IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF CONNECTICUT

)

TYCO HEALTHCARE GROUP LP )

d/b/a UNITED STATES SURGICAL, )

a division of TYCO HEALTHCARE )

GROUP LP )

)

Plaintiff–Counterclaim Defendant, ) Civil Action No. 3:04-CV-1702-JBA

)

v. )

)

ETHICON ENDO-SURGERY, INC. )

)

Defendant–Counterclaimant. )

)

Declaration of Dr. William Durfee

1  Introduction

  1. I have been retained by counsel for United States Surgical, a division of Tyco Healthcare Group (“U.S. Surgical”), to provide a report with my opinions on the interpretations of certain terms, phrases or clauses that appear in the claims of U.S. Patents Nos. 6,063,050 (“the ’050 patent”), 6,468,286 (“the ’286 patent”) and 6,682,544 (“the ’544 patent”).

2  Background

  1. I am a Professor in the Department of Mechanical Engineering at the University of Minnesota, Twin Cities. I am also the Director of Design Education for this Department.
  1. I obtained a Ph.D. in Mechanical Engineering from the Massachusetts Institute of Technology in 1985, a M.S. in Mechanical Engineering from the Massachusetts Institute of Technology in 1981, and an A.B. in Engineering and Applied Physics from Harvard University in 1976.
  1. I teach, conduct research, and publish in the area of mechanical design and medical devices.
  1. I am an inventor for three U.S. patents, two of which are for medical devices.
  1. I collaborate professionally with colleagues in the Department of Urologic Surgery at the University of Minnesota on the design and evaluation of surgical tools. I have taken courses in small animal surgery and in endourology and urologic laparoscopy, and I was the lead researcher on several projects that used live animal models for which I was the lead surgeon. I have worked with several companies on the design of medical devices.
  1. A copy of my current professional resume, listing my publications, teaching experience, and consulting work is attached as Exhibit 1.
  1. I am being compensated at the rate of $250 per hour for my time consulting on this case. This compensation is unrelated to the outcome of the case.

3  Prior Testimony

  1. I have not testified at a trial in the last five years. I have testified by deposition twice in the last five years in:

·  Transclean Corp. v. Jiffy Lube International, Inc. (D. Minn.)

·  Volovik v. Bayer Corp. (D. Minn)

4  Materials Reviewed

  1. In forming my opinions and preparing this report, I have reviewed and relied on:

·  U.S. Patent No. 6,063,050

·  U.S. Patent No. 6,280,407

·  U.S. Patent No. 6,468,286

·  U.S. Patent No. 6,682,544

·  Joint Claim Construction and Prehearing Statement

·  Preliminary Infringement Contentions

·  Webster’s Third New International Dictionary (Merriam-Webster 1993)

·  The Oxford English Dictionary (2nd ed., Clarendon Press 2001).

·  Van Nostrand’s Scientific Encyclopedia (6th ed., Van Nostrand Rheinhold Co.1983).

·  Harold A. Rothbart, Cams: Design, Dynamics, and Accuracy (John Wiley & Sons, Inc. 1956).

·  Arthur G. Erdman, George N. Sandor, & Sridhar Kota, Mechanism Design: Analysis and Synthesis (4th ed., Prentice Hall. 2001).

·  Frankin D. Jones, Ingenious Mechanisms for Designers and Inventors, (Industrial Press 1930).

·  Deane Lent, Analysis and Design of Mechanisms (2nd ed. Sheffield, 1970).

·  Henry T. Brown, Five Hundred and Seven Mechanical Movements, (Brown and Seward 1896) (republished by The Astragal Press, 1981, ISBN 1-879335-63-8).

·  Readers Digest: Complete Car Care Manual (Readers Digest 1981).

·  Nicholas P. Chironis & Neil Sclater, Mechanisms & Mechanical Devices Sourcebook (2nd ed., McGraw- Hill 1996).

·  Leonardo and the Engineers of the Renaissance, Online Exhibit, The Institute and Museum of the History of Science, Florence, Italy, available at http://brunelleschi.imss.fi.it/ingrin/

5  Cam Mechanisms

  1. A cam mechanism is a type of mechanism that transfers motion from a cam to a follower through the motion of the cam edge or surface.[1] A cam mechanism contains two parts. The first part is the cam. The second part is the follower which interacts with the cam. The cam is the driven member, and it imparts motion to the follower.
  1. In my experience, I have found that cam mechanisms encompass a wide range of devices and that “cam” is a versatile term. Inventors are constantly finding new applications for a cam mechanism. Dictionaries, textbooks, and mechanism design books demonstrate the variety and usefulness of cams in machine design. In most cases, the authors of these reference materials provide a broad definition of “cam,” and many of these references provide examples to demonstrate the wide variety of cam forms.[2] It is this variety that make cams such a useful element for machine design.[3]
  1. Cams come in many configurations and can be realized in many forms, demonstrating their usefulness in mechanism design.[4] For example, the textbook “Mechanism Design: Analysis and Synthesis” states: “A cam is [a] convenient device for transforming one motion into another. This machine element has a curved or grooved surface which mates with a follower and imparts motion to it.” See Erdman (selected pages attached as Exhibit 4). The text states: “Because of the various cam geometries and the large number of cam and follower combinations, the cam is an extremely versatile mechanical element.” Figures 6.1, 6.2 and 6.3 of this text illustrate various types of cams and followers.
  1. Similarly, the book “Cams: Design Dynamics and Accuracy” opens with a general discussion of cams which are loosely referred to as “miscellaneous contour surfaces.” See Rothbart (selected pages attached as Exhibit 5). Cams “may have any shape” and are therefore “simple and adaptable.” The author gives a definition of cam as “a mechanical member for transmitting a desired motion to a follower by direct contact.” The figures in this book show various forms of cams. For example, Figure 1.5 shows a translating cam where the follower moves up and down as the cam groove goes back and forth.[5]
  1. Cams are a reliable means of converting linear to rotary motion and as described above, can come in many different forms. The inventors of the patents-in-suit disclosed a novel cam mechanism, in which the tubular actuation member has slots that are engaged by the camming members included on the clamp to form a camming mechanism for the purpose of opening and closing the clamp within tight space constraints. I will discuss the cam mechanism claimed by the patents-in-suit in detail below.

6  Interpretation of Claim Terms

  1. The ’050, ’286, and ’544 patents describe inventions that contain cam mechanisms and refer to these mechanisms in the patent drawings, specifications and claims.
  1. In this section, I examine certain terms, phrases, and clauses contained in the claims of the ’050, ’286, and ’544 patents that relate to cams and offer my opinion on the relative merits of Plaintiff U.S. Surgical’s and Defendant Ethicon’s proposed claim constructions. The section follows the order laid out in the “Joint Claim Constructions and Prehearing Statement” dated April 22, 2005.

6.1  ’050 Patent: “camming members”

  1. Claim 11 of the ’050 patent uses the term “camming members” as follows: “the clamp member includes a pair of pivot pins and a pair of camming members spaced from the pivot pins.” Claim 12 of the ’050 patent uses the term “camming members” in the following context: “pair of slots engagable with a pair of camming members of the clamp member.”
  1. Based on my training and experience in mechanical design, I understand Claims 11 and 12 to describe the use of a cam mechanism to open and close the clamp. A cam mechanism has two parts, the cam and the follower. Claims 11 and 12 use the term “camming members” to refer to the follower part of the cam mechanism and explain that these camming members are included on the clamp. Claims 11 and 12 are general in their description of these camming members.
  1. “Camming members” are discussed in the specification of the ’050 patent. For example, the specification describes certain camming members 272 at 9:32, best seen in Figures 13 and 14. The specification also describes camming members 472 at 12:50 and 14:14, best seen in Figures 28A and 33. Parts 272 slide in slots 274 (Fig. 14) while parts 472 slides in slots 474 (Fig. 33). Slots 274 are formed in the distal end of actuator tube 246 (Fig. 14) while slots 474 are formed in adaptor 457 (Fig. 33).
  1. The combination of camming members 272 and tube 246 with slots 274 form a cam mechanism that converts linear to rotary motion. Here, the cam is tube 246 with slots 274, and the follower is camming members 272.
  1. While the specification and drawings of the ’050 patent describe particular embodiments, the claim language is not limited to the types of camming members described in the specification.
  1. U.S. Surgical interprets “camming members” as “the parts on the clamp that interact with the cam slots.”
  1. U.S. Surgical’s interpretation of “camming members” reflects the ordinary meaning of the term as I understand it and is consistent with how the term is used in Claims 11 and 12 of ’050 patent, as well as with the drawings and specification of the ’050 patent. From reading the claims, viewing the drawings, and reading the description of the preferred embodiments, it is evident that the inventors are disclosing the use of a cam mechanism to operate the clamp. To make clear that a cam mechanism is being described, the inventors used the term “camming members” to describe the follower part of the cam mechanism.
  1. Ethicon proposes the following interpretation of “camming members:” “Protrusions (followers) the motion of which is definitely controlled by movement of the ‘slots’ with which they are engaged.”
  1. Ethicon’s interpretation reads more into the term “camming member” than the ordinary meaning as I understand it or than is apparent in the claim language, drawings, and specification of the ’050 patent.
  1. First, “protrusions” is too narrow because the claim language does not refer to a protrusion structure. Moreover, the use of “protrusions” in the definition implies that the only claimed form of the camming members are features protruding from the clamp. But by using the term “camming members,” rather than “protrusions” or “pins” the claim language includes other ways of forming the cam follower.
  1. Second, the phrase “definitely controlled” is too narrow. The ability of a cam mechanism to control motion depends upon the form of the cam and how it is implemented. While the ’050 patent discloses that a cam mechanism can be used to operate the clamp, it does not specify the width of the slots nor how tightly that motion should be controlled. Close examination of the ’050 patent text in 11:9-11 is consistent with the notion of the camming member not necessarily being tightly controlled. For example, the text states, “Movement of actuator tube 246 distally causes cam slots 274 to move into engagement with camming members 272….” (emphasis added). This implies that slots 274 can be wider than the camming members 272 and that there can be some movement of the slots with no movement of the camming members. In fact, in my view, not having the camming motion too tightly controlled may have the advantage of making the instrument less likely to bind.[6]
  1. Thus, reviewing the claims, specification, and drawings of the ’050 patent confirms my opinion that it is incorrect to state that the camming members must be “definitely controlled by movement of the ‘slots’ with which they are engaged”.

6.2  ’050 Patent: “slots engagable…”

  1. Claim 12 of the ’050 patent uses the term “slots engagable with a pair of camming members” in the following context: “the actuator tube includes a pair of slots engagable with a pair of camming members of the clamp member.”
  1. Claim 12 describes the use of a cam mechanism to open and close the clamp. Claim 12 uses the term “pair of slots” to refer to the cam part of the cam mechanism and is general in its description of these cams.
  1. Cam slots are discussed in the specification of the ’050 patent, which describes cam slots 274 at 9:34 (Fig. 14) and cam slots 474 at 12:53 (Fig. 33). These slots are part of the cam component of the cam mechanism described above. The cam slots 274 and 474 interact with camming members 272 and 472 to form the cam mechanism.
  1. While the specification and drawings of the ’050 patent describe particular embodiments, the claim language is not limited to the types of cam slots described in the specification.
  1. U.S. Surgical interprets “slots engagable with a pair of camming members” as “openings or grooves which interact with the camming members.” This interpretation reflects the ordinary meaning of the term as I understand it and is consistent with the claim language in Claim 12, drawings, and specification of the ’050 patent. From the claim language, it is evident that the inventors are disclosing a cam mechanism to operate the clamp, and that the slots, which are openings on the actuator tube, interact with the camming members. This understanding of “slots engagable with a pair of camming members” is supported by the specification and drawings.
  1. Ethicon proposes the following interpretation of “slots engagable with a pair of camming members:” “Narrow openings or grooves that engage and definitely control the motion of the camming members.”
  1. The inclusion of “definitely controls” is an unwarranted limitation on the design of the slots. As discussed above, there is nothing in the drawings or specification of the ’050 patent that limits cam slots 274 and 474 to narrow slots that would definitely control the camming members. Indeed, such narrow slots would require tighter precision on manufacturing and thus a higher cost for the instrument, and such narrow slots might cause the mechanism to bind which would make the instrument difficult to use. Further, as discussed above, the text of the ’050 patent implies that the slots can be wider than the camming members, allowing some movement of the slots with no movement of the camming members in the mechanism.

6.3  ’286 Patent: “cam slot”

  1. Claim 8 of the ’286 patent uses the term “cam slot” as follows: “a distal end of the actuator tube including a cam slot configured to receive cam members formed on the clamp member, the actuator tube being moveable between advanced and retracted positions about the vibration coupler in response to actuation of the handle assembly to effect movement of the clamp member between the open and closed positions.”
  1. Claim 8 describes the use of a cam mechanism to open and close the clamp.