The Boundary of a Claim Limitation Can Vary Across Different Independent Claims

In Vascular Solutions LLC v. Medtronic, Inc., No. 24-1398 (Fed. Cir. September 16, 2024), the Federal Circuit vacated the district court’s finding of all asserted claims as indefinite based on the construction of “substantially rigid portion” and remanded the case for further proceedings.

Vascular sued Medtronic for infringement of 46 claims across 7 patents directed to a coaxial guide catheter, all of which descended from a common application. After successfully defending the patents in IPRs, Vascular filed a second request for preliminary injunction, which the district court denied because it found the claims indefinite. The district court reached this conclusion because it construed the term “substantially rigid portion” consistently across all patents, which resulted in the “substantially rigid portion” having a boundary that differed depending on the claim. The district court concluded that the differing boundaries made the asserted claims “mutually exclusive” of one another, thus rendering the term indefinite. Vascular appealed.

The Federal Circuit vacated the indefiniteness finding and remanded for claim construction on a claim-by-claim basis. The Federal Circuit explained that although there is a presumption that the same term has the same meaning across different claims, the claims may indicate otherwise to a person skilled in the field. In that case, there can exist claim-specific constructions that differ depending on the context in which the term is used. Here, the Federal Circuit determined that the district court’s “mutually exclusive” finding “forced [it] into a later conclusion of indefiniteness, which it did not have to do.” Instead, a proper claim-by-claim construction could lead to a “functional” construction that does not need to specify any boundary, so long as the claimed term comports with the function. The Federal Circuit’s opinion clarified that a term having differing boundaries does not necessarily make claims mutually exclusive; rather, the boundary, which may vary between claims, can be construed consistently according to its function without being indefinite.