NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

NEUROGRAFIX, NEUROGRAPHY INSTITUTE 

MEDICAL ASSOCIATES, INC., IMAGE-BASED 

SURGICENTER CORPORATION, AARON 

GERSHON FILLER,

Plaintiffs-Appellants

v.

BRAINLAB, INC., BRAINLAB AG, BRAINLAB 

MEDIZINISCHE COMPUTERSYSTEME GMBH,

Defendants-Appellees

______________________

2018-2363

______________________

Appeal from the United States District Court for the 

Northern District of Illinois in No. 1:12-cv-06075, Judge 

Matthew F. Kennelly.

______________________

Decided: October 7, 2019

______________________

AARON GERSHON FILLER, Tensor Law, P.C., Santa Monica, CA, argued for plaintiffs-appellants. 

 JAY CAMPBELL, Tucker Ellis LLP, Cleveland, OH, argued for defendants-appellees. Also represented by DAVID 

AARON BERNSTEIN. 
2 NEUROGRAFIX v. BRAINLAB, INC.

 ______________________

Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge.

U.S. Patent No. 5,560,360, which names Dr. Aaron 

Filler as a co-inventor, describes and claims particular 

methods of generating images of nerves and other bodily 

structures by use of magnetic resonance imaging (MRI) 

technology. Dr. Filler and the three appellants named in 

the caption (collectively, NeuroGrafix) sued the appellees 

named in the caption (collectively, Brainlab), asserting infringement of the ’360 patent. The case was consolidated 

with cases filed against other defendants and assigned for 

pretrial purposes to a multidistrict litigation (MDL) court. 

The MDL court granted summary judgment of non-infringement to Brainlab, and it denied reconsideration, as 

did the original district court when the case returned from 

the MDL court. NeuroGrafix appeals. We conclude that 

the grant of summary judgment was procedurally improper, and we resolve the parties’ key disputes about 

claim construction. We reverse and remand.

I

A

The ’360 patent describes methods and systems for creating detailed images of neural tissues by using diffusion 

tensor imaging (DTI), an application of MRI technology. 

’360 patent, Abstract; see also id., col. 21, lines 35–45. DTI 

exploits certain facts about water diffusion in, e.g., brain 

structures. Notably, diffusion along white matter nerve 

tracts is anisotropic: substances such as water diffuse 

freely along the main, long axis of the nerve tract, but diffusion is very limited in a direction perpendicular to 

(across) that axis. Id., col. 5, lines 5–11. By contrast, the 

surrounding gray matter is relatively isotropic: substances 
NEUROGRAFIX v. BRAINLAB, INC. 3

diffuse at similar rates in all directions. Id., col. 5, lines 

11–12.

In the patented method, pulsed magnetic field gradients are applied in two orthogonal (perpendicular) directions in a region containing the nerve tissues for which a 

precise image is sought. Id., col. 5, lines 17–21; see also id., 

col. 15, lines 40–57. “[I]f the axis of the nerve is generally 

known to the operator,” the specification explains, “the direction of the desired orthogonal diffusional weighting gradients can be readily determined.” Id., col. 15, lines 58–62; 

see also id., col. 16, lines 34–47. “On the other hand, if the 

axis of the peripheral nerve is not known, or if many[ ] 

nerves having different axes are being imaged,” the initial 

directions for the magnetic field gradients are “arbitrarily 

selected,” and then a number of alternative directions are 

used. Id., col. 15, lines 63–67; id., col. 16, lines 48–53.

The result of this process of applying magnetic field 

gradients depends on the types of tissue in the subject region. In isotropic tissue, the signal reduction will be the 

same regardless of how the magnetic field gradients are 

oriented relative to the tissue, whereas in anisotropic tissue, the signal reduction will be greatest when the magnetic field gradients are parallel and perpendicular, 

respectively, to the direction of the anisotropy, i.e., along 

the major, long axis of the neural tract. Id., col. 5, lines 21–

39. Accordingly, neural tissue can be identified and visually differentiated from the surrounding structures by determining the areas of greater relative anisotropy. Id., col. 

6, lines 46–55; see also id., col. 15, lines 52–57 (“[W]ith gradients approximately perpendicular and parallel to the 

axis of the peripheral nerve at the particular point being 

imaged, the parallel gradient image can be subtracted from 

the perpendicular gradient image to produce the desired 

‘nerve only’ image.”).
4 NEUROGRAFIX v. BRAINLAB, INC.

Claim 36 of the ’360 patent is the only independent 

claim at issue in this appeal, and the parties have generally 

treated that claim as representative. That claim recites:

36. A method of utilizing magnetic resonance to 

determine the shape and position of a structure, 

said method including the steps of:

(a) exposing a region to a magnetic polarizing 

field including a predetermined arrangement of 

diffusion-weighted gradients, the region including 

a selected structure that exhibits diffusion anisotropy and other structures that do not exhibit diffusion anisotropy;

(b) exposing the region to an electromagnetic 

excitation field;

(c) for each of said diffusion-weighted gradients, sensing a resonant response of the region to 

the excitation field and the polarizing field including the diffusion-weighted gradient and producing 

an output indicative of the resonant response; and

(d) vector processing said outputs to generate 

data representative of anisotropic diffusion exhibited by said selected structure in the region, regardless of the alignment of said diffusionweighted gradients with respect to the orientation 

of said selected structure; and

(e) processing said data representative of anisotropic diffusion to generate a data set describing 

the shape and position of said selected structure in 

the region, said data set distinguishing said selected structure from other structures in the region 

that do not exhibit diffusion anisotropy.

Id., col. 42, line 43, through col. 43, line 2. The central dispute in this appeal involves the “selected structure” limitation in steps (a), (d), and (e).
NEUROGRAFIX v. BRAINLAB, INC. 5

B

In August 2012, NeuroGrafix, Neurography Institute 

Medical Associates, Inc., and Image-Based Surgicenter 

Corporation sued Brainlab, Inc., Brainlab AG, and Brainlab Medizinische Computersysteme GmbH in the Northern 

District of Illinois, and in August 2014, Dr. Filler became a 

co-plaintiff by the filing of an amended complaint. The 

plaintiffs (NeuroGrafix) alleged that users of Brainlab’s FiberTracking software directly infringed the ’360 patent and 

that Brainlab induced the direct infringement by those users through statements in its manual and advertisements 

directing users to use the software in an infringing manner.1 In particular, NeuroGrafix asserted claims 36–37, 

39–42, 44, 46–47, and 49, all of which are method claims. 

Brainlab counterclaimed for a declaratory judgment that 

the asserted claims of the ’360 patent are invalid.

In April 2013, the Judicial Panel on Multidistrict Litigation transferred the case to the District of Massachusetts, where it was consolidated, for pretrial proceedings,

with several cases that NeuroGrafix brought against various MRI equipment manufacturers and university and 

hospital end-users.

In May 2016, Brainlab filed the first of its two motions 

for summary judgment of non-infringement. Brianlab relied on customer-protection provisions of settlement agreements NeuroGrafix had entered into with MRI-equipment 

makers Siemens, GE, and Philips. Brainlab argued that 

 

1 There is evidence in the record before us that a user 

of the FiberTracking software selects a region of interest 

from an anatomical image fused with DTI data and chooses 

a minimum diffusion value and a minimum length, and the 

software then displays all fibers that intersect the chosen 

region of interest and exceed the minimum diffusion and 

length parameters.
6 NEUROGRAFIX v. BRAINLAB, INC.

its FiberTracking software is used to process the output 

from MRI systems made by those manufacturers and that 

FiberTracking users do not infringe under the terms of the 

settlement agreements. In its response, NeuroGrafix argued, among other things, that Brainlab could still be liable for infringement by “unauthorized independent medical 

practitioners” who use Brainlab’s software but are not customers of Siemens, GE, or Philips.

The MDL court granted the motion, but only in part, in 

August 2016. It held that summary judgment of non-infringement was proper with respect to Brainlab’s customers using Siemens MRI systems but not as to Brainlab’s 

customers using GE and Philips MRI systems, reasoning 

that only the Siemens settlement agreement, not the GE or 

Philips agreements, extended to Brainlab’s software. The 

court also held summary judgment of non-infringement 

proper as to the alleged independent medical practitioners, 

concluding that NeuroGrafix had produced “no evidence 

that any of the handful of such practitioners identified by 

[NeuroGrafix] used Brainlab products in their alleged infringement.” J.A. 51.

Brainlab eventually filed a second motion for summary 

judgment, but before that occurred, NeuroGrafix, in September 2017, sought leave to file a second amended complaint that, if allowed, would add allegations that Brainlab 

itself directly infringed the ’360 patent because the steps 

performed by Brainlab’s customers were attributable to 

Brainlab under an agency theory. In conjunction with its 

proposed second amended complaint, NeuroGrafix filed a 

declaration from Dr. Filler and attached several articles 

and other exhibits allegedly demonstrating infringement 

by several of Brainlab’s customers, such as Memorial Sloan 

Kettering Cancer Center and Akron General Hospital. The 

MDL court denied NeuroGrafix permission to file a second 

amended complaint, characterizing the new allegations as 

a “last-ditch attempt to repackage the inducement claim,” 

which it had “long alleged but neglected until the close of 
NEUROGRAFIX v. BRAINLAB, INC. 7

fact discovery,” as a direct-infringement claim under an 

agency theory. J.A. 6986.

In February 2018, Brainlab filed its second motion for 

summary judgment of non-infringement. Brainlab’s entire 

argument was that users of the software do not commit direct infringement and therefore Brainlab could not be liable for induced infringement; it made no argument against 

inducement liability except for the absence of direct infringement. J.A. 7309 (“without direct infringement there 

can be no induced infringement”), 7327 (“Absent direct infringement, there can be no induced infringement.”). On 

direct infringement, Brainlab argued that users of the FiberTracking software do not satisfy two limitations of 

claim 36—the “selected structure” limitation and the “do 

not exhibit the diffusion anisotropy” limitation. In support 

of that assertion, Brainlab set forth essentially three arguments in its motion.

First, and most significantly for present purposes, 

Brainlab argued that “selected structure” requires that a 

user know the “existence and location” of the structure of 

interest before performing the claimed steps of exposing a 

region to a magnetic field, sensing a resonant response, and 

so forth. J.A. 7308. Brainlab asserted that it was impossible for users of the FiberTracking software to “select[] [a]

structure” because “Brainlab’s FiberTracking module does 

not permit a user to isolate or select a specific structure for 

tractography” before scanning; instead, the accused software “automatically generates all tracts that intersect a 

certain volume, like a tumor, if they meet certain criteria,” 

and those tracts “are not visible until after the FiberTracking software has been run.” J.A. 7322; see J.A. 7308 (“users 

of Brainlab’s FiberTracking module cannot infringe claim 

36” because they cannot select a structure as required), 

7309 (same), 7312 (same), 7322 (same), 7324 (same), 7325 

(same), 7327 (same). Second, Brainlab contended that “selected structure” was limited to peripheral nerves, whereas 

the FiberTracking software was used to image only nerves 
8 NEUROGRAFIX v. BRAINLAB, INC.

in the brain, which are not considered peripheral nerves. 

J.A. 7317–18. Third, Brainlab argued that “do not exhibit 

diffusion anisotropy” should be construed as requiring zero 

diffusion anisotropy. J.A. 7321. Under that construction, 

Brainlab asserted, the limitation was not satisfied because 

the gray matter distinguished by the FiberTracking software has a small but nonzero anisotropy, J.A. 7325–27, and 

the FiberTracking software does not permit users to choose 

zero as the anisotropy threshold above which structures 

will be displayed, J.A. 7322.

In its opposition, NeuroGrafix responded to Brainlab’s 

arguments. It argued that “selected structure” does not require that the precise location and orientation of the chosen

structure be known in advance. J.A. 8011–12. According 

to NeuroGrafix, users could satisfy the claim by, for instance, obtaining a preliminary MRI image, choosing a 

structure that would be “distinctive and visibly apparent” 

from the preliminary image (such as the pyramidal tract), 

and then performing the steps of the claimed method with 

the chosen structure as the subject. J.A. 8012; see J.A. 

8011–13, 8025–26. NeuroGrafix also asserted that the FiberTracking software was capable of being used in such a 

manner, pointing to Brainlab’s advertisements, which 

state that users can use the software to image the pyramidal tract, J.A. 8013, 8015, and the FiberTracking manual, 

which instructs that users can select fiber bundles to include or exclude in the region of interest, J.A. 8020.

The MDL court granted Brainlab’s second summaryjudgment motion in May 2018. In re NeuroGrafix (’360) 

Patent Litig., MDL No. 13-2432, 2018 WL 2392000, at *5

(D. Mass. May 25, 2018) (Summary Judgment Op.). It rejected Brainlab’s claim-construction arguments limiting 

“selected structure” to peripheral nerves and limiting “do 

not exhibit diffusion anisotropy” to zero anisotropy. See id.

at *3. As to Brainlab’s argument that some aspects of the

“selected structure” must be known in advance, the court 

rejected Brainlab’s position that it was not possible to use 
NEUROGRAFIX v. BRAINLAB, INC. 9

the FiberTracking software in a manner that satisfies the 

claim limitation. See id. “[D]epending on the physician’s 

purpose and objective,” the court held, “FiberTracking is 

capable of both infringing uses and non-infringing uses,” 

though it did not identify precisely what those infringing 

and non-infringing uses would be. Id.

Nevertheless, the court concluded, summary judgment 

was warranted because NeuroGrafix had pointed to no evidence that any FiberTracking users actually used the software in an infringing manner, i.e., there was “nothing in 

the record showing that either Brainlab or any of its customers actually uses FiberTracking in the manner hypothesized by Neuro[G]rafix.” Id. at *4; see also id. at *4 n.5

(concluding that there was “no evidence in the record” that 

neurosurgeons used FiberTracking to “ascertain the precise location of the pyramidal tract” to avoid injuring it during surgery). The court also determined that instances of 

direct infringement could not be inferred from statements 

in Brainlab’s advertisements that it was “possible” to use 

the FiberTracking software to delineate the pyramidal 

tract, noting that those materials “do[] not teach a means 

of selecting a particular ROI and FA Threshold and Minimum Length values to accomplish this, nor does it recommend this as a superior or even commensurate mode of 

use.” Id. at *4. In a footnote, the court added a conclusion 

seemingly about the absence of inducement even apart 

from the absence of direct infringement, even though 

Brainlab’s motion had not so argued. It stated that, as a 

matter of law, Brainlab did not induce infringement “for 

the same reason that a reasonable factfinder cannot infer 

instances of direct infringement,” namely, the FiberTracking advertisements and manual “[do not] teach an infringing use of the device such that we are willing to infer from 

those instructions an affirmative intent to infringe the patent.” Id. at *4 n.6 (quoting Takeda Pharm. U.S.A., Inc. v. 

W.-Ward Pharm. Corp., 785 F.3d 625, 631 (Fed. Cir. 2015)).
10 NEUROGRAFIX v. BRAINLAB, INC.

In June 2018, NeuroGrafix moved for reconsideration 

of the MDL court’s grant of summary judgment, primarily 

arguing that several articles attached to NeuroGrafix’s motion for leave to file a second amended complaint had provided evidence of actual infringing uses of the 

FiberTracking software. The MDL court denied NeuroGrafix’s motion for reconsideration, noting that NeuroGrafix had not included or relied on the relevant articles in 

its opposition to Brainlab’s summary-judgment motion.

The case was then remanded to the Northern District 

of Illinois for proceedings on Brainlab’s invalidity counterclaim. [A191] In July 2018, NeuroGrafix asked the Illinois 

court to reconsider the MDL court’s summary-judgment order, contending, as relevant here, that the MDL court had 

granted summary judgment on a basis not asserted in 

Brainlab’s summary-judgment motion. J.A. 8775–76, 

8781–83. The district court denied NeuroGrafix’s motion 

for reconsideration and dismissed Brainlab’s invalidity 

counterclaim without prejudice, producing a final judgment.

NeuroGrafix appeals. We have jurisdiction under 28 

U.S.C. § 1295(a)(1).

II

A

We begin by addressing NeuroGrafix’s procedural challenge to the MDL court’s grant of summary judgment. 

NeuroGrafix argues that it was improper for the MDL 

court to fault it for failing to produce evidence of actual infringement because Brainlab argued only that, under its 

construction of “selected structure,” the accused software 

was not capable of infringement, not that, under the construction adopted by the MDL court, there was no evidence 

of actual infringement. We review the MDL court’s grant 

of summary judgment de novo. Momenta Pharm., Inc. v. 

Teva Pharm. USA Inc., 809 F.3d 610, 614 (Fed. Cir. 2015) 
NEUROGRAFIX v. BRAINLAB, INC. 11

(following First Circuit law); see also In re Cygnus Telecomms. Tech., LLC, Patent Litig., 536 F.3d 1343, 1352 (Fed. 

Cir. 2008) (following law of MDL court’s regional circuit in 

deciding issues involving summary-judgment procedures). 

We agree with NeuroGrafix and accordingly reverse the 

grant of summary judgment.

As Brainlab’s motion for summary judgment repeatedly made clear, its non-infringement position depended on 

the premise that “select[ing] [a] structure” requires knowing in advance the location of the chosen structure. Under 

that construction, Brainlab argued, the FiberTracking software is not capable of infringement, since the software is 

used to detect structures whose location is not already 

known. See, e.g., J.A. 7311 (“Claim 36 is focused on determining the location and shape of an anisotropic structure 

that is already known and ‘selected’ for imaging in advance 

of scanning . . . . Conversely, Brainlab’s Fiber[T]racking 

module is focused on finding patient specific anisotropic 

structures that are not previously known.”); J.A. 7322 

(“The user certainly cannot select a structure in advance of 

scanning. The reason is simple: Brainlab’s FiberTracking 

module is used to find white matter tracts that are not visible until after the FiberTracking software has been run 

. . . .”).

Moreover, the expert reports cited in Brainlab’s summary-judgment motion were also premised on this understanding of “selected structure.” Dr. James Leach declared 

that “the neuroradiologist cannot select certain white matter structures or tracts in advance for imaging” because 

“the position or orientation of white matter tracts is not 

known in advance of imaging” in cranial DTI. J.A. 7921. 

Dr. Andrew Tsung stated that “I do not select certain white 

matter structures for imaging by the MRI,” as “[t]he location of white matter tracts are not identifiable prior to imaging.” J.A. 7912. And Dr. Michael Moseley asserted that 

“a ‘selected’ structure is one where the axis of the structure, 

such as a nerve, . . . would be known in advance of the 
12 NEUROGRAFIX v. BRAINLAB, INC.

imaging,” J.A. 7946, and using that understanding, he 

added that “there is no ‘selected structure’ when DTI imaging is performed” using Brainlab’s FiberTracking software

because “the axes of the white matter fiber tracts are not 

known in advance,” J.A. 7947. Neither Brainlab nor its experts argued in the alternative that, even if “selected structure” did not include a requirement of knowing the 

position, orientation, location, or axes of a structure in advance, the record was devoid of evidence that Brainlab’s 

customers used the FiberTracking software to image particular chosen structures.

In its summary-judgment opposition, NeuroGrafix disputed this claim construction, essentially arguing that “selected structure” simply requires choosing a particular 

structure as a subject for the claimed process. That is possible in the FiberTracking software, NeuroGrafix asserted, 

because at least the pyramidal tract is visible after taking 

a preliminary image and can then be chosen for imaging 

according to the claimed method. See J.A. 8012 (“[E]ither 

visually after opening the skull or from preliminary routine 

MRI scout images, the technologist can select[] a brain 

structure called the pyramidal tract.”); J.A. 8014–15 (“With 

tractography and DTI, it is possible to select this structure 

of the brain . . . and then to provide this selected structure 

as an ROI for the FiberTracking software.”). And NeuroGrafix pointed to Brainlab’s advertisements as evidence 

that such a use was possible and even encouraged by 

Brainlab. See J.A. 8015 (showing Brainlab advertisement

that says: “It is possible to delineate major white matter 

tracts, such as the pyramidal tract, by applying fiber tracking algorithms.”); see also J.A. 8013 (showing Brainlab advertisement that says: “Waves of DTI data on exotic 

eloquent white matter specimens, like pyramidal tracts, 

now flow easily to your BrainLAB IGS.”). In other words, 

NeuroGrafix argued, and the MDL court eventually 

agreed, that the FiberTracking software is capable of infringing uses as well as non-infringing uses.
NEUROGRAFIX v. BRAINLAB, INC. 13

That showing was sufficient for NeuroGrafix to defeat 

summary judgment, and the MDL court erred in concluding otherwise. NeuroGrafix demonstrated that there was 

a genuine dispute of material fact on the only issue raised

by Brainlab, namely, whether the FiberTracking software 

was capable of infringing uses. Evidence of actual infringing uses of the FiberTracking software was unnecessary to 

answer the only grounds for summary judgment asserted 

by Brainlab.2

A court cannot grant summary judgment on a ground 

that was neither asserted by the movant nor made the subject of judicial action under Rule 56(f) that gave the nonmovant proper notice of the ground and of the obligation 

“to come forward with all of her evidence.” Celotex Corp. v. 

Catrett, 477 U.S. 317, 326 (1986); see Glaverbel Societe 

Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 

1562 (Fed. Cir. 1995) (following Seventh Circuit law); see 

also, e.g., Lusson v. Carter, 704 F.2d 646, 647 (1st Cir. 

1983). And in the specific context of patent infringement, 

we have held that summary judgment of non-infringement 

requires the accused infringer to “point[] to the specific 

ways in which accused systems did not meet the claim limitations.” Exigent Technology, Inc. v. Atrana Solutions, 

Inc., 442 F.3d 1301, 1309 (Fed. Cir. 2006). The MDL court’s

ruling was contrary to those basic principles in that it 

granted summary judgment against NeuroGrafix for its 

failure to come forward with evidence to answer a non-

 

2 Thus, we need not and do not decide whether, even 

if NeuroGrafix did not produce direct evidence of actual infringement, instances of infringement can be inferred from 

the statements and figures in Brainlab’s advertisements 

and manual. See Summary Judgment Op. at *4 (citing 

Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1364 (Fed. 

Cir. 2012); Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 

(Fed. Cir. 2010)).
14 NEUROGRAFIX v. BRAINLAB, INC.

infringement ground that had not been asserted and of 

which it had not been given proper notice.

To be sure, our law is clear that, in this case, NeuroGrafix could not sustain a claim of direct infringement of 

the method claims by merely showing that the accused software is “capable of” operating in an infringing manner. 

See, e.g., Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 

(Fed. Cir. 2010). We assume, without questioning, that in 

this case NeuroGrafix must ultimately make a showing

that the accused software was actually used in an infringing manner by Brainlab (for direct infringement case) or by 

one or more of Brainlab’s customers (for indirect infringement). Moreover, it is understandable that the district 

court might be surprised that NeuroGrafix made no such 

showing after the years of litigation and discovery this 

MDL spanned. Nevertheless, the motion being considered 

by the district court in this case was one structured and 

limited by the movant. The court was not free to look down 

the road and consider what the non-movant might need to 

establish to survive a differently structured, well-supported motion. The motion before it necessarily limited the 

court’s inquiry.

For the same reason, the MDL court’s apparent holding 

that Brainlab’s advertisements and manual do not induce 

infringement as a matter of law also was procedurally improper. See Summary Judgment Op. at *4 n.6. Brainlab’s 

summary-judgment motion argued only that “Brainlab 

cannot induce infringement of the asserted claims of the 

’360 patent” because “[a]bsent direct infringement, there 

can be no induced infringement.” J.A. 7327. It did not argue, as the MDL court seemed to conclude, that the relevant Brainlab materials merely suggested that an 

infringing use was possible rather than instructing how to 

use the software in an infringing manner. To the extent 

that this conclusion was an independent basis for the MDL 
NEUROGRAFIX v. BRAINLAB, INC. 15

court’s grant of summary judgment, we reverse the court’s 

decision on that ground as well.3

B

The MDL court’s procedural error is an adequate 

ground for reversal and does not depend on whether its 

claim construction of “selected structure” was correct. But 

we address the disputes about the proper construction of 

that term so that the district court can apply the correct 

construction on remand. We review the MDL court’s claim 

construction de novo and any underlying factual findings 

based on extrinsic evidence for clear error. Teva Pharm. 

USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

We conclude that to “select[] [a] structure” is simply to 

choose it as a subject for placement into the claimed process 

that starts with exposing a region to a magnetic field, proceeds to sensing a resonant response, and continues as 

claimed. That meaning follows from the language of claim 

36 itself: in step (a), the region exposed to a magnetic polarizing field includes the “selected structure,” and in step 

(e), the resulting data set distinguishes the “selected structure” from other structures in the region. ’360 patent, 

col. 42, lines 46–50; id., col. 42, line 64, through col. 43, 

line 2. The specification does not use the language of “selected structure,” but it uses “select” simply to describe 

choosing something before taking some action. See, e.g., 

id., col. 14, lines 53–62 (discussing “select[ing]” a region of 

interest before determining the average intensity within 

that region of interest); id., col. 28, lines 23–26 (discussing 

“select[ing] a volume of interest” before rendering that volume of interest into a projection neurogram).

 

3 The MDL court’s rejection of NeuroGrafix’s inducement claim may also have been based on a construction of 

“selected structure” that, as we discuss below, was incorrect.
16 NEUROGRAFIX v. BRAINLAB, INC.

The MDL court did not set forth a precise claim construction of “selected structure” in its summary-judgment 

opinion.4 In one key respect, though, the court’s understanding of the phrase fits the simple construction that we 

think is mandated. The court correctly rejected the construction that seemingly underlies Brainlab’s contention 

that infringing use of the FiberTracking software is impossible, namely, that a “selected structure” is one whose location, orientation, axis, or the like is known in advance of 

the claimed mapping process to the same degree it will become known upon completion of that process. And the 

court indicated that “delineat[ing] the pyramidal tract,” 

Summary Judgment Op. at *4, and “ascertain[ing] the precise location of the pyramidal tract,” id. at *4 n.5, would 

satisfy the “selected structure” limitation. Those observations fit the specification’s express contemplation of performing the patented method even when, for example, “the 

axis of the peripheral nerve is not known.” Id., col. 15, lines 

63–64.

Two further points about claim construction contentions advanced by the parties—one by Brianlab, one by 

NeuroGrafix—are warranted. Brainlab has suggested that 

software that tracks all fibers in an area cannot perform 

the method, because the tracking is not limited to a particular selected structure. That view is not supported by 

claim 36’s language. As long as a chosen structure is 

among those put into the process for distinguishing the 

data or images in the way the claim specifies, the claim is 

satisfied, even if the process used to do that results in comparable data and images for other structures as well. Both 

 

4 The MDL court did not construe “selected structure” in its August 2016 claim-construction order; nor did 

the parties agree to a construction of the phrase. See In re 

NeuroGrafix (’360) Patent Litig., 201 F. Supp. 3d 206, 212 

& n.4 (D. Mass. 2016).
NEUROGRAFIX v. BRAINLAB, INC. 17

claim 36’s preamble and the claim phrase “region including 

a selected structure” use the word “including.” ’360 patent, 

col. 42, lines 45, 48. We have “consistently interpreted ‘including’ and ‘comprising’ to have the same meaning, 

namely, that the listed elements . . . are essential but other 

elements may be added.” Lucent Techs., Inc. v. Gateway, 

Inc., 525 F.3d 1200, 1214 (Fed. Cir. 2008). And nothing in 

the language following either of the “including” terms implies that no other structure may be mapped in the claimed 

way when a particular chosen structure is placed into the 

claimed mapping process. 

For its part, NeuroGrafix argues on appeal that “selected structure” should be construed as equivalent to “region” and that all uses of the FiberTracking software are 

therefore infringing because Brainlab’s customers necessarily choose a region to be the subject of the claimed 

method before performing the steps of the method. That 

always-infringes contention is the polar opposite of Brainlab’s never-infringes contention, and it is equally wrong. 

The argument was likely forfeited by not being adequately 

presented; indeed, in its motion for reconsideration before 

the MDL court, NeuroGrafix specifically agreed with the 

MDL court’s conclusion that “FiberTracking is capable of 

both infringing uses and non-infringing uses.” J.A. 8449

(quoting Summary Judgment Op. at *3). In any event, 

NeuroGrafix’s construction contradicts the claim language. 

Claim 36 refers to “selected structure” and “region” as separate concepts, with “selected structure” being something 

merely located in the “region.” See ’360 patent, col. 42, lines 

48–50 (“the region including a selected structure that exhibits diffusion anisotropy and other structures that do not 

exhibit diffusion anisotropy”).

III

For the foregoing reasons, we reverse the MDL court’s 

grant of summary judgment and remand for further proceedings consistent with this opinion.
18 NEUROGRAFIX v. BRAINLAB, INC.

Each party shall bear its own costs.

REVERSED AND REMANDED