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Tissue Dissection Patent Invalid

March 07, 2003
Shaffer, Robert F.

Decision icon Decision

Last Month at the Federal Circuit - April 2003

Judges: Dyk (author), Bryson, and Gajarsa]

In Williams v. General Surgical Innovations, Inc., No. 02-1474 (Fed. Cir. Mar. 7, 2003) (nonprecedential decision), the Federal Circuit affirmed a district court’s decision granting SJ that the patent was properly held invalid under 35 U.S.C. § 102(b). Plaintiffs had admitted to a commercial use and sale before the critical date; therefore, the sole issue on appeal was simple: whether the asserted claims of U.S. Patent No. 5,655,545 (“the ‘545 patent”) were entitled to the priority date of an earlier-filed copending application, which later issued as U.S. Patent No. 5,258,026 (“the ‘026 patent”).

The ‘545 patent is directed to improved surgical methods for creating a space or cavity between a patient’s tissues (e.g., between skin and the underlying muscle). In the disclosed method, a surgeon makes an incision into the body and inserts a hollow tissue expander into the incision. Once the expander is in position, fluid is forced into the expander, which causes it to expand and separate the tissues between which it is positioned. The specification of the ‘545 patent also describes in detail the use of the disclosed method for performing endoscopic breast augmentation mammoplasty. The patent states, however, that the description of breast surgery is a “special case” of the use of a hollow, expandable tissue expander for tissue dissection and the formation of a space, cavity, or pocket.

Since the asserted claims of the ‘545 patent relating to dissection all require that the tissue expander be removed upon completion of surgery, General Surgical Innovations, Inc. filed for SJ, asserting that the ‘026 patent did not describe a step of removing the hollow member on completion of surgery, but instead described only a procedure wherein the hollow member is left in place in the body as an implant.

Plaintiffs countered that the ‘545 patent was entitled to the earlier priority date because there is nothing in the patent that requires the surgeon to leave the tissue expander in the body. The district court disagreed and granted SJ of invalidity.

On appeal, the Federal Circuit also found this argument unpersuasive, concluding that the absence of a requirement to leave the expander in place is not a teaching to remove it. Because the Court found that the ‘026 patent does not, on its face, disclose the removal of the tissue expander, Plaintiff was not entitled to the earlier priority date. And because Plaintiff already admitted to public uses and sales of the claimed invention prior to the ‘545 patent’s critical date, the Court found that SJ of invalidity was indeed proper.

[Michael Jakes of our firm successfully represented Appellee, Origin Med Systems, Inc.]