Affirming a grant of summary judgment that two patents covering automated biopsy instruments were not infringed, the U.S. Court of Appeals for the Federal Circuit held that a district court had properly construed the claims and that the properly construed claims did not read on the accused products. Baran v. Medical Device Techs., Inc., Case No. 10-1058 (Fed. Cir., Aug. 12, 2010) (Bryson, J.)
Baran brought a patent infringement action against Medical Devices Technologies, Inc. (MDTech), asserting infringement of two patents related to automated biopsy instruments. The district court construed the terms “detachable” and “releasably” of the first patent to require separation of components “without loss or damage.” The MDTech biopsy instruments were single-use instruments that would be damaged by separation of the components. The court construed the means-plus-function claim language of the second patent to require that a single component retain and release a biopsy guide, finding that the MDTech biopsy instruments used a structure that was substantially different than the structure disclosed in the patent.
The Federal Circuit began its analysis of the claim construction by looking at the language of specification of the first patent-in-suit. The Court noted that two distinct embodiments were present, a single-use device and a reusable device. The specification described the reusable device as having a stylet “detachable engaged” to a support rod in a way that it can be easily removed, and that the cannula is screwed onto a spring guide, so that it may also be easily removed. Conversely, the embodiment showing the single-use device described the stylet as being “adhesively bonded” within a recess of the support rod and the cannula as adhesively mounted within a recess of the spring guide.
Further, the first patent-in-suit only used the term “detachably” within the specification when describing the differences between the reusable embodiment and the single-use embodiment. Thus, the Court determined that the patentee’s use of “detachable” only in conjunction with the reusable embodiment leads to the conclusion that “detachable” requires the “without loss or damage” limitation as determined by the district court. The Federal Circuit also concluded that “releasably” and “detachable” have the same meaning, as the patentee used the terms interchangeably within the specification.
Turning to the second patent-in-suit, the Federal Circuit upheld the district court’s determination that the structure within MDTech’s biopsy instruments was not equivalent to the structure disclosed in the patent. The Federal Circuit ruled that the claim language requires both a release function and a retention function. Comparing how the structures disclosed in the patent and the accused MDTech biopsy instruments accomplish these tasks, the Court determined opposite principles were utilized. The patent-in-suit discloses a rigid lever that pivots on a fulcrum to activate the device, while the accused MDTech biopsy instruments have a tab that flexes to activate the device. Thus, the Court concluded that the structure in the accused biopsy instruments functions in an opposite manner as the structure in the second patent-in-suit and held that a reasonable juror could not find that the accused instruments had equivalent structure.
Practice Note: A claim term described in conjunction with only one of several embodiments disclosed within the specification may be interpreted in a manner that excludes the claim from reading on the other embodiments in the specification.