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Claim Preamble Recited Essential Elements Limiting Claim Scope

March 20, 2006
Ho, Kenie

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Last Month at the Federal Circuit - April 2006

Judges: Michel, Bryson (author), Gajarsa

In Bicon, Inc. v. Straumann Co., No. 05-1168 (Fed. Cir. Mar. 20, 2006), the Federal Circuit affirmed a district court’s SJ of noninfringement and dismissal of Bicon, Inc. (“Bicon”) as a party plaintiff for lack of standing.

Diro, Inc. (“Diro”), owner of U.S. Patent No. 5,749,731 (“the ’731 patent”) and its nonexclusive licensee, Bicon, sued The Straumann Company and Institut Straumann AG(collectively “Straumann”) for patent infringement based on Straumann’s sale of two devices that were used in the preparation of crowns for dental implants. Diro and Bicon alleged that Straumann’s devices infringed claim 5 of the ’731 patent. After construing the claim, the district court granted SJ of noninfringement to Straumann. The district court further held that the evidence proffered in the course of the SJproceedings did not justify finding Bicon as an exclusive licensee with standing to sue, even as a coplaintiff with the patent owner, Diro.

On appeal, the Federal Circuit rejected Diro’s argument that the claim was not limited by an “abutment” recited in the preamble. The Court held that the claim preamble recited essential elements of the invention pertaining to the structure of the abutment. It also concluded that the preamble had not been limited merely to stating the purpose or intended use of the invention because the claim body referred back to abutment features described in the preamble. It also indicated that if the claim was not limited to the particular abutment described in the preamble, several limitations in the body of the claim that referred to the abutment would be rendered meaningless.

Having affirmed that the claim preamble limited the scope of the claim, the Federal Circuit then concluded that the accused device did not infringe. Specifically, the Court concluded that the abutment in Straumann’s device did not have a “frusto-spherical” surface as required by the claim preamble, but instead had a frusto-conical surface. The Court also concluded that there was no infringement under the doctrine of equivalents because “[a] claim that contains a detailed recitation of structure is properly accorded correspondingly limited recourse to the doctrine of equivalents.” Slip op. at 17. That principle is especially true in this case, the Court explained, “where the claim recites a particular shape for the basal portion of the abutment that clearly excludes distinctly different and even opposite shapes.” Id. The Court thus concluded that the shapes in the accused device were contrary to, and thus excluded by, the shapes recited in the claim and therefore could not be an equivalent.

The Federal Circuit also affirmed that Bicon lacked standing. The only evidence Bicon cited in support of its contention as an exclusive licensee was the testimony of its president, who testified that Bicon’s right to practice the patent was “exclusive at the moment,” and explained that this meant it was “exclusive” only in the sense that Bicon was the only licensee at the time. The Federal Circuit concluded this evidence failed to show that Bicon was an exclusive licensee with the right to exclude other prospective licensees.