On April 4, 2013, the US Court of Appeals for the Federal Circuit decided Bruce N. Saffran, M.D. v. Johnson & Johnson and Cordis Corporation. No. 2012-1043 (Fed. Cir. 2013). In its opinion, written by Judge Lourie, the Federal Circuit reversed the judgment of the US District for the Eastern District of Texas because the district court had erroneously construed certain claims in the plaintiff-appellee’s patent.
Dr. Bruce N. Saffran had sued Johnson & Johnson and Cordis Corporation (Cordis) in the district court for alleged infringement of his US Patent No. 5,653,760. The patent’s specification and claims disclose a method and device consisting of a single layer sheet that is utilized to treat bone fractures. Particularly, Dr. Saffran argued that Cordis infringed his patent by manufacturing, marketing, and using drug-eluting cardiac stents with a metallic mesh.
Of primary issue was the construction of the terms “device” and “means for release of at least one treating material in a directional manner.” After a Markman hearing, the district court construed the term “device” as a non-limiting description in the specification that does not require a sheet and only has the limitations set out in the claims. The court held that the corresponding structure of the means-plus-function limitation, meanwhile, was chemical bonds and linkages. Later, the jury found in favor of infringement and awarded damages to Dr. Saffran. The court denied the company’s motion for judgment as a matter of law and it appealed.
On appeal, Saffran and Cordis disputed the appropriate construction of the claims. Dr. Saffran argued that a sheet is only one embodiment of the “device” and that the court’s broad interpretation was correct. Cordis argued, however, and the Federal Circuit agreed, that the term device is limited to a continuous sheet and the district court’s claim construction was thereby incorrect.
Looking at the record, for example, the Federal Circuit explained that Dr. Saffran had disclaimed alternative embodiments when it represented the device as a sheet during prosecution to distinguish it from the prior art. According to Andersen Corp. v. Fiber Composites LLC, 474 F.3d 1361 (Fed. Cir. 2007), an applicant’s argument that prior art references are distinguishable on a particular ground can be a disclaimer of claim scope. In this case, Dr. Saffran had made an unqualified assertion that the device is a sheet and not a pre-formed chamber. An express disclaimer of claim scope is not required.
Finally, the Federal Circuit held that the district court erroneously construed the patent’s “release means” limitation. Pursuant to 35 U.S.C. § 112, a means-plus-function limitation is construed to cover the corresponding structure described in the specification. After B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419 (Fed. Cir. 1997), however, the structure described in the specification is the corresponding structure only if the specification or prosecution history links the structure to the claim’s function. Here, the court found that the correct corresponding structure was hydrolyzable bonds rather than “chemical bonds and linkages.”
In all, the Federal Circuit held that, under the correct claim construction, Cordis was entitled to judgment of non-infringement as a matter of law.