The ’454 patent,

entitled “System for Indicating the Position of a Surgical Probe Within a Head on an

Image of the Head,” claims a system and method for tracking the tip of a surgical probe

as it navigates through the patient’s body during an operation, while displaying a

scanned image of the location of the probe. The patent discloses the use of an acoustic

tracking system to track the position of the instrument. ’454 patent, col.5 l.18-col.9 l.37.

Similarly, the ’056 patent, entitled “Reference Display Systems For Superimposing a

Tomographic Image Onto the Focal Plane of an Operating Microscope” is directed to

“reference display systems that may be used to integrate information from three-

dimensional imaging devices and an operating microscope during an operative

procedure on a patient.” ’056 patent, col.1 ll.7-10. That patent’s specification describes

using an acoustic or electromagnetic system to track movement. The ’101 and ’318

patents (collectively referred to as the “Heilbrun patents”), both entitled “Apparatus and

Method for Photogrammetric Surgical Localization,” describe an invention that defines

“the location of a medical instrument relative to elements in a medical workspace




06-1289                                  -2-
including a patient’s body region, especially (but not limited to) elements seen by the

surgeon.” Heilbrun patents, col.3 ll.6-10.

      Medtronic manufactures and sells image-guided surgery products. BrainLab also

manufactures and sells those types of products, including its VectorVision, Kolibri,

BrainSuite and ExacTrac products. In May 1998, Medtronic filed a patent infringement

action against BrainLab. After several amended complaints, Medtronic asserted that

BrainLab’s products infringe the ’454, ’056, and Heilbrun patents. The court held a

Markman hearing and issued its claim construction ruling on September 29, 2004.

Surgical Navigation Techs., Inc. v. BrainLab Medizinische Computersys. GmBH, Civ.

No. 98-1072, slip op. at 1-28 (D. Colo. Sep. 29, 2006) (“Claim Construction Op.”).

Thereafter, BrainLab moved for summary judgment of noninfringement as to the ’454

and ’056 patents, which the court denied.

      A thirteen-day jury trial began on September 12, 2005.        At trial, Medtronic

asserted that the accused products infringe claim 14 of the ’454 patent, claim 1 of the

’056 patent, and claim 1 of the Heilbrun patents. Before the close of Medtronic’s case-

in-chief, the court granted judgment as a matter of law in favor of BrainLab on

Medtronic’s willful infringement claim. As to the remaining claims, the jury returned a

special verdict on September 30, 2005. The jury found infringement of claim 14 of the

’454 patent and claim 1 of the ’056 patent under the doctrine of equivalents, and

awarded $50 million in damages. The jury further found infringement of claim 1 of the

Heilbrun patents, and awarded an additional $1 million in damages. The jury rejected

BrainLab’s invalidity challenges.




06-1289                                 -3-
       Following the jury verdict, BrainLab moved for judgment as a matter of law

pursuant to Rule 50(b) asserting that its products do not infringe any of the patents, and

also moved for a new trial.     Medtronic moved for entry of judgment, an award of

prejudgment interest, and a permanent injunction.       In a well-reasoned opinion, the

district court denied all of Medtronic’s motions and granted BrainLab’s motion for

judgment as a matter of law, thereby setting aside the jury’s verdict of infringement as to

all four patents.   Medtronic Navigation, Inc. v. BrainLab Medizinische Computersys.

GmBH, 417 F.Supp. 2d 1188 (D. Colo. 2006).

       Medtronic timely appealed.      We have jurisdiction pursuant to 28 U.S.C. §

1295(a)(1).

                                      DISCUSSION

       A motion for judgment as a matter of law raises a procedural issue that is not

unique to patent law, and thus is “reviewed under the law of the regional circuit in which

the appeal from the district court would usually lie.” Summit Tech. Inc. v. Nidek Co.,

363 F.3d 1219, 1223 (Fed. Cir. 2004).         In the Tenth Circuit, the Court of Appeals

exercises de novo review over a district court’s disposition of a motion for judgment as a

matter of law, using the same standard as the district court. Snyder v. City of Moab,

354 F.3d 1179, 1184 (10th Cir. 2003). In line with the deference traditionally accorded

to jury verdicts, Burton v. R.J. Reynolds Tobacco Co., 397 F.3d 906, 914 (10th Cir.

2005), judgment as a matter of law is only appropriate when “the evidence points but

one way and is susceptible to no reasonable inferences supporting the party opposing

the motion.” Snyder, 354 F.3d at 1184. In reviewing the record, the court considers

“the evidence, and any inferences drawn therefrom, in favor of the non-moving party.”




06-1289                                 -4-
Johnson v. Unified Gov’t of Wyandotte County/Kan. City, Kan., 371 F.3d 723, 728 (10th

Cir. 2004).

       On appeal, Medtronic argues that the district court erred by granting BrainLab’s

motion for judgment as a matter of law asserting that (1) the court erred in its claim

construction of three disputed terms, (2) BrainLab’s products literally infringe the

asserted claims under the correct claim constructions as advanced by Medtronic, (3)

prosecution history estoppel did not preclude Medtronic from asserting infringement

under the doctrine of equivalents as to the ’454 patent, and (4) substantial evidence

supports the jury’s finding of infringement as to all four patents. With regard to claim

construction, Medtronic asserts that the court incorrectly construed the following claim

limitations: (1) “reference means” of claim 14 of the ’454 patent, (2) “establishing the

spatial relationship” of claim 1 of the ’056 patent, and (3) “workspace coordinate

framework” of claim 1 of the Heilbrun patents. BrainLab responds that the court did not

err in granting its motion for judgment of noninfringement as a matter of law, arguing

that the court properly construed the disputed claim terms, prosecution history estoppel

does apply as to the ’454 patent, and that there was insufficient evidence to support the

jury’s verdict of infringement.

       With regard to claim construction, we conclude that the district court did not err in

construing the claim terms at issue.       The court construed the first disputed term

“reference means” as “an array of microphones,” rejecting Medtronic’s proposed

construction of “one or more sensor(s) or receiver(s).” As the court correctly noted, the

specification consistently describes the use of “arrays” to detect sound emissions

transmitted from emitters located on the base ring (or head) and the surgical probe as




06-1289                                 -5-
part of the process of determining the position of the probe. ’454 patent, col.5 ll.30-35,

col.6 ll.8-35, col.7 ll.2-35 & Figs. 3A-3B. Indeed, the specification describes that key

component of the invention in terms of a “microphone array” or “microphones of the

array,” and does not describe it in terms of “sensors” or “receivers,” as Medtronic

contends. The court also rejected Medtronic’s claim differentiation argument. We find

no error in the court’s analysis and thus affirm that term’s construction.

       The relevant issue on appeal with respect to the second disputed term,

“establishing the spatial relationship,” is whether the district court properly excluded “the

use of an optical reference system” from its construction. Claim Construction Op. at 7.

Referencing the specification, the district court noted that the specification describes “an

acoustic or ultrasonic range finding system” as well as “an electromagnetic position and

orientation system” to track the movement of an object. Id. at 6 (citing ’056 patent, col.6

l.48-col.11 l.18, col.11 l.18-col.12 l.32).    The court further noted that although the

specification mentions the use of an optical system, the statements were “too general in

nature” to support Medtronic’s broad proposed construction. Id.

       We agree with the district court’s reasoning.       Similar to the ’454 patent, the

specification of the ’056 patent discloses that the spatial relationship is established by

using an acoustic tracking system or an “ultrasonic range finder or reference system”

that uses spark gaps that emit “energy in the form of sound pulses which are received

by (at least) three microphones.” Id. col.6 ll.48-58. The specification also describes in

detail the use of “an electromagnetic position and orientation system.” Id. col.11 ll.18-

20. Medtronic’s argument for inclusion of an optical tracking system is largely premised




06-1289                                  -6-
on a single statement that appears in the specification, i.e., that “[a]n optical system can

be used as an alternative to the acoustic system described earlier.” Id. col.12 ll.33-34.

         We agree with the district court that this passing reference to an optical tracking

system fails to support an interpretation broader than that adopted by the court. A claim

is to be construed in light of the written description that supports it. Phillips v. AWH

Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). And it is true that the minimal

one sentence reference to an optical tracking system is a mention of an optical tracking

system.     However, the remainder of the specification describes acoustic systems.

There is no enabling description of how to make and use an optical tracking system,

and claims are best construed to preserve their validity. Tate Access Floors, Inc. v.

Interface Architectural, 279 F.3d 1357, 1369 (Fed. Cir. 2002); see also Modine Mfg. Co.

v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1557 (Fed. Cir. 1996) (overruled on other

grounds); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir.

1996).    Because this case is one in which ambiguity as to the scope of the claim

language can be “resolved in a manner that would preserve the patent’s validity,”

Phillips, 415 F.3d at 1327, that principle can properly be applied here. Moreover, the

inventor himself stated, in answer to a series of questions regarding whether an optical

tracking unit was available to him at the time of his invention of the acoustic system that

“[w]e weren’t aware of any commercial optical tracking system that was available” and

“[i]t seemed at the time that this would be an obvious development, that it would be

coming in time. It was just that at this time that we were writing this, that such a system

wasn’t available to us.” J.A. at 6562 (emphasis added). Thus, rather than being a

disclosure of an optical system sufficient to support an interpretation of a claim as




06-1289                                   -7-
including an optical system, it was merely “an attempt to preempt the future before it

has arrived.” Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993). Such a minimal

dropping of an unenabled reference to an undeveloped system does not support a claim

to it. We accordingly conclude that the court did not err by excluding an optical tracking

system from its claim construction.

       With regard to the last disputed claim term, the district court construed

“workspace coordinate framework,” which appears in claim 1 of the Heilbrun patents, as

“a static or immovable coordinate system centered in the workspace that must be re-

established if one or more of the cameras are moved.” Claim Construction Op. at 25.

The court noted that the specification explains that the workspace coordinate framework

is a three-dimensional reference system that is “computed from two digitized 2-

dimensional images of the fiducial structure 220 provided respectively by cameras 200,

202, plus the known location parameters of fiducial points on fiducial structure 220.” Id.

at 24-25 (citing Heilbrun patents, col.6 ll.32-37). The court further noted that, based on

the specification, once the framework is established, the fiducial structure can be

removed and the instrument can be tracked “so long as the cameras remain fixed in

their positions relative to the workspace.”      Id. at 25.   Importantly, the specification

discloses that “[i]f it is desired to select new locations for making the image pairs . . . all

that need be done is to reposition the fiducial structure in the workspace to make a new

pair of calibration images.”     Id.; Heilbrun patents, col.13 ll.40-44.      That statement

supports the district court’s conclusion that the coordinate framework is a static one that

must be reestablished if the cameras move.




06-1289                                   -8-
       Because we find no error in the district court’s construction of the disputed terms,

and find Medtronic’s arguments unpersuasive, we affirm on claim construction and

reject Medtronic’s unsupported assertion that the accused products literally infringe the

patents in suit.

       We also agree with the district court’s conclusion that Medtronic was precluded

by prosecution history estoppel from asserting infringement of the ’454 patent under the

doctrine of equivalents. The district court noted that the examiner rejected all twenty-

five of the original claims that were included in the ’454 patent application as anticipated

under 35 U.S.C. § 102 and not in compliance with paragraphs 1 and 2 of § 112. In

response, Bucholz made several statements during prosecution in order to overcome

the rejections. Bucholz also amended his claim to include the “reference means” and

added an additional step to the claim. Medtronic asserts that Bucholz’s statements and

the amendment fail to establish a clear disavowal or surrender of subject matter. We

disagree. Based on the prosecution history, we agree with the district court’s reasoning

and conclude that Bucholz clearly narrowed the scope of his invention in exchange for

the allowance of his claims, thus surrendering subject matter that encompasses what

Medtronic now claims to be equivalent. We therefore agree with the district court that

Medtronic was precluded from arguing that the passive optical tracking system used in

BrainLab’s products is an equivalent of the claimed reference means.

       As to the remaining patents, we agree with BrainLab that the district court

properly granted judgment of noninfringement of the ’056 and Heilbrun patents as a

matter of law. In setting aside the jury’s verdict of infringement under the doctrine of

equivalents as to the ’056 patent, the court determined that there was not substantial




06-1289                                  -9-
evidence establishing that BrainLab’s optical tracking system functions in substantially

the same “way” as required by the function-way-result test in a doctrine of equivalents

analysis. The court determined that Medtronic failed to present specific testimony that

compared the passive optical system to the disclosed acoustic and electromagnetic

systems.    Moreover, the court found that the evidence in the record supported the

opposite conclusion, viz., that the differences between the acoustic and optical tracking

systems were not insubstantial.     Viewing the evidence in a light most favorable to

Medtronic, we agree with the district court’s conclusion. Accordingly, we find no error in

the court’s decision.

       Finally, we affirm the district court’s grant of judgment as a matter of law that

BrainLab’s products do not infringe the Heilbrun patents, either literally or under the

doctrine of equivalents.   In setting aside the jury verdict of literal infringement, the

district court concluded that the evidence did not support a finding that the accused

products meet the “establishing a workspace coordinate framework” limitation.           In

particular, the court determined that the evidence failed to establish that two particular

structures in the VectorVision and ExacTrac systems, i.e., the Mayfield star and the

isocenter phantom, respectively, serve as the “fiducial means” that is required by the

claim to establish the workspace coordinate framework.

       As to infringement under the doctrine of equivalents, the district court noted that

Medtronic’s expert, Dr. Taylor, only addressed literal infringement at trial. The court

found that Medtronic failed to present particularized testimony establishing that the

VectorVision and ExacTrac products are equivalent to the claimed product. As such,

the court determined that the jury’s verdict of noninfringement under the doctrine of




06-1289                                -10-
equivalents had to be set aside. Thus, viewing the evidence in a light most favorable to

Medtronic, we conclude that the court did not err in reaching its conclusion. Medtronic

fails to convince us otherwise. Accordingly, we affirm the court’s grant of judgment of

noninfringement as to the Heilbrun patents as a matter of law.

       We have considered all of the remaining arguments Medtronic raised in its briefs

and found none that justify a reversal. Having concluded that the district court properly

granted judgment as a matter of law in favor of BrainLab, we need not address the

issue of willful infringement. Accordingly, the district court’s decision is affirmed.




06-1289                                  -11-
