Docket No. 2017-2388
DYK, O’MALLEY, HUGHES
July 6, 2018
Brief summary: DC claim construction and grant of SJ for non-infringement affirmed.
Summary: Spineology appealed DC finding that claims 15, 21-23 and 35 of RE42,757 relating to surgical tools (“[a]n explandable reamer for use in bone and related tissue in a mammal”) are invalid for indefiniteness and grant of SJ of non-ininfringement as to claims 34 and 35. Wright argued that the claim term “activation mechanism” was indefinite, and the parties disputed the construction of the claim term “body”. At a Markman hearing, the DC found “activation mechanism” to be “a means-plus-function limitation, with a discernable function, but no clear corresponding structure for claims 15 and 35”, and that the term “was defined differently in different terms” (e.g., claim 18 refers to “a moveable cannulated shaft having linear movement along the body”; claims 20 and 40 (dependent on claim 38) refers to “a blade control knob”; and, claim 38 (dependent on claim 35) refers to “one of a pair of shafts having linear movement along the body”). The DC found that “the other dependent claims, in combination with the specification, provide conflicting information about the activation mechanism” (“[i]n light of the inconsistencies between the claims and the written description as to what constitutes the activation mechanism, the Court is unable to discern a clear link between a structure or structures and the function”). At the Markman hearing, the DC “declined to construe body at that time, ‘except to state that ‘body’ does not include the blade control knob” but in considering the motion for SJ determined the term to mean “the hollow structure that houses the blade carrier and that receives a knob or wheel: ‘body’ includes the barrel” “and the shaft”. The DC “also dismissed without prejudice Wright Medical’s counterclaims seeking, inter alia, a declaration of absolute and equitable intervening rights resulting from reissue proceedings of the patent.” The FC panel considered the DC’s construction de novo as there was no relevant extrinsic evidence (Teva, US 2015). The FC panel opinion explained that the DC’s construction of “body” “doomed Spineology’s infringement allegations” as to claims 33 and 34 “because it is undisputed that, when fully expanded, the blades of Wright Medical’s X-Ream do not have a diameter greater than the barrel.” The FC panel explained that “[t]he written description does not use the term ‘body’ and thus does not provide relevant guidance” but compared the disclosed structures to “Spineology’s construction of body”, concluding that “[a] construction of body that includes the barrel comports with the preferred embodiments and allows the term ‘body’ to have a consistent meaning across the independent and dependent claims”. The FC panel also explained that “Spineology’s proferred construction of body would mean that the term ‘body’ has one meaning in certain claims and a different meaning in other claims” (Southwall Techs., FC 1995 (“claim terms ‘cannot be interpreted differently in different claims’”); Phillips, FC 2005 (“other claims…both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term”)). The FC panel therefore affirmed the grant of SJ of non-infringement of claims 33 and 34, and did not reach the indefiniteness issue.