Friday, June 27, 2014

Hill-Rom v. Stryker: reversal because the district court’s judgment of non-infringement was premised on erroneous claim constructions

Hill-Rom v. Stryker gives various statements of law

“[T]his court has expressly rejected the contention
that if a patent describes only a single embodiment, the
claims of the patent must be construed as being limited to
that embodiment.” Liebel-Flarsheim, 358 F.3d at 906
(listing cases rejecting attempts to import limitations
from the specification into the claims). The court continued,
“[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using ‘words or expressions
of manifest exclusion or restriction.’” Id. (quoting
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327
(Fed. Cir. 2002)).

As to disavowal

Disavowal requires that “the specification [or prosecution
history] make[] clear that the invention does not
include a particular feature,” SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
(Fed. Cir. 2001), or is clearly limited to a particular form
of the invention, Edwards Lifesciences LLC v. Cook Inc.,
582 F.3d 1322, 1330 (Fed. Cir. 2009) (“[W]hen the preferred
embodiment is described in the specification as the
invention itself, the claims are not necessarily entitled to
a scope broader than that embodiment.”) (quotation
omitted). For example, we have held that disclaimer
applies when the patentee makes statements such as “the
present invention requires . . . ” or “the present invention
is . . . ” or “all embodiments of the present invention
are . . . .”

Hill-Rom looks good

There is no such disclaimer or lexicography here.
There are no words of manifest exclusion or restriction.
The patents-in-suit do not describe the invention as
limited to a wired datalink. There is no disclosure that,
for example, the present invention “is,” “includes,” or
“refers to” a wired datalink and there is nothing expressing
the advantages, importance, or essentiality of using a
wired as opposed to wireless datalink. Nor is there language
of limitation or restriction of the datalink

The doctrine of claim differentiation arises

“[T]he presence of a
dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found
in the independent claim.” Liebel-Flarsheim, 358 F.3d at
910. This presumption is especially strong where the
limitation in dispute is the only meaningful difference
between an independent and dependent claim. Id. Of
course, claim differentiation is not a hard and fast rule,
and the presumption can be overcome by a contrary
construction required by the specification or prosecution
history. Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d
1361, 1369 (Fed. Cir. 2005).

The matter of a functional definition arose

The dissent argues that our construction is incorrect
because it defines “datalink” in functional terms. But, as
we have previously explained, defining a particular claim
term by its function is not improper and “is not sufficient
to convert a claim element containing that term into a
‘means for performing a specified function’ within the
meaning of [35 U.S.C. § 112(6)].” Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).
Indeed, “[m]any devices take their names from the functions
they perform. The examples are innumerable, such
as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Id.
There is nothing improper about defining “datalink” as a
link that conveys data.

And, of knowledge at the time of filing:

Next, the dissent contends that a person of ordinary
skill could not have understood “datalink” to include
wireless connections because there is no evidence that
wireless connections were known to persons of ordinary
skill in the art at the relevant time. To the contrary, the
record evidence establishes that wireless connections
were known and used by persons of ordinary skill during
the relevant time frame. The Background of the Invention
of the patents-in-suit describes a prior art patent
disclosing a “personnel locating system” using “infrared
transmitters,” i.e., wireless transmitters, to transmit a
“pulse-coded signal which corresponds to the identity of
the wearer.” ’038 patent col. 1 ll. 42–46 (describing U.S.
Patent No. 4,275,385). This is an unequivocal disclosure,
in the patent itself, of wireless datalinks. Furthermore,
Hill-Rom’s expert testified that at the time of the patent’s
filing, a person of ordinary skill would have understood
“datalink” to include a wireless connection.

Judge Reyna dissented

I dissent for three reasons. First, the intrinsic record
is devoid of any description of a wireless “datalink” structure.
Second, credible extrinsic evidence belies the majority’s
conclusion that “datalink” encompasses wireless
communications. Third, the majority relies on expert
testimony that is conclusory and unreliable.

Of interest

Importantly, the expert report never expressly states
that one of ordinary skill in the art in 1993 would understand
that a “datalink” encompassed wireless connections.
We have long recognized that, although the understanding
of a claim term can evolve over time, the literal scope
of a patent claim “cannot have different meanings at
different times.” PC Connector Solutions LLC v.
SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005).
The literal scope of a claim is fixed by the meaning of its
terms in the relevant art as of the effective filing date of
the application. Phillips, 415 F.3d at 1313 Cir. 2005)
(“We have made clear . . . that the ordinary and customary
meaning of a claim term is the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective
filing date of the patent application.”). Here, the
patents-in-suit claim priority to an application filed in
1993 and, a proper construction of the claims must be
tethered to that date.


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