Liebel-Flarsheim Company v. Medrad, Inc., 03-1082.
| Decision Date | 11 February 2004 |
| Docket Number | No. 03-1165.,No. 03-1082.,03-1082.,03-1165. |
| Parties | LIEBEL-FLARSHEIM COMPANY and Mallinckrodt Inc., Plaintiffs-Appellants, v. MEDRAD, INC., Defendant-Cross Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
J. Robert Chambers, Wood, Herron & Evans, L.L.P., of Cincinnati, OH, argued for plaintiffs-appellants. With him on the brief was Theodore R. Remaklus.
James F. Davis, Howrey Simon Arnold & White, LLP, of Washington, DC, argued for defendant-cross appellant. On the brief for the defendant-cross appellant were Frederick H. Colen and Barry J. Coyne, Reed Smith LLP, of Pittsburgh, PA. Of counsel was Kirsten R. Rydstrom, Reed Smith LLP, of Pittsburgh, PA.
Before LOURIE, BRYSON, and DYK, Circuit Judges.
Appellants Liebel-Flarsheim Company and Mallinckrodt Inc. (collectively, "Liebel") filed an action against appellee Medrad, Inc., in the United States District Court for the Southern District of Ohio, No. C-1-98-858, charging Medrad with infringement of four of Liebel's patents. The patents claim certain methods and devices for use in connection with powered fluid injectors, which can be used to inject fluids into patients during medical procedures. One of the patents, U.S. Patent No. 5,456,669 ("the '669 patent"), is drawnto methods of loading powered injectors from the front. A related patent, U.S. Patent No. 5,658,261 ("the '261 patent"), is drawn to front-loadable powered injectors and to disposable front-loadable syringes for use in such injectors. The other two patents, U.S. Patent Nos. 5,662,612 ("the '612 patent") and 5,928,197 ("the '197 patent"), which are also related, are drawn to injectors and syringes for use in powered injectors, and to devices and methods for controlling the plunger drives in such powered injectors.
On motions for summary judgment, the district court ruled that Medrad did not infringe any of the asserted claims of the four Liebel patents. The district court based its summary judgment ruling on its construction of the asserted claims. In the case of the first two patents, the court concluded that the asserted claims required the use of pressure jackets around the syringes used in the powered injectors. In the case of the latter two patents, the court concluded that the asserted claims required that the powered injector directly use an electrical signal generated by a detector to compute values for various physical properties of the syringes used in the injector. Because Medrad's accused injectors did not use pressure jackets and because the electrical signals in Medrad's devices were not directly used to compute any such values, the court granted summary judgment of noninfringement as to all of the claims set forth in Liebel's complaint. The court then dismissed the counterclaims, in which Medrad alleged that the asserted claims of the four patents were invalid. The court held that the counterclaims were moot in light of the court's noninfringement ruling. We reverse the grant of summary judgment and the dismissal of the counterclaims, and we remand for further proceedings.
Powered injectors are used in various medical applications, such as injecting contrast agents into the vascular systems of patients who undergo certain diagnostic imaging procedures. A powered injector ordinarily uses a motor drive that is attached to a syringe plunger. The drive pulls the plunger rearward to draw contrast agent into the syringe and then drives the plunger forward to inject contrast agent through a tube and into the patient. The contrast agent is usually injected into the patient under high pressure.
Liebel asserted that Medrad's powered injectors infringed seven claims of the '669 patent and twenty claims of the '261 patent. The '669 and '261 patents derive from a 1991 application, Ser. No. 712,110 ("the '110 application"). Prior to the filing of the '110 application, the injectors sold by both Liebel and Medrad required that the syringes be breech loaded, i.e., loaded through the rear of the injectors. Breech loading has disadvantages, including inefficiency in the loading process and the risk of spillage and contamination that can result from disconnecting the syringe from the tube through which contrast agent is delivered to the patient. The '110 application and the patents that eventually issued from it were directed to front loading, rather than breech loading, the powered injectors.
The specifications of the '669 and '261 patents are essentially identical. Each of the embodiments of the injector described in the two patents includes a pressure jacket into which the syringe is inserted. The pressure jacket surrounds the syringe and prevents it from breaking under the internal pressure generated when the contrast agent is injected into the patient. Based largely on the fact that the '669 and '261 patents do not contain any description of an injector that lacks a pressure jacket, the district court construed all of the asserted claims from those two patents to require a pressure jacket, even though none of the asserted claims expressly refers to a pressure jacket. The district court concluded that "the specification makes clear that the injector includes a pressure jacket." Based on that observation, the court ruled that "the asserted claims do not cover a jacketless injector, even though the asserted claims might be considered broad enough to disclose a jacketless injector when read without reference to the specification."
The parties agree that Medrad's accused devices do not use pressure jackets. Because the district court construed the claims to require pressure jackets, the district court granted summary judgment of noninfringement as to the '669 and '261 patents. Liebel appeals the claim construction of the '669 and '261 patents and the summary judgment of noninfringement based on that construction.
Liebel also asserts that Medrad has infringed four claims of the '612 patent and eighteen claims of the '197 patent. The '612 and '197 patents, which are related and have a common specification, address the use of syringes, including prefilled syringes, in powered injectors. Different prefilled syringes contain different amounts of fluid. In order to accommodate syringes containing different amounts of fluid and to ensure that the right amount of fluid is injected into the patient, the powered injectors must have a way of ensuring that the injector can detect critical features of the particular syringe that is being used.
The '612 and '197 patents solve that problem by providing that the syringes have "physical indicia related to" various syringe properties that enable the injector to calibrate the amount of fluid to be injected into the patient. Each of the asserted claims requires that the syringe possess "physical indicia" that can be detected by a detector and can provide information about the syringe properties of interest. Those properties include the capacity of the syringe or the amount of fluid in the syringe ('612 patent, claims 7 and 10; '197 patent, claims 7, 10, and 27); the distance of the plunger from the end of the syringe ('197 patent, claims 1 and 4); the distance to the end of the plunger's travel position ('197 patent, claims 13 and 16); and the range of travel of the ram, which attaches to the syringe plunger and moves the plunger in and out of the syringe ('197 patent, claims 19 and 22).1 The claims further provide that the injector's control circuitry will control the plunger, based on the particular property detected, so as to inject the correct amount of fluid from the syringe.
The common specification of the 612 patent, col. 3, ll. 59-61; '197 patent, col. 3, ll. 58-60.
Medrad argued in the district court that the term "physical indicia" should be limited to indicia representing the length of the extender. The specification, Medrad asserted, describes the use of "physical indicia" only to represent the length of the extender so that a proper "offset value" can be computed and the correct position of the drive jaw can be determined. Medrad also argued that the prosecution history supports its construction of the "physical indicia" limitation.
The district court disagreed with Medrad. The court ruled that the claim language was plainly broader than Medrad's proposed construction, as the claims expressly referred to syringe features other than the length of the extender. The court further held that the specification did not clearly disavow the use of physical indicia on the syringe that represented syringe properties other than the extender length. Moreover, the court determined that the prosecution history of the patents at issue supported the broader reading of the "physical indicia" limitation.
While the district court rejected Medrad's proposed claim construction, it did not construe the claim language as broadly as Liebel urged. Instead, the court ruled that the signal generated by the detector must be directly used in the computation of particular syringe properties. The court noted that "the claim language does not describe using the electrical signal generated by the detector to ascertain information from another source and...
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