The U.S. Court of Appeals for the Federal Circuit recently affirmed a narrow claim construction by the International Trade Commission (ITC) and the resultant finding of non-infringement. Erbe Elektromedizin GmbH et al. v. ITC, Case No. 08-1358 (Fed. Cir., May 19, 2009) (Dyk, J.).
Erbe’s patent covers the performance of electrosurgery by argon plasma coagulation (APC), using a probe in combination with an endoscope. Erbe and Canady compete in selling APC probes. Erbe alleged that Canady’s importation and sale of its probes constituted contributory infringement and induced infringement. Erbe asserted that Canady sold its probes to hospitals knowing that these hospitals combined the probes with endoscopes, as well as that the use of the combined probes and endoscopes directly infringed the asserted claims of Erbe’s patent.
All of the claims at issue required that there be a plurality of “working channels,” which the administrative law judge (ALJ) defined as “a channel through which a device that performs work may be inserted.” On appeal, the parties disputed whether or not the definition contained within its scope a channel with fixed optics. If fixed optics could not be a “working channel,” then the combination of Canady’s probes with an endoscope could not infringe, because they would contain only one “working channel.”
The Court, after examining the specification, determined that having fixed optics constitute a “working channel” was inconsistent with several figures in the specification that showed fixed optics but did not label them as “working channels.” This conclusion was also consistent with the written specification, which did not refer to the fixed optics as “working channels.” Finally, the Court examined the dictionary definition of “working” and determined that it suggested that a “working channel” could not be stationary, as were the fixed optics described in the specification. Accordingly, the Court found that the ITC construction was correct and that Erbe’s patent was not infringed.
Practice Note: The Federal Circuit’s standard for review of the International Trade Commission, as an administrative agency, is slightly different from that for reviewing a district court. The Federal Circuit reviews both district court and ITC claim construction de novo, but under the Administrative Procedure Act (APA) reviews ITC rulings of law for correctness and findings of fact for substantial evidence.