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Importing Extraneous Functions into Means-Plus- Function Claim Limitation Is Improper

05-1314
May 15, 2006
Burgy, Adriana L.

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Last Month at the Federal Circuit - June 2006

Judges: Gajarsa, Dyk (dissenting), Prost (author)

In Applied Medical Resources Corp. v. U.S. Surgical Corp., No. 05-1314 (Fed. Cir. May 15, 2006), the Federal Circuit vacated the district court’s grant of SJ of noninfringement and remanded to the district court for further proceedings.

“[T]he inquiry should be restricted to the way in which the structure performs the properly-defined function and should not be influenced by the manner in which the structure performs other, extraneous functions.” Slip op. at 16.

Applied Medical Resources Corporation(“Applied”) filed suit against United States Surgical Corporation (“U.S. Surgical”), alleging that U.S. Surgical’s VERSAPORT™ PLUS trocar infringed claim 18 of Applied’s U.S. Patent No. 5,385,553 (“the ’553 patent”). The ’553 patent is directed to a trocar through which instruments can be inserted during laparoscopic surgery. The valve of theclaimed trocar is equipped with a “floating seal” that prevents leaking of the insufflation gas from the insertion of the instrument. Claim 18 of the ’553 patent recites “means . . . for supporting the valve portions within the seal housing . . . to permit the valve portions to float relative to the axis of the cannula.”

Granting U.S. Surgical’s motion for SJ of noninfringement, the district court noted that the parties agreed that the term in question is means-plus-function under 35 U.S.C. § 112, and that the term covered the structures described in the ’553 patent. Also, due to collateral estoppel, the parties did not dispute that the term refers to the “ring-levers-teeth” embodiment that performed the claimed function and their equivalents.

With respect to infringement analysis, the district court found that the parties agreed that the means for supporting had two functions: (1) “supporting the valve portions within the seal housing,” and (2) “to permit the valve portions to float relative to the axis of the cannula.” Slip op. at 7 (emphases added). But the parties disagreed as to what the two functions required. To resolve the motion for SJ, the district court adopted Applied’s proposed definitions of the “supporting” and “float[ing]” functions. Next, under the “function-way-result” test, the district court found that U.S. Surgical’s gimbal structure met the functions recited in claim 18 but that each function was performed in a substantially different way. According to the district court, Applied’s expert declaration failed to raise a disputed issue of fact sufficient to defeat SJ. As a result, the district court held that no reasonable jury could find that U.S. Surgical’s gimbal structure was equivalent under an infringement analysis. Applied appealed.

On appeal, Applied “argu[ed] that a reasonable jury could find that the gimbal in the accused trocars satisf[ies] the means term by performing the identical claimed functions with an equivalent structure as the disclosed ring-levers-teeth structure.” Id. at 9. Because the district court did not construe what was required for each of the two functions and instead adopted Applied’s construction, the Federal Circuit did not further construe the means-plus-function limitation and turned to the infringement analysis under this construction. The only issue before the Federal Circuit was whether, under the district court’s adopted claim construction, there exists a genuine issue of material fact that U.S. Surgical’s gimbal structure performs the claimed functions in substantially the same way as Applied’s ring-levers-teeth structure. The Court found that there was evidence indicating a genuine issue of fact that the gimbal structure performs the claimed function in substantially the same way. Namely, the Federal Circuit held that the district court erred by improperly importing unclaimed functions into a means-plus-function claim limitation and disregarding Applied’s expert declaration.

The Federal Circuit explained that the district court’s definition of the supporting function “improperly included the way in which the structure performed extraneous functions,” id. at 16, and the analysis of the way in which the structures perform the float function improperly imported unclaimed functions. The Court also found that Applied’s expert declaration provided sufficient specificity as to why one of ordinary skill in the art would view both structures as functioning to support and float in substantially the same way. Accordingly, adopting Applied’s claim construction for purposes of SJ, the Federal Circuit concluded that a genuine issue of material fact exists as to whether U.S. Surgical’s VERSAPORT™ PLUS trocar infringes claim 18 of the ’553 patent, and remanded to the district court for further proceedings.

In his dissent, Judge Dyk took issue with the majority’s expansion of the scope of means-plus-function claims by their failure “to enforce the requirement that the patentee show that the accused device perform the required function in substantially the same ‘way’ as the patented device.” Dissent at 1. Judge Dyk explained that the district court did not improperly import unclaimed functions or redefine the function of the structure. Rather, the analysis requires the use of descriptive language that is not contained in the claim itself. As such, the dissent would affirm the district court’s grant of SJ of noninfringement.