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No “Support” for Limiting Support Function Claimed in Orthopedic Knee-Brace Patents

August 15, 2001

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Last Month at the Federal Circuit - September 2001

Judges: Linn (author), Newman, and Dyk

In Generation II Orthotics Inc. v. Medical Technology Inc., No. 00-1106 (Fed. Cir. Aug. 15, 2001), the Federal Circuit vacated a district court’s judgment of infringement based on an erroneous construction of the term “controlled” in a functional statement of a meansplus- function clause and erroneous application of 35 U.S.C. § 112, ¶ 6, to certain method claims.

Generation II Orthotics, Inc. (“Gen II”) appealed the district court’s claim construction and resulting judgment of noninfringement of U.S. Patent Nos. 5,302,169 (“the ’169 patent”) and 5,400,806 (“the ’806 patent”) directed to an orthopedic knee brace. The claimed device includes a standard knee brace having two rigid arms joined by a pivotable joint that allows the arms to move with the leg as it bends at the knee. The ’169 patent’s improvement over the prior art is the incorporation of an additional joint on each arm that allows “controlled” inclination of the arms relative to the pivotable joint. The ’806 patent is a CIP of the ’169 patent, which claims a method for applying the brace to a patient to relieve unicompartmental osteoarthritis.

The disputed claim language of claim 1 of the ‘169 patent recites a “joint means in the brace for allowing controlled medial and lateral inclination of each arm relative to the pivotable joint.” The district court had construed the recited function of “controlled medial and lateral inclination of each arm” to mean controlled inclination throughout the rangeof motion of the brace, i.e., dynamic control. Medical Technology Inc. (“Med Tech”) had asserted that the claim language requires control of a moving part, which necessarily requires dynamic control, i.e., control occurring throughout the range of motion, as opposed to static control, i.e., control occurring at any point in the range of motion.

The Federal Circuit declined to restrict the claimed function of “controlled” to either static or dynamic control, reasoning that to do so would impermissibly limit the claim by adopting a function different from that explicitly recited in the claim.

Having defined the claimed function of the “joint means” limitation, the Court identified those structures described in the patent specification that correspond to the claimed function and remanded to the district court to determine whether Med Tech’s Thruster infringes Gen II’s patents under the proper claim construction.

Turning to the district court’s determination that § 112, ¶ 6, applies to method claim 16 of the ’169 patent and method claim 1 of the ’806 patent, the Federal Circuit found that the district court had erred in relying solely on the fact that the limitations recited in those method claims were similar to the means-plusfunction limitations recited in claim 1 of the ’169 patent. More properly, the Court instructed, each limitation of each claim must be independently reviewed to determine if it is subject to the requirements of § 112, ¶ 6.

Undertaking that independent review, the Court found that neither claim 16 of the ’169 patent nor claim 1 of the ’806 patent include means- or step-plus-function limitations because neither claim uses the words “means for” or “step for” with regard to the “joint” limitation. There is a presumption that these limitations are not subject to section 112, ¶ 6, and no evidence exists to the contrary, the Court ruled.

Regarding apparatus claim 21 of the ’169 patent, the Federal Circuit agreed with the district court’s holding that the claim does not invoke § 112, ¶ 6, because the structural recitation of the “adjustable joint” corresponding to the claimed function was sufficient to obviate any implication of § 112, ¶ 6.