Saturday, July 31, 2010

Tyco wins over Becton, but where was the "means plus function" analysis?

Of the literal infringement matter:

To establish literal infringement, “every limitation set forth in a claim must be found in an accused product, exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). Thus, “[i]f any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Amgen Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1374 (Fed. Cir. 2009). Tyco argues that its Monoject Magellan™ safety needle and blood collection devices do not literally in-fringe the ’544 patent because they lack the added spring member required by the asserted claims. We agree. The unambiguous language of the asserted claims, as well as the disclosure in the specification, requires an added spring element that moves the safety guard toward the tip of the needle.3


Where a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct component[s]” of the patented invention. Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404-05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two ele-ments “logically cannot be one and the same”). There is nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”).

Becton's position was nonsense:

Indeed, Becton’s assertion that the spring means and the hinged arm can be the same structure renders the asserted claims nonsensical.

If the hinged arm and the spring means are one and the same, then the hinged arm must be “connected to” itself and must “extend between” itself and a mounting means, a physical impossibility. A claim construction that renders asserted claims facially nonsen-sical “cannot be correct.” Schoenhaus v. Genesco, Inc., 440 F.3d 1354, 1357 (Fed. Cir. 2006); see Bd. of Regents v. BENQ Am. Corp., 533 F.3d 1362, 1370 (Fed. Cir. 2008) (refusing to adopt a claim construction that “would effect [a] nonsensical result”).

IPBiz: But recall the wheelbarrow in Radio Steel!

Means plus function issues arising from the claim language "spring means" were disposed of in a footnote:

Tyco also contends that a separate spring is required because the spring means limitation is in means-plus-function format, see 35 U.S.C. § 112, ¶ 6, and the only structures disclosed in the specification for perform-ing the recited function of moving the guard toward the tip of the needle are added spring members. We need not reach this argument, however, because we conclude that—regardless of whether the asserted claims invoke section 112, paragraph 6—an added spring element is required by the plain language of the claims.


Furthermore, if the hinged arm and spring means are not separate structures, then the asserted claims are clearly invalid as obvious over the prior art. See Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712 (Fed. Cir. 1990) (“[C]laims are generally construed so as to sustain their validity, if possible.”).

Things do not go well for Becton in the decision:

In its quixotic quest to establish infringement of the ’544 patent, Becton argues that Tyco’s accused needles do, in fact, have springs that are separate structures from the hinged arm. In support, it contends that the hinges in the hinged arm are separate structures from the hinged arm itself. This argument is unavailing.

There was a theory of infringement during manufacturing:

Because Becton’s argument—that a version of Tyco’s products that existed temporarily during the manufacturing process might infringe the ’544 patent—was not properly raised during discovery, the district court did not abuse its discretion in precluding Becton from presenting evidence regarding this theory at trial.10 See Acumed LLC v. Advanced Surgical Servs., Inc., 561 F.3d 199, 211 (3d Cir. 2009) (In order to show that a trial court abused its discretion in issuing an evidentiary ruling, “an appellant must show that the court’s decision was arbitrary, fanciful or clearly unrea-sonable.” (citations and internal quotation marks omit-ted)).

There was a dissent which began:

The majority avoids the critical issue upon which this decision turns; i.e., whether 35 U.S.C. § 112, ¶ 6 governs the claim construction of the “spring means” limitation. In a brief footnote, the majority sweeps and brushes aside the means-plus-function analysis as unnecessary in light of the “plain language of the claims.” Maj. Op. 8 n.3. Without having analyzed the scope of the claims, the majority somehow concludes that the claim language covers only devices having separate “spring means” and “hinged arm” structures.


The majority opinion injects ambiguity into the claims and fails to construe the claims as required by our case law. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996). It is impossible for the majority to determine the scope of the claims without undertaking a means-plus-function analy-sis. Accordingly, the majority’s claim construction is premised upon an inadequate foundation.
If a claim element “contains the word ‘means’ and re-cites a function,” there is a presumption that the claim is in means-plus-function form. Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000).


The majority’s limitation requiring two separate structures is not supported anywhere in the intrinsic or extrinsic record. Such a claim interpretation violates our established tenants of claim construction prohibiting the court from reading extraneous limitations into the claims. E.I. du Pont de Nemours & Co. v. Phillips Petroleum, 849 F.2d 1430, 1433 (Fed. Cir. 1998) (“It is entirely proper to use the specifica-tion to interpret what the patentee meant by a word or phrase in the claim . . . . But this is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.”) (citation omitted).

IPBiz query: did anybody cite-check this? The Du Pont case was in 1988, not in 1998!


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