Becton, Dickinson and Co. v. Tyco Healthcare Group (Fed. Cir. 2010)
Tyco appealed a jury verdict that its safety needles infringed BD’s US Patent No. 5,348,544. The claims require a “spring means” that is “connected to said hinged arm” and is designed “for urging said guard along said needle cannula.”
On appeal, the Federal Circuit reversed the infringement decision based on claim construction — holding that as a matter of English-language-logic, the claims require a spring and hinged arm that are structurally distinct.
The unequivocal language of the asserted claims . . . requires a spring means that is separate from the hinged arm. . . . Where a claim lists elements separately, “the clear implication of the claim language” is that those elements are “distinct component[s]” of the patented invention. (Quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)). . . There is nothing in the asserted claims to suggest that the hinged arm and the spring means can be the same structure.
If the hinged arm and the spring means are one and the same, then the hinged arm must be “connected to” itself and must “extend between” itself and a mounting means, a physical impossibility. A claim construction that renders asserted claims facially nonsensical “cannot be correct.”
Because the hinged arm of the Tyco needles performed the spring function themselves (as opposed to having a separate spring), the court ruled that those needles could not infringe.
In dissent, Judge Gajarsa provides a de-construction of the majority opinion — writing that:
The majority avoids the critical issue upon which this decision turns; i.e., whether 35 U.S.C. § 112, ¶ 6 governs the claim construction of the “spring means” limitation. In a brief footnote, the majority sweeps and brushes aside the means-plus-function analysis as unnecessary in light of the “plain language of the claims.” Without having analyzed the scope of the claims, the majority somehow concludes that the claim language covers only devices having separate “spring means” and “hinged arm” structures. Then applying this simplistic claim construction to analyze the sufficiency of the evidence, the majority improperly overturns the jury’s verdict finding infringement.
Malcolm, please look at the figures. Element 62 is a hinge. It has two parts: a passive hinge element 66; and a hinge spring element 68. Element 68 is a spring. Its rest position is at right angles. There is no stored energy. This is its condition in Fig. 2. Col. 3, ll. 5-7 specifically states that the “biasing means” may comprise “a portion of the hinged joint….”
To guard the needle, the operator presses the arm, forcing the arm to move outwards — thus moving the guard into position to snap down over the needle tip. As the arm moves, the hinge element 68 straightens – to a point — resisting the arm movement. After a certain point, the hinge element 68 acts to bring the arm into a straight arrangement as in Fig. 4. Here it urges the arm which in turn urges the guard along the needle into the “second position,” where the guard snaps over the needle.
Since the specification refers to hinge 62 as a hinge, it is possible to think that one of its elements, hinge spring element 68, is part of the hinge.
Now the Court’s opinion specifically said the hinges were part of the hinged arm and not separate elements. Slip op. at 11, 1st para. It spoke of no stored energy in the hinges. While this is of course true, it is also true that none of the springs in the the patent stored energy. They all accumulated energy from manual actuation and then assisted the further movement of the guard along the needle.
The opinion moves on to talk about prior art hinges comprised of thinned plastic pieces. From this it concludes that the claims cannot cover hinge 62. At least that’s what I think it says.
From all of the above, I think the Feds were saying that the claim could no cover the hinge 62 with its two sub elements, 66 and 68.
Too bad we do not have a clear picture of the Tyco device to see why its “hinges” are different from hinge 62.
And, since this is so important to understanding this case, it might be beneficial if the court identified what elements of the Figures it published to be the hinge and which elements it considered to be separate springs. It is also confusing that the court said the specification disclose two embodiments of springs. It actually discloses at least spring 68, spring 90 and spring 95, all having different structures and connection points.
Ned The Feds held the hinges themselves could not be the springs or else the claims would be invalid over the art…. there was nothing requiring that the hinge of the specification not be the spring means of the claim except for the prior art.
Ned, this is a gross mischaracterization of the case. Dennis quoted two paragraphs from the decision which plainly contradict what you wrote.
The Feds held the hinges themselves could not be the springs or else the claims would be invalid over the art. The spec did disclose one embodiment where the hinges were the spring means. Other embodiments had separate springs. But, there was nothing requiring that the hinge of the specification not be the spring means of the claim except for the prior art.
Second, the Feds held, contrary to your note, Dennis, that even assuming the incorrect claim construction permitting the hinges to be the springs, there was no proof that the Tyco hinges moved the guard towards a needle capturing position. The evidence disclosed that the hinges acted to pull the arm back to its initial position if the operator released the arm after manually deflecting it a bit.
The dissent disputed this, but I think it was wrong on this point.
Malcolm–
You raise an interesting point. As a grunt/law clerk I can tell you it is distressing to see errors from time to time that are not detected even after an opinion is circulated among all the judges who sat on the case. It’s especially hard if the court you’re working for is bound by an opinion from a higher court that made the unidentified mistake. You wonder what happened here–were the judges on the panel in a hurry to start their vacations, or were they skimming the draft opinion while in bed late at night watching TV?
Allow me to copy from my previous comment about this case in another thread. From the decision:
The unambiguous language of the asserted claims, as well as the disclosure in the specification, requires an added spring element that moves the safety guard toward the tip of the needle.
….
Furthermore, if the hinged arm and spring means are not separate structures, then the asserted claims are clearly invalid as obvious over the prior art. See Whittaker Corp. v. UNR Indus., Inc., 911 F.2d 709, 712 (Fed. Cir. 1990) (”[C]laims are generally construed so as to sustain their validity, if possible.”).
That’s some truly horrifying dicta … at least I hope it’s dicta.
The Federal Circuit spent time in Phillips and in numerous cases for YEARS thereafter driving home the point that construing a claim to preserve its validity was something that was only proper under a very rarified set of circumstances (namely when, after applying the usual canons, a claim term was still susceptible to one of two competing constructions, only one of which preserved validity). The reason the Federal Circuit did this was because district court judges were constantly being misled by defendants into adopting ridiculous constructions that “preserved the claims’ validity” but which flew in the face of Phillips.
If in fact the applicant made arguments or amendments in view of the prior art that support a particular construction, then the court should simply point this out as evidence supporting the construction. But such evidence has nothing to do with “construing a claim to preserve its validity.”
The cite from Whittaker Corp. is nonsense that should never be seen again in a Federal Circuit decision, unless it’s being trashed.
Is this what happens when the Federal Circuit clerks are too young to have lived through the debacle the first time?
Why couldn’t one portion of Tyco’s arm be considered the spring means and another portion the hinged arm?
I agree with the majority here. This case is a classical example of the All Elements/All Limitations Rule. The “spring means” is a separate element that the patentee (Becton Dickinson) couldn’t show was present in the alleged infringing syringe. End of story for literal infringement.
Frankly, I don’t understand Judge Gajarsa’s rant about the majority neglecting 35 USC 112, paragraph 6. Whether “spring means” is means-plus-function or not doesn’t avoid the All Elements/All Limitations Rule that says if the “means” or its equivalent isn’t present in the alleged infringing device, there can be no literal (or even DOE) infringement.
Comments are closed.