Even though the claim recited the absence of structure, or a hole, the U.S. Court of Appeals for the Federal Circuit found the claim language articulated sufficient structure to perform the recited functions, fell outside the ambit of § 112 ¶ 6 and required a construction that presented a genuine issue of material fact as to infringement. TriMed, Inc. v. Stryker Corp., Case No. 07-1327 (Fed. Cir., Jan. 29, 2008) (Moore, J.).

TriMed owns U.S. Patent No. 5,931,839 (the ’839 patent) directed to implantable devices for fixing bone fractures using screws, pins and a plate. The plate has holes on one end for receiving the screws and on the other end for receiving the pins. In one embodiment of the ’839 patent, the bone fracture is secured by placing the plate over the fracture, extending from a stable bone to the fractured bone fragment. The screws are inserted through the holes on the one end to secure the plate to the stable bone, and the pins are inserted through the holes on the other end at an angle so that, when the pins are inserted through the bone, the pins extend through the fractured bone fragment, traverse the fracture and extend into the stable bone. Stryker manufactures and sells wrist fracture fixation devices that operate in essentially the same manner and with essentially the same structure as that described in the ’839 patent.  

Claim 1 states in part, “said holes in said plate providing means for allowing the pin to slide axially therein but preventing compression across the fracture, and stabilizing said near end of the pin against displacement in the plane of the plate.” The district court found this claim language invoked § 112 ¶ 6 and should be construed to require the holes in addition to another structure that performs the two recited functions of allowing the pin to slide and stabilizing the near end of the pin. Because the Stryker device did not include another structure that performed the recited functions, the district court granted Stryker’s motion for summary judgment of non-infringement.

On appeal, Stryker argued that the prosecution history supported a means-plus-function construction of the claim and required an additional structure to perform the recited functions. In an interview summary during prosecution of the ’839 patent, TriMed stated that agreement was reached that recitation in the claim of the functions “in a means-plus-function format and better defining the holes of the plate would distinguish over the prior art.” TriMed subsequently amended Claim 1 to include the disputed claim language, which included a recitation of the term “means” in conjunction with the two recited functions.

Notwithstanding the above correlation between the interview summary and the amended claim language, the Federal Circuit disagreed that the language should be governed by § 112 ¶ 6. The Court explained that stating “use of means-plus-function language would help overcome prior art does not magically transform language that clearly does not meet our legal tests for § 112 ¶ 6 into means-plus-function language.” The Court stated that, while the term “means” was used in the claim amendment, the remarks accompanying the amendment indicated that TriMed “intended for holes by themselves to constitute structure sufficient” for performing the recited functions. The Court further noted that TriMed submitted two declarations supporting the assertion that the functions could be performed solely by the holes. Based on this new construction of the claims, the Court reversed the district court’s grant of summary judgment and remanded the case to the district court for further proceedings.

Practice Note: It is noteworthy that the Court placed such an emphasis on the remarks accompanying the amendment. Notwithstanding the strong correlation between the statement in the interview summary and the amended claim language, the Court gave significant weight to the self-serving remarks. This case serves to remind us that such statements can sometimes be at least partially influential.