Regents of the University of Minnesota v. AGA Medical Corporation

Docket No. 2012-1167

June 3, 2013

Brief summary: DC claim construction supported by specification and parental application prosecution history. Prosecution history is not controlling where same limitation is not present in later application.

Summary: University appealed DC grant of SJ of non-infringement and anticipation. The disputed patents (US 6,077,281 and 6,077,291) are directed to “septal occluders” used to block holes in the septum of the heart. The opinion explains that the dispute regarding the ‘291 patent turns almost entirely on claim construction. The DC determined that the claims require “two physically separate membrane disks that are attached to one another”. University argued that this construction improperly imported limitations from outside the claims. The FC panel concluded that the separateness conclusion “is fully supported by the specification, which ‘is the single best guide to the meaning of a disputed term'” (citing Phillips (FC 2005) and Gen. Am. Transp. Corp. (FC 1996)) (e.g., “every single embodiment in the ‘291 patent’s drawings and its written description is made up of two separate disks”) and supported by the prosecution history (e.g., in parent application, University argued that it’s device requires “attach[ing] the membranes of the two disks essentially directly to one another’ to form a ‘conjoint disk'”). The FC panel also concluded that the DC construction “is faithful to the ordinary meaning of the language of claim 1”, finding support in a dictionary definition. AGA’s accused device does not use two disks and was therefore found not to infringe the ‘291 claims. The ‘281 patent, however, was found not to require two disks but to be anticipated. And although ‘281 claim 1 did not include “standard means-plus-function language”, the parties agreed that the “self-expanding structure” is a means-plus-function element, meaning that the “limitation includes both the corresponding structures disclosed by the specification as means of performing the function, and the equivalents of those structures” (112, para. 6 (now 112(f)), Mettler-Toledo (FC 2012), JVW Enters. (FC 2005)(same function, way, result)). An equivalent structure was argued to be in the prior art. But University argued that it disclaimed the equivalent during prosecution of a parent application in response to a rejection based on the same prior art (Southwall Techs. (FC 1995)). However, the FC panel determined that the limitations of the two cases were not the same (parental claim was not a means-plus-function limitation) (“positions taken before the PTO may bar an inconsistent position on claim construction under” 112, para. 6 (Alpex Computer Corp. (FC 1996); Saunders Grp., Inc. (FC 2007); note, however, Ormco Corp. (FC 2007) (“sole exception is when the disclaimer is directed to the scope of the invention as a whole, not a particular claim”)). It was also concluded that University incorrectly presented its arguments regarding construction of other claim terms. For these reasons, the DC decision was affirmed.

This entry was posted in Anticipation (35 USC 102), Claim Construction, Means-plus-function. Bookmark the permalink.

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