Reversing a ruling of infringement, the U.S. Court of Appeals for the Federal Circuit found the defendant’s accused syringe devices lacked a structural element recited in the claims and the district court had incorrectly construed the patent claims. Becton, Dickinson and Company v. Tyco Healthcare Group, L.P., (now known as Covidien PLC) Case Nos. 09-1053, -1111 (Fed. Cir., July 29, 2010) (Mayer, J.) (Gajarsa, J., dissenting).

Becton, the assignee of the patent in suit directed to a safety shield needle device, filed suit against Tyco, alleging infringement. In its first set of interrogatories, Tyco called for an infringement claim chart explaining how each claim element was met by each accused Tyco product. In response, Becton identified hinges in Tyco’s devices as satisfying the claimed “spring means” limitation. Becton’s expert report explained how the hinges in the hinged arm of Tyco’s devices functioned as springs. Tyco then moved for summary judgment, arguing that the spring means limitation required a spring separate from the hinged arm structure, which was another limitation recited in the claims. After the district court denied Tyco’s motion, the jury found literal infringement. Tyco then moved for a new trial, arguing that Becton had improperly changed its theory of infringement during trial. The district court agreed and ordered a new trial. Prior to the start of the second trial, Tyco filed a reexamination for the patent based on a Dutch patent publication. During reexamination, the examiner found the term “spring means” was a means-plus-function limitation and required the spring means to be a separate structural element from the hinged arm. However, the district court denied Tyco’s motion to adopt the U.S. Patent and Trademark Office’s construction. The jury again found infringement and the district court denied Tyco’s request for a judgment as a matter of law (JMOL). Tyco appealed.

The Federal Circuit reversed, agreeing with Tyco that its products did not literally infringe the patent because they lacked the required spring member. The Court concluded that Becton’s argument that the spring means and the hinged arm can be the same structure “renders the asserted claim nonsensical,” because the claim recites the spring means as being connected to the hinged arm.

Judge Gajarsa dissented, stating that the majority avoided the issue of whether 35 U.S.C. § 112, ¶ 6 governed the claim construction of the “spring means” limitation. In Judge Gajarsa’s view, the use of two terms in a claim required that they connote a different meaning, but not necessarily a different structure, and that, in the absence of evidence requiring two structures, the claim language can be interpreted broadly to read upon an accused product containing the two claim terms, regardless of whether those elements are encompassed in one or two structures.