Construing Claim Constructions

By Jason Rantanen

Cordis Corporation v. Boston Scientific Corporation (Fed. Cir. 2011) Download 10-1311 -1316-1
Panel: Bryson, Mayer, and Gajarsa (author)

Stent
Cordis v. BSC
turns on an interpretation of a construction of the claim term "undulating."  In this case, Cordis obtained a jury verdict of infringement of Patent No. 5,879,370 against Boston Scientific Corporation.  Prior to trial, the district court construed the term "undulating" to mean "rising and falling in waves, thus having at least a crest and a trough."  Slip Op. at 11.  After Cordis obtained its favorable verdict, BSC renewed its motion for judgment as a matter of law on noninfringement, arguing that "Cordis inappropriately altered the parties' and the court's understanding of the term 'undulating'," and that under the "intended" construction the evidence presented at trial could not support a conclusion that this claim element was met by the accused product.    Slip Op. at 11.  The district court granted BSC's motion and Cordis appealed.

Construing Constructions: On appeal, the CAFC confirmed the propriety of BSC's argument.  "The question here is whether BSC did, in fact, seek to alter the district court’s claim construction," a construction Cordis did not challenge.  Slip Op. at 12.  It did not.  "No rule of law restricted BSC from seeking to clarify or defend the original scope of its claim construction."  Slip Op. at 12.  However, "because BSC did not object to the court’s jury instruction regarding the construction of the term “undulating,” “[t]he verdict must be tested by the charge actually given [under] the ordinary meaning of the language of the jury instruction,” Hewlett-Packard, 340 F.3d at 1321."  Id.

In deciphering the "ordinary meaning" of the district court's construction, the CAFC first turned to a general purpose dictionary definition of 'waves' to conclude that 'crest' and 'trough,' "as used in the district court's claim construction, implicate changes of direction, with the curve extending beyond the point of inflection."  Slip Op. at 13.  Although Cordis cited expert testimony and dictionary entries of its own, the CAFC was not persuaded.  The CAFC also looked to the prosecution history, which further suggested a construction of "undulating" that meant more than just a single curve. 

Applying this interpretation of the district court's claim construction, the CAFC concluded that Cordis had indeed failed to offer substantial evidence of infringement.

Inequitable conduct: This case was involved in a prior appeal, Cordis Corp. v. Boston Scientific Corp., 188 F. App’x. 984, 985 (Fed. Cir. 2006), in which the CAFC addressed a district court finding of inequitable conduct.  In that appeal, the CAFC affirmed the materiality of the conduct at issue but remanded to the district court for further findings of fact relating to intent.  On remand, the district court reached an alternate conclusion, deciding that, on reflection, the evidence of record failed to support a finding of deceptive intent under a clear and convincing standard.  On appeal, the CAFC affirmed the finding of no inequitable conduct, noting in particular the deference given to district courts on issues of credibility.

***

Interpretations of constructions raise a difficult issue for the Federal Circuit, and have implications for litigation predictability.  While the panel in this case did not directly identify the standard of review it applied to the district court's interpretation of the construction, the analytic structure of the opinion follows the same approach that the CAFC has traditionally employed when construing claims generally: look at the evidence and arrive at its own conclusion, i.e. de novo.  In this instance, the methodology used by the panel seems to harken back to the Texas Digital line of claim construction: start by determining the ordinary meaning of a word using tools such as dictionaries, then look to the intrinsic evidence to see if it compels a different result.  Perhaps this approach may be more defensible in light of the subject being interpreted, but it seems at odds with the principles announced in Phillips.

The interpretation issue in this case also raises a possible red flag against the concept of routine interlocutory review of claim constructions, a proposal frequently offered as reducing litigation costs and enhancing the predictability of litigation.  If a claim construction itself is subject to a subsequent interpretation, are efficiencies truly added by having the CAFC offer an early construction?  There is a real possibility that, if such a proposal were implemented, the result would be a rise in appeals involving not just claim constructions, but interpretations of claim constructions.

7 thoughts on “Construing Claim Constructions

  1. 6, Not exactly.  It was about order specifically, just as the OP stated.  The initial construction was always with respect to the specification.  The spec was not used as confirmation, as in the present case.  That was the order specified in the "overruled" case.
     
    As to about construction…construction, this is just gibberish. 

  2. Bloom: “in my experience the claim construction is very often dispositive, or at least dispositive as to large chunks of the case.”

    +1

  3. The interpretation issue in this case also raises a possible red flag against the concept of routine interlocutory review of claim constructions, a proposal frequently offered as reducing litigation costs and enhancing the predictability of litigation.

    Maybe a yellow flag. Sure, there will always be a few cases where the outcome from Markman is still a little malleable, but in my experience the claim construction is very often dispositive, or at least dispositive as to large chunks of the case.

  4. Wasn’t Phillips about claim construction rather than claim construction construction? And wasn’t Phillips more about which information source mattered most, as opposed to the physical order in which the analysis was performed?

  5. ” In this instance, the methodology used by the panel seems to harken back to the Texas Digital line of claim construction: start by determining the ordinary meaning of a word using tools such as dictionaries, then look to the intrinsic evidence to see if it compels a different result. Perhaps this approach may be more defensible in light of the subject being interpreted, but it seems at odds with the principles announced in Phillips.”

    Indeed, and thanks for pointing this out. Even though the specification here is consistent, the problem was that the court reached for the dictionary first. This approach was overruled in Philips and its reemergence here is troubling.

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