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Court Is Flexible in Construing “Rigid”

00-1453
August 15, 2002
Yoshida, Naoki

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Last Month at the Federal Circuit - September 2002

Judges: Bryson (author), Newman, and Rader

In Bionx Implants, Inc. v. Linvatec Corp., No. 00- 1453 (Fed. Cir. Aug. 15, 2002), the Federal Circuit upheld a district court’s construction of patented claims that included the term “rigid,” but vacated a SJ of noninfringement, concluding that tests used to show the rigidness of the accused product were valid.

U.S. Patent No. 4,873,976 (“the ’976 patent”) relates to a surgical fastener for repairing tears in the meniscus of the knee. The surgical fastener includes a rigid barbed shaft that is inserted into the meniscus to join torn meniscus portions. The ’976 patent claims the “rigid” shaft and the method for repairing a tear with the “rigid” shaft. Bionx Implants, Inc. (“Bionx”), licensee of the ‘976 patent, sued Linvatec Corporation (“Linvatec”) for infringement of the ’976 patent.

The district court, based on the specification and prosecution history of the ’976 patent, had construed the term “rigid” used in the claims to mean rigid enough to be pushed directly through the semihard cartilage of a meniscus without any precutting. Bionx offered a videotape demonstrating Linvatec’s device being pushed into uncut meniscal tissue with an insertion rod. The district court discounted the tape, however, because the insertion was made possible only by use of the insertion rod. Accordingly, the district court held that Bionx’s evidence was insufficient to raise a genuine issue of material fact as to whether Linvatec’s device was capable of being pushed through uncut meniscal tissue and granted SJ of noninfringement.

On appeal, the Federal Circuit examined the specification and prosecution history of the ’976 patent and upheld the district court’s claim construction. To be “rigid” within the meaning of the claims in the ’976 patent, the specification of the ’976 patent described that a suture must be sturdy enough to be “pushed through the tissue to be repaired.” According to the Federal Circuit, the use of the term “push” implied that the tissue to be repaired is uncut. The Court also found that the prosecution history of the ’976 patent supported this claim construction.

Bionx contended that there is a genuine issue of material fact as to whether Linvatec’s device infringes the ’976 patent even under the district court’s definition of the term “rigid.” To address this appealed issue, the Federal Circuit examined the videotaped demonstration relied on by the district court and concluded that the use of the insertion rod to insert the accused device was a valid test to demonstrate rigidness. In one embodiment of the ‘976 patent, the suture is inserted in the tissue to be repaired through a hollow outer sleeve or cylinder using a pusher. According to the Federal Circuit, what matters is whether Linvatec’s device is rigid enough to enter the meniscus without precutting, and it is irrelevant whether the device was used with an insertion rod.

The Federal Circuit recognized that for the demonstration to be of evidentiary value, Linvatec’s device must be inserted using a degree of force and method of insertion that would be used in a surgical context. However, the Court found that the SJ ruling did not rest on the ground that Linvatec’s device was forced into the meniscal tissue through the use of a method that would never be used in a surgical context and concluded that the district court had erred by granting SJ to Linvatec based primarily on the fact that an insertion rod was used in the videotaped demonstration. Accordingly, the Court vacated the SJ of noninfringement and remanded the case for further proceedings.