Federal Circuit Finds Listing Claim Elements Separately Clearly Implies Those Elements Are Distinct Components of the Patented Invention
July 29, 2010
Last Month at the Federal Circuit - August 2010
Judges: Gajarsa (dissenting), Linn, Mayer (author)
[Appealed from: D. Del., Chief Judge Sleet]
In Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, Nos. 09-1053, -1111 (Fed. Cir. July 29, 2010), the Federal Circuit reversed the district court’s denial of Tyco Healthcare Group, LP’s (“Tyco”) JMOL of noninfringement because the district court incorrectly construed the “spring means” limitation in the asserted claims.
Becton, Dickinson and Company (“Becton”) sued Tyco for infringement of certain claims of U.S. Patent No. 5,348,544 (“the ’544 patent”), directed toward a safety needle employing a needle guard. The guard is attached to the needle hub by a hinged arm. To facilitate the movement of the guard toward the needle tip, the ’544 patent discloses a “spring means” for “urging [the] guard along [the] needle cannula” toward the tip of the needle. Slip op. at 3 (alterations in original). All the asserted claims contained this limitation. At trial, the district court instructed the jury that the spring means limitation required that “the ‘spring means’ must move the guard along the needle toward the needle tip.” Id. at 6. The district court also instructed the jury that “[t]he spring is not required to move the guard all the way to the tip of the needle but must, by itself, move the guard some distance.” Id. (alteration in original). The jury returned a verdict of infringement by Tyco’s safety needles. The district court denied Tyco’s motions for JMOL and Tyco appealed.
On appeal, the Federal Circuit agreed with Tyco that the unambiguous language of the asserted claims, as well as the disclosure in the specification, required an added spring element that moves the safety guard toward the tip of the needle. The Court found that because the asserted claims listed (1) a hinged arm and (2) a spring means “connected to” the hinged arm as separate elements, “[t]he unequivocal language of the asserted claims of the ’544 patent requires a spring means that is separate from the hinged arm.” Id. at 9. The Court noted that “[w]here a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Id. at 10 (second alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)).
Additionally, the Federal Circuit determined that the specification confirmed the spring means as a separate element from the hinged arm, because the only elements disclosed in the specification as “spring means” for urging the guard forward were separate structures from the hinged arm and its hinges. The Court explained that Becton’s assertion that the spring means and the hinged arm could be the same structure rendered the claims nonsensical, as the claims describe the spring means as “connected to” the hinged arm. Id. at 11. The Court further noted that if the hinged arm and spring means in the claims were not separate structures, then the asserted claims would be invalid as obvious over the prior art, since the separate spring means is what distinguished the claimed invention.
Becton was not able to show that Tyco’s products had a spring means separate from the hinged arm. Because there can be no literal infringement where a claim requires two separate structures and one such structure is missing from an accused device, the Federal Circuit found no literal infringement by Tyco’s accused products.
Furthermore, the Federal Circuit found that even under the trial court’s erroneous claim construction, Becton adduced no credible evidence establishing literal infringement. Becton’s infringement argument was that the hinges in Tyco’s needles contain stored energy and that when the hinged arm is unlatched, the hinges act as “springs” that cause the guard to move down the needle cannula. But the Court noted that Becton did not provide any evidence that (1) the hinges in the accused devices contained stored energy, or (2) they moved the guard down the needle cannula. The Federal Circuit rejected Becton’s assertion that the fact that the jury was able to examine the accused devices provided sufficient support for the finding of infringement. The Court stated that the jury was not free to disregard the overwhelming record evidence showing that no movement of the guard occurred after the hinged arm was unlatched, and instead to infer that the hinges might contain some stored energy that might be capable of moving the guard down the needle cannula. The Court held that a jury verdict based on inferences wholly unsupported by the record cannot stand.
Becton also argued that Tyco’s accused needles did have springs that were separate structures from the hinged arm. In support, Becton asserted that the hinges in the hinged arm were separate structures from the hinged arm itself. The Federal Circuit found this argument unavailing. The Court found that even if Becton’s assertion were true, there was no evidence that the hinges function as springs that move the guard down the needle cannula.
Finally, the Federal Circuit rejected Becton’s argument that the district court erred in granting Tyco’s motion for an order in limine precluding Becton from presenting evidence that Tyco’s accused products infringed the ’544 patent during the manufacturing process. Because Becton’s argument was not properly raised during discovery, the Court found that the district court did not abuse its discretion in precluding Becton from presenting evidence regarding its theory at trial. Accordingly, the Court reversed the judgment of the district court.
Judge Gajarsa dissented from the majority opinion, indicating that the majority failed to conduct a claim construction analysis to determine whether construction of the “spring means” limitation is a means-plus-function limitation governed by 35 U.S.C. § 112, ¶ 6. Judge Gajarsa further stated that the majority’s construction of “spring means” as requiring two separate structures was not supported in the record. While Judge Gajarsa agreed with the majority that the use of different terms in the claims like “spring means” and “hinged arm” connotes different meanings, he noted that “the use of two terms in a claim requires that they connote different meanings, not that they necessarily refer to two different structures.” Gajarsa Dissent at 7 (citation omitted). Judge Gajarsa also noted that it is well established that a single structure in an accused device may satisfy two different claim limitations, and in the absence of evidence requiring two structures, the claim language must be interpreted broadly to read upon an accused product containing the two claim terms, regardless of whether those elements are encompassed in one or two structures.
On the issue of infringement, Judge Gajarsa stated that had the majority correctly viewed the evidence in the light most favorable to Becton and properly analyzed the jury verdict, it would have concluded that there was substantial evidence in the record supporting the jury’s finding of infringement. Accordingly, Judge Gajarsa concluded that the district court was correct in denying the JMOL motion.
Summary authored by Troy A. Petersen, Esq.