MicroAire Surgical Instruments, LLC v. Arthrex, Inc. (726 F. Supp. 2d 604, 2010)

United States District Court for the Western District of Virginia 2010-06-03

Citations

Full opinion text

MEMORANDUM OPINION

NORMAN K. MOON, District Judge.

This matter is before the Court upon the Plaintiff MicroAire Surgical Instruments LLC’s (“MicroAire”) Motion for Preliminary Injunction and Memorandum of Points and Authorities in Support of Motion for Preliminary Injunction (docket nos. 6, 7), Defendant Arthrex, Inc.’s (“Arthrex”) Opposition to MicroAire Surgical Instruments LLC’s Motion for Preliminary Injunction (docket no. 18), MicroAire’s Reply Brief on Motion for Preliminary Injunction (docket no. 23), and Arthrex’s Notice of Filing certain declarations in response thereto (docket no. 28). After full consideration of the arguments set forth therein, and presented at oral argument in this matter, for the following reasons, the Court will DENY the Plaintiffs Motion for Preliminary Injunction, in an accompanying Order, to follow.

The Court concludes, infra, that MicroAire has not established that it is likely to succeed on the merits. In particular, the disputed term “actuating means” is properly construed as disclaiming any claim to “actuating means” by which the blade of the surgical instrument moves distally (forward) relative to the body of the instrument during its elevation. The disputed term “essentially perpendicular” is properly construed as only reciting that the blade follows a path which is in essence at a right angle to the longitudinal axis of the instrument, and not a path which necessarily forms a right angle with the longitudinal axis. As Arthrex’s allegedly infringing surgical instrument employs “actuating means” by which the blade moves distally relative to its body during elevation (even though its blade follows a path which is in essence at a right angle to the instrument’s longitudinal axis) MicroAire has not established a claim of literal infringement of its patent, or infringement under the doctrine of equivalents. Furthermore, the Court concludes that MicroAire has not established that it is likely to suffer irreparable harm in the absence of preliminary relief, whether such harm is based upon the threatened loss of goodwill, irreversible price erosion in the market for this type of surgical instrument, or general decline in reputation of the surgical procedure at issue. Either MieroAire’s failure to establish a likelihood of success on the merits, or its failure to establish a likelihood of irreparable harm, by itself, would justify the Court’s denial of a preliminary injunction. Consideration of the remaining two factors the Court must consider in determining whether to issue a preliminary injunction, being the balance of equities and whether the injunction is in the public interest, do not compel a contrary result.

Accordingly, the Court will DENY MicroAire’s Motion for Preliminary Injunction, in an accompanying Order, to follow.

I. Background

MicroAire is a Delaware limited liability company that has its principal place of business in Charlottesville, which has been engaged in the business of manufacturing power-operated instruments for orthopedic surgery since 1977. On December 29, 1998, MicroAire acquired United States Patent No. 5,306,284 (“the '284 Patent”) in connection with the acquisition of a carpal tunnel release instrument from Minnesota Mining and Manufacturing Company (“3M”). This carpal tunnel release instrument is covered in the United States by the '284 Patent, and is currently being sold by MicroAire under its CTRS brand. The application for the '284 Patent was filed February 19, 1992, the Patent itself was issued April 26, 1994, and patent protection will expire February 19, 2012. The MicroAire CTRS product is a surgical instrument used for endoscopic carpal tunnel release surgery.

Carpal tunnel syndrome is a condition caused when the fibrous tissue surrounding one’s wrist becomes inflamed, and places chronic pressure on the median nerve. The median nerve passes through a tight space, known as the carpal tunnel, between one band of tissue (the transverse carpal ligament) and the wrist bone. The symptoms of carpal tunnel syndrome may begin gradually, with frequent burning, tingling, or itching numbness in the palm and fingers, but without treatment, may develop into pain, weakness, and the wasting away of muscles in the hand. One course of treatment for carpal tunnel syndrome is through a procedure known as carpal tunnel release, which involves severing the transverse carpal ligament in order to relieve pressure on the median nerve. This procedure can be accomplished by use of a surgical device attached to an endoscope, which is essentially a small tube with a camera attached. There are different techniques for endoscopic carpal tunnel release surgery, either by making a small incision in the wrist (the “single-portal” technique), or by making small incisions in the wrist and palm (the “two-portal” technique). Like other endoscopic surgical procedures, carpal tunnel release can provide a patient numerous advantages over traditional surgical procedures, as the incision required in the hand is much smaller, and consequently, the possibility of visible scarring also likely decreased.

The '284 Patent relates to a surgical instrument for “probing body cavities and manipulating tissue contained therein under continuous observation.” '284 Patent, col. 1, 11. 6-8. While the invention is susceptible to use in a variety of surgical procedures, it is “especially useful in surgical procedures for dividing the transverse carpal ligament (flexor retinaculum) in order to decompress the median nerve in the carpal tunnel,” i.e., endoscopic carpal tunnel release surgery. Id. at col. 3,11. 31-38. A graphical representation of the patented device, and specifically a side elevational cut-away view of one embodiment of its surgical probe, is set forth below. Id. at col. 2,11. 36-37.

The general operation of the surgical instrument claimed in the '284 Patent can be described in the following manner. The distal or forward end of this probe, identified as 12B in Figure 1, is inserted into the body cavity of the wrist of the patient undergoing endoscopic carpal tunnel release surgery, and this end is shaped so as to divert displaceable tissue it contacts away from the upper surface and lateral aperture, identified as 13, of said probe. Id. at col. 3, 11. 45-57. The cutting blade, identified as 14, is shown above in its retracted position, and so does not come into contact with body tissue when the instrument is inserted into the body cavity. The surgeon operating this instrument, by way of the optical viewing scope identified as 30 connected to a conventional video monitor (not shown) can position the probe precisely where desired before extending said cutting blade. Id. at col. 4, 11. 12-22. The probe housing and actuator arm 16 of this instrument are preferably made of durable plastic so it is economically disposable after use. Id. at col. 9,11. 3-5.

In the “Background of the Invention” section of the '284 Patent, incorporated by reference are several previously-issued patents, or prior art, United States Patent Nos. 4,962,770, 5,089,000, and particularly 4,963,147 (“the '147 Patent”), which describe an older model of surgical instrument used in endoscopic carpal tunnel release surgery. '284 Patent, col. 1, 11. 11-15. Both instruments were invented by John M. Agee and Francis King, although several additional persons were listed as inventors, and 3M listed as an additional assignee, of the '284 Patent. After this previous invention was inserted into the body cavity in the wrist during surgery, “the cutting blade is extended through a lateral aperture in the probe to a position adjacent the selected tissue.” Id. at col. 1, 11. 16-19. When the cutting blade in that previous invention so extended, “the distal portion of the blade sweeps through an arc to reach a fully extended position. Initially the distal tip of the blade moves toward the distal end of the probe and then moves upwardly to its fully extended position.” Id. at col. 1, 11. 24-28. The '284 Patent concludes its description of the previous invention by stating that “[tjhis forward movement of the tip of the blade can be undesirable because the tip of the blade can encounter tissue which is not intended to be cut,” and further, the “tip of the blade is not easily visible as it is being elevated.” Id. at col. 1,11. 28-32.

The trajectory of the cutting blade in the previous invention is depicted in Figures 8 and 10 of the '147 Patent. Figure 8 depicts a fragmentary view of the previous invention, showing the probe during extension of a cutting blade, and Figure 10 depicts an enlarged sectional view of the distal end of the probe, with the longitudinal axis of a cutting blade shown in positions respective to the actuation of the working tool extension shaft. '147 Patent, col. 4,11. 21-22, 26-30.

The specification of the '147 Patent recites that in Figure 10, one can see the extension of the blade member “rotating through an arc into a fully extended position.” Id. at col. 7,11. 1-7. Blade angle B in Figure 10 represents where “the point 54 and cutting blade 46 of blade member 48 project through lateral aperture 50 and above the boundary of upper surface 38 of probe 26.” Id. at col. 7,11. 11-14. Figure 10 corresponding to such language in the specification illustrates continued distal movement of said blade member between blade angle A, where the blade is in its retracted position, and blade angle C. Thereafter, Figure 10 illustrates proximal movement of the blade member (toward the point of origin of the instrument’s entry) between blade angle C and the point of full extension in blade angle E.

The '284 Patent contrasts the trajectory of its cutting blade during extension with that illustrated and described above in the '147 Patent. It is the significance of this

contrasting language with which the bulk of this Court’s opinion is concerned. In the section entitled “Summary of the Present Invention” of the '284 Patent specification, it states that the “present invention” has “provided improved surgical instruments” for this function, namely:

Means are provided for extending a cutting blade outwardly from the probe in a nearly vertical path. The blade remains within the field-of-view of the optical system at all times. Also, because the tip of the blade does not move distally as it is elevated, it does not encounter unintended tissue. Accordingly, use of the surgical instruments of this invention can be very safe, enabling greater control over movement of the blade out of the probe.

'284 Patent, col. 1,11. 39-47. Those figures in the '284 Patent clearly illustrating its claimed blade elevating means (or “actuating means”) are depicted below.

An employee for MicroAire with engineering responsibility for the CTRS instrument was able to examine Arthrex’s new Centerline endoscopic carpal tunnel release instrument at a September 2009 meeting of the American Society for Surgery of the Hand. Declaration of Kenneth M. Welborn of Nov. 30, 2009, at ¶ 6 (docket no. 7, ex. D) (hereinafter “First Welborn Declaration”). The Arthrex booth at this meeting was manned by Thomas Aust, previously an employee of Colson Europe B.V. (a MicroAire sister company) who had been involved with MicroAire’s CTRS product in Europe. Id. After inspection of Arthrex’s Centerline instrument, the MicroAire employee concluded that it was “positioned to be a direct substitute for MicroAire’s CTRS instrument.” Id. at ¶ 7. MicroAire argues that based upon the Welborn Declaration, it is apparent that Arthrex’s Centerline instrument possesses each and every one of the features claimed in Claim 37 of the '284 Patent. MicroAire’s Memorandum in Support, at 13-14. In the instant proceedings, Arthrex only disputes whether the Centerline instrument has the features claimed in limitation (d) of Claim 37, which claims “actuating means for extending said cutting blade outwardly from said probe in a manner such that said distal end portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing.” Arthrex’s Opposition, at 11-16 (citing '284 Patent, col. 14, 11. 57-61).

Subsequently, MicroAire came to the conclusion that Arthrex’s Centerline instrument infringed at least upon Claim 37 of the '284 Patent, and contacted Arthrex by letter. When MicroAire failed to receive a “substantive response” after six weeks, MicroAire filed suit alleging patent infringement and related torts under Virginia law. MicroAire now moves the Court for a preliminary injunction “to prohibit [Arthrex] from making, using or selling an infringing carpal tunnel release instrument.” MicroAire’s Memorandum in Support, at 2.

II. Applicable Law

The Court has jurisdiction over the instant action as it is one arising under an “Act of Congress relating to patents.” 28 U.S.C. § 1338(a); McCook Metals LLC v. Alcoa, Inc., 249 F.3d 330, 333 (4th Cir. 2001) (noting that Section 1338 “confers original jurisdiction over patent-related claims on district courts”).

Pursuant to 35 U.S.C. § 283, this Court “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” The purpose of a preliminary injunction “is to protect the status quo and to prevent irreparable harm during the pendency of a lawsuit ultimately to preserve the court’s ability to render a meaningful judgment on the merits.” In re Microsoft Corp. Antitrust Litig., 338 F.3d 517, 525 (4th Cir.2003). In the patent context, a preliminary injunction has a similarly conservatory function. See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1344-45 (Fed.Cir.2008) (stating that at the preliminary injunction stage, “before the issues of fact and law have been fully explored and finally resolved, the purpose of a preliminary injunction is merely to preserve the relative positions of the parties until a trial on the merits can be held”) (internal quotation marks omitted).

The Court applies the standard set forth by the Supreme Court in Winter v. Natural Resources Defense Council in determining whether preliminary injunctive relief is appropriate. 555 U.S. 7, 129 S.Ct. 365, 172 L.E.2d 249 (2008). The Fourth Circuit recently recognized that Winter was in “fatal tension” with circuit precedent governing the grant or denial of preliminary injunctions as articulated in Blackwelder Furniture Co. of Statesville v. Seilig Mfg. Co., 550 F.2d 189 (4th Cir. 1977), and therefore expressly adopted the Winter standard. Real Truth About Obama, Inc. v. Fed. Election Comm’n, 575 F.3d 342, 345-47 (4th Cir.2009); see also Holbrook v. University of Virginia, 706 F.Supp.2d 652, 653-54, 2010 WL 1417807, at *2 (W.D.Va.2010) (“In place of Black-welder, the Fourth Circuit has adopted the four-prong test articulated in Winter.”). This standard similarly governs the issuance of a preliminary injunction in the context of a suit by the patentee against an alleged infringer for patent infringement. See e.g., Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375-76 (Fed.Cir.2009) (applying the Winter factors, which the court characterizes as being of “longstanding and universal applicability”); PRE Holding, Inc. v. Monaghan Med. Corp., No. 3:09-cv-458, 2009 WL 3874171, at *1 (E.D.Va. Nov. 19, 2009) (stating, with regard to a motion for preliminary injunctive relief in a patent infringement suit, that “[ojbviously, [the Winter ] standard governs the case at hand”). Consistent with the application of the Winter standard, the law of the Federal Circuit further governs the issuance of a preliminary injunction in patent cases. Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1451 n. 12 (Fed.Cir.1988); Mike’s Train House, Inc. v. Broadway Ltd. Imports, LLC, 708 F.Supp.2d 527, 531-32, 2010 WL 1731677, at *2 (D.Md. Apr. 29, 2010). However, for those “procedural issues not affecting substantive patent law principles, ... the law of the regional circuit where the case was tried,” which is that of the Fourth Circuit, is the governing law. In re Cygnus Telecomm. Tech., LLC, Patent Litig., 536 F.3d 1343, 1351-52 (Fed. Cir.2008); see also Reynolds & Reynolds Holdings, Inc. v. Data Supplies, Inc., 301 F.Supp.2d 545, 549 (E.D.Va.2004) (noting that in patent cases filed in Virginia, “Federal Circuit law governs substantive issues, and the law of the Fourth Circuit applies to procedural matters that are not unique to patent law”).

To obtain a preliminary injunction, the plaintiff “must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Winter, 129 S.Ct. at 374. A preliminary injunction is “an extraordinary remedy never awarded as of right,” id. at 376 (citing Munaf v. Geren, 553 U.S. 674, 128 S.Ct. 2207, 2219, 171 L.Ed.2d 1 (2008)), and it “involvefs] the exercise of very far-reaching power to be granted only sparingly and in limited circumstances.” MicroStrategy Inc. v. Motorola, Inc., 245 F.3d 335, 339 (4th Cir.2001) (citing Direx Israel Ltd. v. Breakthrough Med. Corp., 952 F.2d 802, 816 (4th Cir.1991)); see also Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1324 (Fed.Cir.2004) (citing Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568 (Fed.Cir.1993)) (“A preliminary injunction is a ‘drastic and extraordinary remedy that is not to be routinely granted.’ ”). The movant has the burden of showing entitlement to a preliminary injunction. See Reebok Intern., Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555 (Fed. Cir.1994) (citing H.H. Robertson Co. v. United Steel Deck, Inc., 820 F.2d 384, 388 (Fed.Cir.1987)). While the Court must weigh all the aforementioned factors, Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1219 (Fed.Cir.1996), the first two factors in this inquiry (i.e., the likelihood of success and irreparable harm factors) are “[cjentral to the movant’s burden,” and the Court “may decline to issue a preliminary injunction if the movant does not prove either of these factors.” Jeneric/Pentron, Inc. v. Dillon Co., Inc., 205 F.3d 1377, 1380 (Fed.Cir.2000); see also Vehicular Techs. Corp. v. Titan Wheel Int'l Inc., 141 F.3d 1084, 1088 (Fed.Cir. 1998) (holding that the movant “had to establish both of the first two factors, i.e., likelihood of success and irreparable harm, to receive a preliminary injunction”).

The Court will address each of the above-cited factors required pursuant to Winter for the issuance of a preliminary injunction, in turn.

III. Discussion

A. Likelihood of Success on the Merits

First, as the movant for a preliminary injunction, MicroAire must establish that it is “likely to succeed on the merits.” Winter, 129 S.Ct. at 374. In a patent infringement case, this means that MicroAire must show, in light of the presumptions and burdens that will inhere at trial on the merits, that: (1) MicroAire, as the patentee, will likely prove that its competitor, Arthrex, infringes upon the '284 Patent; and (2) MicroAire’s infringement claim will likely withstand Arthrex’s challenges to the validity and enforceability of the '284 Patent. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed.Cir.2001); see also Erico Intern. Corp. v. Vutec Corp., 516 F.3d 1350, 1354 (Fed.Cir.2008) (stating that to meet this factor, the patentee “must show a likelihood that [the defendant] infringes a valid claim” of the patent, while the defendant “must show a substantial question of invalidity to avoid a showing of likelihood of success”). MicroAire need only show that one claim to the '284 Patent has been infringed to establish that it is likely to succeed on the merits. See Panduit Corp. v. Dennison Mfg. Co., Inc., 836 F.2d 1329, 1330 n. 1 (Fed.Cir.1987) (“One is liable for patent infringement if one claim be infringed.”).

The Court’s determination on the likelihood of infringement involves a two-step analysis. At step one, claim construction, the Court assesses the scope and meaning of the patent claims asserted. Oakley, Inc. v. Sunglass Hut Intern., 316 F.3d 1331, 1339 (Fed.Cir.2003) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc)). At step two, the Court compares the construed patent claims to the allegedly infringing device, and must find that every claim limitation, or its equivalent, is found in the accused device. Oakley, Inc., 316 F.3d at 1339 (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)). To prove literal infringement, MicroAire must show “that the accused device contains each limitation of the asserted claim.” Catalina Marketing Int'l Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed.Cir. 2002). If MicroAire is unable to prove literal infringement, “a product or process ... may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention,” PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1367 (Fed.Cir.2007), that is, if MicroAire can show “that the accused device contains an equivalent for each limitation not literally satisfied,” Down Equip. Co. v. Kentucky Farms, 140 F.3d 1009, 1015 (Fed.Cir.1998). Claim construction is a question of law, Cybor, 138 F.3d at 1456, whereas the Court’s comparison of the patent claims to the allegedly infringing device is a question of fact. Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 906 (Fed.Cir.2005).

MicroAire argues that Arthrex’s Center-line carpal tunnel release instrument specifically infringes Claim 37 of the '284 Patent, which covers the following:

37. A disposable probe for use in a surgical instrument for manipulating selected tissue in a body cavity under visual observation, said probe comprising:

(a) an elongated tubular housing having proximal and distal ends; wherein said distal end is generally closed; wherein said housing includes an upper surface having a lateral aperture in said upper surface adjacent said closed distal end; wherein said distal end slopes away from said upper surface in a manner such that said distal end diverts displaceable tissue it contacts away from the region of said lateral aperture and said upper surface;

(b) an elongated cavity extending longitudinally through said housing for accepting an optical system;

(c) a working tool comprising a blade means mounted within the housing adjacent said lateral aperture and including a cutting blade capable of dividing selected tissue; wherein said cutting blade includes a distal end portion;

(d)actuating means for extending said cutting blade outwardly from said probe in a manner such that said distal end portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing.

'284 Patent, col. 14,11. 37-61.

The parties dispute the proper construction of limitation (d) of Claim 37 of the '284 Patent. The proposed constructions of this phrase by MicroAire and Arthrex are set forth below._

Microaire’s Proposed

Claim 37, Limitation (d): “actuating means for extending said cutting blade outwardly from said probe in a manner such that said portion away from the point of origin of said cutting blade follows a path which meets the lengthwise axis of said housing at what is in essence a right

Arthrex’s Proposed

Claim 37, Limitation (d): “in a manner such that the tip of the cutting blade follows a path which necessarily forms a right angle with the longitudinal axis of said housing and does not move distally (forward) relative to the probe during elevation.”

1. General Claim Construction Principles

The patentee may exercise the right to exclude, and “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005) (en banc) (emphasis added). The patentee must “define precisely what his invention is,” because it would be “unjust to the public, as well as an evasion of the law, to construe [the patent] in a manner different from the plain import of its terms.” Id. (quoting White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed. 303 (1886)).

Therefore, the Court begins its claims construction analysis with the words of the claim. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). The words of a claim are given their ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1142 (Fed.Cir.2005) (citing Phillips, 415 F.3d at 1313). This person of ordinary skill in the art is not deemed to read the disputed claim term in isolation, but instead “views the claim term in light of the entire intrinsic record,” Nystrom, 424 F.3d at 1142, i.e., “in the context of the entire patent, including the specification.” Conoco, Inc. v. Energy & Envt'l. Int'l, L.C., 460 F.3d 1349, 1357 (Fed.Cir.2006) (quoting Phillips, 415 F.3d at 1313). The specification is required to provide a written description of the invention in “full, clear, concise, and exact terms,” 35 U.S.C. § 112, and the patentee may satisfy this requirement by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.” Regents of University of California v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.Cir.1997). On questions of claim construction, “[u]sually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582).

The following principles of claim construction are of particular importance to the instant case: (1) where the specification “may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” it is “the inventor’s lexicography” that governs, Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002)); and (2) where the specification “may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor,” again, “the inventor’s intention, as expressed in the specification, is regarded as dispositive,” id. at 1316 (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed.Cir.2001)).

Next, the patent’s prosecution history, as part of the “intrinsic record,” should also be considered by the Court when construing a claim. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed.Cir.1995) (en banc). This consists of the complete record of proceedings before the Patent and Trademark Office, and includes prior art cited in the patent examination. Phillips, 415 F.3d at 1317. The patent prosecution history “often lacks the clarity of the specification and thus is less useful for claim construction purposes,” id., however, it is still “often of critical significance in determining the meaning of the claims.” Vitronics, 90 F.3d at 1582.

Generally, the Court will be able to resolve any ambiguity in a disputed claim term by considering the intrinsic record, in which case, “it is improper to rely upon extrinsic evidence.” Vitronics, 90 F.3d at 1583; see also Pickholtz v. Rainbow Techs., Inc., 284 F.3d 1365,1372-73 (Fed.Cir.2002) (“Only if a disputed claim term remains ambiguous after analysis of the intrinsic evidence should the court rely on extrinsic evidence.”). Dictionaries, treatises, and other types of extrinsic evidence, while considered to be “less reliable than the patent and its prosecution history in determining how to read claim terms,” Phillips, 415 F.3d at 1318, are still “an available resource” and are “often useful” to claim construction. Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed.Cir.2000).

2. Means-Plus-Function Limitation

The first question the Court must address is whether limitation (d) of Claim 37 can be accurately characterized as a means-plus-function limitation, which would invoke the provisions of 35 U.S.C. § 112, ¶ 6. A means-plus-function limitation is one which allows the patentee “to recite a function to be performed as a claim limitation rather than reciting structure or materials for performing the function.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed.Cir.2003). Whether limitation (d) of Claim 37 falls within the strictures of § 112, ¶ 6 is of critical importance to the Court’s claim construction analysis. Section 112, ¶ 6 “operates to restrict claim limitations drafted in such functional language to those structures, materials or acts disclosed in the specification (and their equivalents) that perform the claimed function.” Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed.Cir.1998); see also CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed.Cir.2002) (“A claim using that format will cover only the corresponding step or structure disclosed in the written description, as well as that step or structure’s equivalents.”). Where a limitation is not governed by § 112, ¶ 6, “this court construes the claims with standard claim construction rules. Thus, for instance, the specification informs but does not control, the claim construction.” Envino Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed.Cir.2000).

MicroAire argues that limitation (d) of Claim 37 is in means-plus-function form. First, it asserts that the “actuating means used in [Arthrex’s] Centerline product is ‘is [sic] virtually identical to the mechanism shown in Figures 18 and 19 of U.S. Patent No. 5,306,284.” MicroAire has found no reported case “applying the doctrine of prosecution disclaimer,” as Arthrex attempts to do, “to a case of literal infringement of a means-plus-function claim where ... the accused device employs a structure expressly disclosed in the specification of the patent in question.” MicroAire’s Reply Brief, at 6. Accordingly, MicroAire concludes that there has not been any prosecution disclaimer, because this doctrine requires disclaimer to be unambiguous. Second, it asserts that Arthrex’s proposed claim construction should be rejected because it allegedly construes limitation (d) in a manner that ignores the key term “actuating means.” MicroAire’s Reply Brief, at 8. After providing a definition for the means-plus-function form, MicroAire states that the specification of the '284 Patent “describes four structures by which the function of the ‘actuating means ... ’ may be performed,” found in Figures 12 — 19, and in the figures’ accompanying descriptions. MicroAire’s Reply Brief, at 8-9. As Arthrex has allegedly excluded the structures shown in Figures 18 and 19 in its proposed claim construction, MicroAire argues that such a construction should be rejected. MicroAire’s Reply Brief, at 9.

The use of the word “means” “triggers a presumption that the inventor used this term advisedly to invoke the statutory mandate for means-plus-function clauses.” Allen Eng’g Corp. v. Bartell Indus. Inc., 299 F.3d 1336, 1347 (Fed.Cir. 2002) (quoting York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed.Cir.1996)). Limitation (d) of Claim 37 is therefore presumed to be a means-plus-function clause and fall within § 112, ¶ 6, because it uses the words, “actuating means for extending said cutting blade outwardly[.]” (Emphasis added). However, the inventor’s use of the word “means” does not conclude the Court’s inquiry. The presumption may be overcome either where a claim element “uses the word ‘means’ but recites no function corresponding to the means,” or, importantly in the instant case, where “the claim element specifies a function,” but “it also recites sufficient structure or material for performing that function.” Allen Eng’g, 299 F.3d at 1347. Therefore, the use of the word ‘means’ will not transform every limitation into a means-plus-function limitation. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir.1996).

Claim 37, limitation (d), provides for “actuating means for extending said cutting blade outwardly from said probe in a manner such that said distal portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing.” In this case, the patentee has not recited sufficient structure to overcome the presumption that it is a means-plus-funetion limitation. While there is some specificity in limitation (d) concerning the trajectory of the cutting blade’s extension from the housing, and the location from which the cutting blade is to be extended, there is no structural description of the “actuating means” itself contained within the claim. Sufficient description of the structure of the “means” is required to overcome the means-plus-function presumption. Compare TI Group Auto. Sys. (N. Am.), Inc. v. VDO N. Am., LLC, 375 F.3d 1126, 1135 (Fed.Cir.2004) (means-plus-function presumption overcome where claim limitation for “pumping means” recited its structure, “a nozzle and a venturi tube in alignment with the nozzle,” location, “being located within the reservoir in the region of the opening,” and method of operation); Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 1149 (Fed.Cir.2004) (means-plus-function presumption overcome where claim limitation specifically set forth the structure that performs the claimed function, by reciting “said actuation means including first and second pivot connections respectively between said first and second tension bail legs and a midpoint on said respective first and second extension bail legs”), with Omega Eng’g, 334 F.3d at 1321 (holding that claim was in means-plus-function format where it recited “means for causing said at least one laser beam to strike the periphery of the energy zone for visibly outlining said entire energy zone”). The Court finds that limitation (d) of Claim 37 does not contain adequate recitation of the structure of “actuating means” to overcome the presumption that it is in means-plus-function format, and, there being no arguments presented by the parties to the contrary, the Court concludes that this is a means-plus-function limitation, governed by 35 U.S.C. § 112, ¶ 6.

3. Means-Plus-Function Claim Construction

Having concluded that the contested limitation is in means-plus-function format, the Court engages in a unique two-step claim construction analysis, informed, of course, by the aforementioned general principles of claim construction. With this type of claim limitation, the Court first “must identify the claimed function ... staying true to the claim language and the limitations expressly recited by the claims.” Omega Eng’g, 334 F.3d at 1321. When the Court construes the functional statement in a means-plus-function limitation, it “must take great care not to impermissibly limit the function by adopting a function different from that explicitly recited in the claim.” Generation II Orthotics, Inc. v. Med. Tech., Inc., 263 F.3d 1356, 1364-65 (Fed.Cir.2001). “Ordinary principles of claim construction govern interpretation of the claim language used to describe the function.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002). The second step in this claim construction analysis is for the Court to “ascertain the corresponding structures in the written description that perform those functions.” Omega Eng’g, 334 F.3d at 1321 (citing St. Jude Med., 296 F.3d at 1113). A disclosed structure is defined as corresponding “only if the specification or the prosecution history clearly links or associates that structure to the function recited in the claim.” Omega Eng’g, 334 F.3d at 1321 (quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997)).

i. Parties’ Contentions

The Court notes at the outset of its claim construction inquiry that the parties do not appear to be in complete agreement regarding which claim terms are in dispute. Both parties have submitted proposed constructions concerning Claim 37, limitation (d). However, MicroAire argues that the claim term specifically in dispute is “actuating means,” and it proceeds to state that Arthrex’s competing proposed construction of Claim 37 “omits” and “ignores” “the critical language ‘actuating means’ for extending said cutting blade outwardly from said probe.... ” MicroAge's Reply, at 6, 8. By contrast, Arthrex focuses its energies in its claim construction arguments upon the proper construction of the term “essentially perpendicular.” Arthrex’s Opposition, at 10-13. Indeed, as MicroAire suggested, Arthrex does not even include the language “actuating means for extending said cutting blade outwardly from said probe” in its proposed claim construction. Arthrex’s Opposition, at 11. Accordingly, in the event that there is disagreement between the parties as to which claim terms are in dispute, the Court will construe the terms “essentially perpendicular” and “actuating means” found in Claim 37.

Arthrex contends that á proper construction of limitation (d), which claims “actuating means for extending said cutting blade outwardly from said probe in a manner such that said distal end portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing,” should contain the additional limitations that “the cutting blade follows a path which necessarily forms a right angle with the longitudinal axis of said housing and does not move distally (forward) relative to the probe during elevation.” Arthrex’s Opposition, at 11. According to Arthrex, the prosecution history of the '284 Patent compels this construction of the term, “essentially perpendicular.” Arthrex contends that the patentee has “unequivocally disavowed a certain meaning to obtain his patent,” and therefore, “the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim.” Arthrex’s Opposition, at 8.

In support of its proposed claim construction, Arthrex makes reference to the specification and prosecution history of the '284 Patent. See Arthrex’s Opposition, at 4-6, 11-12. Specifically, Arthrex cites the fact that when the patent examiner conducted a prior art search of Original Claim 49 (now Claim 37), it was rejected under 35 U.S.C. § 102(b) because the examiner found the claim “as being clearly anticipated by Agee et al '147,” which was the patentee’s previous Patent '147. Arthrex’s Opposition, at 5. In response to this rejection, Arthrex argues that the patentee sought to define the claimed invention over the '147 Patent. The patentee allegedly attempted to narrow the definition of “essentially perpendicular,” by stating that “the instrument of the present invention provides for elevation of the cutting blade along a path which is essentially perpendicular to the longitudinal axis of the probe. In other words, in the present invention the tip of the cutting blade does not move distally [toward the tip of the probe] relative to the probe during elevation.” Arthrex’s Opposition, at 5, 11-12 (citing Applicant’s Amendment of Apr. 23, 1993 (docket no. 7, ex. E9, at 22)) (hereinafter “Applicant’s Amendment”) (emphasis added). Arthrex contends that in reliance upon this distinction, the patent examiner allowed the application to be issued as the '284 Patent. Arthrex’s Opposition, at 6 (citing Notice of Allowability of Aug. 10, 1993 (docket no. 7, ex. E19)) (hereinafter “Notice of Allowability”). Therefore, Arthrex concludes that a proper construction of “essentially perpendicular” in Claim 37 is one which “necessarily forms a right angle with the longitudinal axis of said housing and does not move distally (forward) relative to the probe during elevation.” Arthrex’s Opposition, at 11.

In reply, MicroAire argues first that there has been no prosecution disclaimer in this case, as, in effect, Arthrex has been unable to show a disavowing statement by the patentee that is “so clear as to show reasonable clarity and deliberateness.” MicroAire’s Reply, at 3 (citing University of Pittsburgh v. Hedrick, 573 F.3d 1290, 1296 (Fed.Cir.2009)). Specifically, MicroAire points to the fact that the language of Original Claim 49 (now Claim 37) was not amended or withdrawn in response to the patent examiner’s rejection. MicroAire’s Reply, at 5. The remarks identified by Arthrex in the prosecution history are alleged not to have any significance beyond a mere explanation of differences between the previous '147 Patent and the '284 Patent, which had had been set forth already in the Application for said Patent. MicroAire’s Reply, at 6 (citing Application for Patent of Feb. 19, 1992, at 1-2) (docket no. 7, ex. El) (hereinafter “Patent Application”). Furthermore, MicroAire argues that the “actuating means used in [Arthrex’s] Centerline product is virtually identical to the mechanism shown in Figures 18 and 19” of the '284 Patent.” MicroAire’s Reply, at 7. It contends that the doctrine of prosecution disclaimer does not apply where the allegedly infringing product is “virtually identical” to a figure in the patent, as such figures, and their descriptions, are expressly incorporated into the claim term where said term is in means-plus-function format. MicroAire’s Reply, at 7. Accordingly, MicroAire argues that Arthrex’s proposed claim construction should be rejected because it excludes the structure shown in Figures 18 and 19, and therefore “fails to comport with” the requirements of § 112, ¶ 6 of the Patent Act. MicroAire’s Reply, at 9.

ii. The Claimed Function:

Distal Movement

After consideration of the parties’ contentions and in accordance with the aforementioned principles of claim construction, the Court finds that the claimed function of the disputed term, “actuating means” is for “extending said cutting blade outwardly from said probe in a manner such that said distal end portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing, and does not move distally relative to the probe during elevation.”

In reaching this conclusion, the Court has taken heed of the cautionary language of the Federal Circuit that this Court “must take great care not to impermissibly limit the function by adopting a function different from that expressly recited in the claim.” Omega Eng’g, 334 F.3d at 1322 (citing Generation II Orthotics, 263 F.3d at 1364-65). In a similar vein, the Court recognizes that “[c]laim terms are entitled to a ‘heavy presumption’ that they carry their ordinary and customary meaning to those skilled in the art in light of the claim term’s usage in the patent specification.” Elbex Video, Ltd. v. Sensormatic Electronics Corp., 508 F.3d 1366, 1371 (Fed.Cir. 2007) (applying this presumption to construction of the claimed function of a means-plus-function limitation).

The Court’s construction of the functional statement of Claim 37 is compelled by the doctrine of prosecution disclaimer, as well as by the express language in the specification and the figures' of the '284 Patent, which are incorporated into this means-plus-function claim.

The Court is to “indulge” this “heavy presumption” that the claim terms carry their ordinary and customary meaning “unless the patentee unequivocally imparted a novel meaning to those terms or expressly relinquished claim scope during prosecution.” Omega Eng’g, 334 F.3d at 1323 (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325-26 (Fed.Cir. 2002)) (emphasis added); see also Cyber Corp., 138 F.3d at 1457 (stating that a patent’s prosecution history “is relevant to the construction of a claim written in means-plus-function form”). The doctrine of prosecution disclaimer is “well established in Supreme Court precedent, precluding patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution,” and accordingly, the Federal Circuit “adopted that doctrine as a fundamental precept in [its] claim construction jurisprudence.” Id. (collecting cases). Prosecution disclaimer attaches and narrows the ordinary meaning of a claim, congruent with the scope of surrender, where the patentee has unambiguously disavowed a certain meaning of said claim to obtain his patent. See e.g., Elbex Video, 508 F.3d at 1371; Omega Eng’g, 334 F.3d at 1324.

The prosecution history of the '284 Patent is replete with indicia that the patentee intended to disavow any claim to “actuating means ...” that functioned to extend the cutting blade outwardly from the probe in a manner that moved distally relative to the probe during elevation. In the Application for this Patent, the applicant clearly distinguished the present invention from the prior '147 Patent on this very ground, by using the following language in the specification.

Background of the Invention

U.S. Patents 4,963,147 ... incorporated herein by reference, describe^] a surgical instrument which is very useful in techniques for carpal tunnel released]

In the surgical instrument just described the cutting blade extends through an axially fixed rotatable pivot pin. As an actuation shaft urges the cutting blade through the pivot pin, the distal end portion of the blade sweeps through an arc to reach a fully extended position. Initially the distal tip of the blade moves toward the distal end of the probe and then moves upwardly to its fully extended position. This forward movement of the tip of the blade can be undesirable because the tip can encounter tissue which is not intended to be cut. Also, the tip of the blade is not easily visible as it is being elevated.

Summary of the Present Invention

In accordance with the present invention there are provided improved surgical instruments for manipulating selected tissue in a body cavity under visual inspection. The instruments comprise blade means mounted within an elongated probe. Means are provided for extending a cutting blade outwardly from the probe in a nearly vertical path. The blade remains within the field-of-view of the optical system at all times. Also, because the tip of the blade does not move distally as it is elevated, it does not encounter unintended tissue. Accordingly, use of the surgical instruments of this invention can be very safe, enabling greater control over movement of the blade out of the probe.

Patent Application, p. 1, 11. 7-10, 17-36, p. 2,11.1-4 (emphasis added).

In the Application, the language of Original Claim 49 (now Claim 37) similarly provided for “actuating means for extending said cutting blade outwardly from said probe in a manner such that said distal end portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing.” Patent Application, cl. 49,11. 20-24. As the Court has concluded infra, in Section 111(A)(2), that identical language in the '284 Patent constitutes a means-plus-function limitation, so too would Original Claim 49 of the Application have incorporated the above — cited language distinguishing the prior art. See 35 U.S.C. § 112, ¶ 6 (stating that means-plus-function limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof”).

Pursuant to 35 U.S.C. § 102(b), the patent examiner rejected Original Claim 49, among others, as being “clearly anticipated by Agee et al '147,” which was the applicant’s previous '147 Patent. In response thereto, the applicant sought to amend the Application, and specifically with respect to the rejection of Original Claim 49 (now Claim 37), the applicant argued as follows:

The claims in issue include the recitation that the cutting blade is extended outwardly from the probe in a manner such that the distal end portion of the cutting blade “follows a path which is essentially perpendicular to the longitudinal axis of the probe”. This feature is not described or shown in the cited reference relied upon by the Examiner. As is apparent from Figures 7 and 8 of the cited references (Agee '147), the blade 48 is attached at its proximal end to shaft 42, and the blade extends through the slot in pivot 64. In order to elevate the blade, the shaft 42 is urged toward the distal end of the probe. This causes the blade to move through the slot in the pivot in a distal direction. Then with continued movement of the shaft U2 the blade begins to move upwardly. Thus, the tip of the blade passes through an arc in order to reach its fully-elevated position shown in Figure 8. Because the pivot 61 is in a stationary position relative to the axis of the probe, movement of the shaft 12 toward the distal end of the probe necessarily causes the tip of the blade to initially move in a distal direction relative to the probe before the blade proceeds to its fully-elevated position.

In contrast to that operation, the instrument of the present invention provides for elevation of the cutting blade along a path which is essentially perpendicular to the longitudinal axis of the probe. In other words, in the present invention the tip of the cutting blade does not move distally relative to the probe during elevation. This is very significant because it enables the surgeon to accurately position the probe in a body cavity so that when the blade is elevated it is located precisely where it is needed. If the tip of the blade extends distally relative to the probe when it is being elevat ed, it could inadvertently contact body tissue which is not desired to be cut. In view of the foregoing, the Section 102 rejection is unsound and should be withdrawn. The cited reference does not describe every feature of the claims in issue.

Applicant’s Amendment, at 22-23 (emphasis added). Thereafter, on August 10, 1993, the patent examiner issued a “Notice of Allowability,” which was “responsive to” the Applicant’s Amendment, and which held all the claims to be allowable and closed patent prosecution.

The aforementioned language cited in the Patent Application was thus included in the specification of the '284 Patent, without amendment. '284 Patent, col. 1,11. 10-14, 21-47. Similarly, the language of Claim 37 was included in the '284 Patent from Original Claim 49 of the Patent Application, without amendment. '284 Patent, col. 14, 11. 37-61. Furthermore, the specification of the '284 Patent recites that “[ojther embodiments of surgical instruments are also provided in which the blade is elevated from the probe in a manner such that the tip of the blade does not move distally relative to the probe.” Id., col. 2,11. 15-18 (emphasis added).

The inescapable conclusion from the prosecution history of the '284 Patent, and specifically with reference to the cited portions of the Patent Application, the Amendment, and ultimately the specification and figures of the '284 Patent, is that the patentee unambiguously and unequivocally disavowed any claim to “actuating means ...” by which the cutting blade followed a trajectory which moved distally relative to the probe.

The Court finds that the substantial weight of authority supports this conclusion. The rule is that “explicit statements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of a claim.” Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed.Cir.1998) (citing Southwall Techs. Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.Cir.1995)). This is because, “[b]y distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover.” Id. at 1378-79 (citing Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed.Cir.1997)). The public has a right to rely upon such definitive statements made by the applicant during patent prosecution. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed.Cir.1998).

In particular, the Court finds the Sign-tech v. Vutek case in the Federal Circuit to be highly relevant to the present circumstances. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352 (Fed.Cir.1999). In that case, Signtech sued Vutek for infringement of United States Patent No. 5,376,957 (“the '957 Patent”), which relates to inkjet printers for printing large signs. The '957 Patent disclosed an inkjet printer with an improved ink sprayhead design, namely in that it printed an image and its mirror image on opposite sides of a substrate. To accomplish this, the claimed design of the '957 Patent featured two air sources: “one pressurized air source to control ink delivery onto the substrate and a second low-volume, high pressure air source to continuously clean the ink nozzle during printing.” Id. at 1354. The dual-sided printing process and the dual air source ink sprayhead were novel features of the '957 Patent. The '957 Patent stated that the prior art, and specifically United States Patent No. 4,914,522 (“the '522 Patent”), owned by Vutek, was “incapable of producing an enlarged image having the desired color scheme because it lacks this second, high pressure air source.’’ Id. (emphasis added) (internal quotation marks omitted). The allegedly infringing printers made by Vutek used ink spray-heads identical to those embodied in the '522 patent, and only contained a single air source. Id. at 1355. As in the instant case, the court in Signtech was presented with a question of the proper construction of the “ink delivery means” limitation, which the court found was in means-plus-function form. Id. at 1356. Also, as in the instant case, the '957 Patent’s “background and summary of the invention sections of the specification [ ] describe[d] the improvements of the ink delivery means of this invention over the prior art (including the accused ink delivery structure of Vutek’s '522 patent).” Id. at 1356-57. The court characterized the ink delivery structure described in the '522 Patent as one which was “explicitly distinguished by the '957 patent.” Id. at 1357. The Signtech court held that: “[b]y choosing means-plus-function language to recite the ‘ink delivery means’ element, the patentee necessarily restricted the scope of this element to the structure disclosed in the specification and its equivalents. Furthermore, by stating that the accused device was ‘incapable’ of achieving the desired results of the invention, the patentee expressly excluded it as an equivalent of the disclosed structure.” Id.

The '284 Patent at issue in this case similarly attempts to distinguish the prior art (and specifically the '147 Patent) by language included in the “Background of the Invention” and “Summary of the Present Invention” sections of the specification, and such language is similarly incorporated into Claim 37, as it is a means-plus-function limitation. The '284 Patent recites a structural difference between the patents as well, which was that in the prior '147 Patent, “[i]nitially the distal tip of the blade moves toward the distal end of the probe and then moves upwardly to its fully extended position,” whereas in the '284 Patent, it recited that “[mjeans are provided for extending a cutting blade outwardly from the probe in a nearly vertical path,” and that “the tip of the blade does not move distally as it is elevated[.]” '284 Patent, col. 1,11. 26-28, 39-41, 43-44. This structural difference was not merely superficial, but was characterized by the patentee as “very significant” during patent prosecution in an attempt to secure the '284 Patent. As in Signtech, the patentee recited in the patent several ways in which, due to this structural difference, the prior art could not achieve the desired results of the newer invention. First, the '284 Patent focused upon the accuracy with which the blade connects with the desired tissue. Whereas for the older '147 Patent, it was recited that “[t]his forward movement of the tip of the blade can be undesirable because the tip can encounter tissue which is not intended to be cut,” for the '284 Patent, it was recited that “because the tip of the blade does not move distally as it is elevated, it does not encounter unintended tissue,” and it “enable[s] greater control over movement of the blade out of the probe.” Id., col. 1, 11. 28-31, 43^44, 46-47. Second, the '284 Patent focused upon the visibility of the blade to the surgeon upon extension. Whereas for the older '147 Patent, it was recited that “the tip of the blade is not easily visible as it is being elevated,” for the '284 Patent, it was recited that “[t]he blade remains within the field-of-view of the optical system at all times.” Id., col. 1,11. 31-32, 41-42. As the circumstances under which the court in Signtech found that the patentee had explicitly disavowed a prior art structure are very similar to those presently at issue, the Court is particularly guided by this authority in addition to the aforementioned general principles of claim construction.

However, other authorities support the Court’s holding that the claimed function of the disputed term, “actuating means” is for “extending said cutting blade outwardly from said probe in a manner such that said distal end portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing, and does not move distally relative to the probe during elevation.” In Ballard Medical Products, the court was presented with a question of claim construction of a means-plus-function limitation, and specifically whether in the course of patent prosecution, the applicant had disavowed certain structures by characterizing them as falling outside the scope of his invention. Ballard Med. Prods, v. Allegiance Healthcare Corp., 268 F.8d 1352, 1359 (Fed.Cir.2001). Ballard Medical Products brought suit against the defendants, alleging infringement of multiple claims of two of its patents that related to ventilating and aspirating tracheobronchial catheters. In response, the defendants argued that their allegedly infringing structures fell outside the scope of Ballard’s patents based upon an amendment and affidavit offered to the patent examiner during prosecution. Therein, the applicant had claimed, inter alia, that “the prior art valves were ‘pressure valves,’ while the valve disclosed and claimed in the [ ] application was a ‘vacuum valve.’ ” Id. at 1359. The applicant then had recited the structural difference between the prior art pressure valves and his disclosed vacuum valve. Further, he stated the practical significance thereof by claiming that the former “would seal if vacuum pressure were applied to one end of the catheter, but would tend to open or leak if vacuum pressure were applied to the opposite end,” whereas for the latter (his vacuum valve mechanism), it “was not affected by pressure through the catheter from either direction.” Id. at 1360. The court in Ballard Medical concluded that the applicant’s “statements identifying his invention as a vacuum valve ... had the effect of disclaiming pressure valves.” Id. at 1361. The court concluded that “[b]ecause the patentee explicitly represented during prosecution that his claims differed from structures in the prior art, [it] construe[d] the disputed claims to exclude the disclaimed structures,” and thereupon upheld the district court’s summary judgment of noninfringement. Id. at 1363.

In light of these principles, the Court construes the claimed function of the disputed term, “actuating means ...” is for “extending said cutting blade outwardly from said probe in a manner such that said distal end portion of said cutting blade follows a path which is essentially perpendicular to the longitudinal axis of said housing, and does not move distally relative to the probe during elevation.”

iii. The Claimed Function: