July 2013
Disclaimer Made During Prosecution of a Predecessor Patent Does Not Carry Forward If the Claim’s Substance Has Materially Changed
| Judges: Rader, Dyk (author), Wallach |
| [Appealed from D. Minn., Judge Schiltz] |
In Regents of the University of Minnesota v. AGA Medical Corp., No. 12-1167 (Fed. Cir. June 3, 2013), the Federal Circuit affirmed the district court’s grants of SJ, holding that U.S. Patent No. 6,077,291 (“the ’291 patent”) was not infringed and that the asserted claims of U.S. Patent No. 6,077,281 (“the ’281 patent”) were invalid as anticipated.
Regents of the University of Minnesota (“the University”) own the ’291 and ’281 patents, which protect medical devices for repairing heart defects. Specifically, the ’291 and ’281 patents describe “transcatheter septal occluders” designed to block holes in the septum. The claimed devices consist of two occluding disks, which attach to one another, collapse, and thread through a catheter into the heart. When the catheter is withdrawn, the disks expand and block the hole.
The University sued AGA Medical Corporation (“AGA”) for infringement of both patents. Following a Markman hearing, the district court partially granted AGA’s motion for SJ of noninfringement as to the ’291 patent, stating that no reasonable jury could find AGA’s one-piece mesh device infringing.
Several months later, the district court granted AGA’s motion for SJ of invalidity for claims 1, 4, and 5 of the ’281 patent.
“We have held that it is permissible for a patentee to take a different approach to claiming an invention in subsequent patents, either by adding limitations or by altering the claim’s format. When the patentee does so, however, we cannot rely on the dubious argument that dissimilar claims present equivalent issues of validity, or that the applicant’s disclaimer with respect to one claim would be equally applicable to another claim.” Slip op. at 26.
The Court first noted that the claim language supported a separateness requirement. Several of the claims describe “first and second disks” or “first and second occluding disks” that are “affixed,” “connected,” or “joined” to form a “conjoint” structure. As the Court highlighted, “one does not ordinarily speak of the parts of a unitary structure as being ‘affixed’ or ‘joined’ or ‘connected’ to each other.” Slip op. at 7 (quoting Regents of the Univ. of Minn. v. AGA Med. Corp., 660 F. Supp. 2d 1037, 1044 (D. Minn. 2009)).
In addition, the ’291 patent specification echoed the separateness requirement. It does not teach a single-piece embodiment; rather, it specifically states that “every single embodiment disclosed in the ’291 patent’s drawings and its written description is made up of two separate disks.” Id. at 8 (quoting Regents, 660 F. Supp. 2d at 1044). The specification also discloses ways of affixing the two disks and describes a possible third piece to be disposed between the two disks. The Court reasoned that these disclosures necessitate an understanding that the device consists of physically distinct structures.
Moreover, the prosecution history similarly emphasized the need for distinct structures. During prosecution, the University distinguished its invention over the prior art by emphasizing the “two disks” that allowed for more advantageous assembly. The ’291 patent was ultimately granted because of the limitation that “a first membrane is connected to a central portion of a second membrane.” Id. at 10-11 (citation omitted).
Finally, the ordinary meaning of the terms also supported the separateness requirement. Analyzing timely dictionary definitions of “affixed” and “conjoint,” the Court concluded that “when a physical object is described as having been ‘affixed,’ ‘joined,’ ‘connected,’ or ‘conjoin[ed]’ to another object, it means that those objects were previously separate.” Id. at 12-13 (alteration in original). The Court discarded the University’s argument that the district court improperly imported process limitations into the claims, stating that “affixed” and “conjoint,” when read in the context of the ’291 patent, properly impose a structural limitation.
This construction indisputably excluded AGA’s device, which was molded from a single tubular piece. AGA’s literature describing the invention as having two disks could not place the accused device within the claims’ scope. Thus, accepting the district court’s claim construction, the Federal Circuit held that AGA’s accused device did not infringe the ’291 patent.
Turning to the validity of the ’281 patent, the Federal Circuit held it invalid as anticipated. Claim 1 of the ’281 patent recites a nontraditional means-plus-function limitation. Under 35 U.S.C. § 112, ¶ 6, the Court evaluated the corresponding structures in the specification and all equivalents thereof. It concluded that the prior art’s radial, umbrella-like frame was an equivalent of the patented device’s peripheral frame structure. The prior art’s “‘springy’ radial frame performed the same function as the peripheral frame structure—‘mov[ing] [the device] from a compressed to an expanded orientation’—in substantially the same way, with substantially the same result.” Id. at 18-19 (alterations in original) (quoting Regents of the Univ. of Minn. v. AGA Med. Corp., 835 F. Supp. 2d 711, 720 (D. Minn. 2011)).
Thus, the primary question remaining on appeal was whether the University disclaimed the prior art construction during the prosecution of a predecessor patent. The Court held that, even though the University “effected a clear and unambiguous disclaimer of [the] radial frame with respect to the [claim] language,” id. at 21, the disclaimer did not carry forward to the means-plus-function language used in the ’281 patent.
Even though the predecessor and the ’281 patent shared similar claim language, the substance of each claim’s scope was materially different. Specifically, the limitation requiring “[a] septal defect closure device comprising first and second occluding disks, each disk comprising . . . an elastically deformable frame extending along and attached adjacent to the periphery of the membrane,” was not carried over into the ’281 patent. Id. at 26 (alterations in original) (citation omitted). Because the ’281 patent “contain[ed] a different claim limitation than its predecessors and capture[d] different subject matter,” the disclaimer did not apply. Id. at 27. Further, the University did not argue that the radial frame was ineffective during prosecution. Its focus was on distinguishing the prior art based on assembly difficulties. This justification had no relevance on appeal and did not support applying the disclaimer to the ’281 patent.
As a final note, the Court dismissed the University’s arguments related to “in communication with” and “at least a substantial portion to.” While the University “style[d] its arguments as challenges to the district court’s application of this claim construction,” in reality, the arguments were indirect objections to the claim construction itself. Id. at 28. Because those issues were never raised before the district court, they were waived and could not be addressed on appeal.
Accordingly, the Court affirmed the district court’s grants of SJ, finding the ’291 patent noninfringed and the ’281 patent invalid as anticipated.
*Sydney R. Kestle is a Summer Associate at Finnegan.
