In the construction of a means-plus-function claim element under 35 USC § 112, ¶ 6, the concept of incorporation by reference is insufficient to include a structure in a prior art reference as a corresponding structure.

The district court found infringed patents that were directed to an introducer device for doctors to place and remove catheters and pacemaker leads into blood vessels during surgical procedures.

The Federal Circuit found that the record did not support the district court’s claim construction, vacated the finding of infringement, and remanded for further proceedings in light of the correct claim construction. Specifically, the Federal Circuit found error in expanding the definition of the term “score line” to include structures not disclosed in the specifications of the patents-in-suit. The district court should not have included as corresponding structures the structures disclosed in a laundry list of prior art references found in the specifications of the patents-in-suit. “Simply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all the structures disclosed in those references.”

The Federal Circuit remanded for further proceedings under the proper construction of the term “score lines” to ascertain “the structural equivalents of the express structure in the specification corresponding to the claimed function.”

A copy of the opinion can be found here.