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Comments Distinguishing Prior Art During Prosecution Prevent Infringement

October 09, 2001

Decision icon Decision

Last Month at the Federal Circuit - November 2001

Judges: Bryson (author), Mayer, and Dyk

In Ballard Medical Products v. Allegiance Healthcare Corp., No. 00-1393 (Fed. Cir. Oct. 9, 2001), the Federal Circuit affirmed a SJ that Allegiance Healthcare Corporation and Sorenson Critical Care, Inc. (collectively “Sorenson”) did not infringe Ballard Medical Products’ (“Ballard”) patents on ventilating and aspirating tracheobronchial catheters.

The claimed tracheobronchial catheter both ventilates and aspirates a patient’s breathing passages. The claimed device contains a valve that should remain closed during ventilation, but may be opened to allow for aspiration of (i.e., removal of fluid from) a patient’s lungs. The Sorenson device also serves to ventilate and aspirate the lungs, but has a plunger valve that controls the aspiration function.

The district court granted Sorenson’s motion for SJ of noninfringement based on its construction of a means-plus-function limitation found in the asserted claim.

On appeal, Ballard argued that the district court did not conduct a proper claim-construction analysis because it did not construe the meaning of each claim limitation. The parties had made arguments at a pretrial conference regarding SJ and claim-construction issues. The Federal Circuit noted that the district court did not need to follow any specific procedure in its claim-construction analysis and, as long as its reasoning was sound, the Federal Circuit would not overturn its claim-construction analysis. The Federal Circuit stated that if a district court considers one issue to be dispositive, it may cut to the heart of the matter and need not exhaustively
discuss all other issues presented by the parties. As long as the trial court construes the claims to the extent necessary to determine whether the accused device infringes, it may approach the task in any way it deems best.

Ballard also argued that the district court had mistakenly found that a means-plus-function valve element of the claims did not read on the accused device. The Federal Circuit agreed with the district court’s reliance on the prosecution history in construing the claims and finding no infringement. In particular, the Court agreed that arguments made to distinguish prior art prevented Ballard from now arguing that such structure infringes.