Bicon, Inc. v. Straumann Co., 05-1168.
| Decision Date | 20 March 2006 |
| Docket Number | No. 05-1168.,05-1168. |
| Citation | 441 F.3d 945 |
| Parties | BICON, INC., and Diro, Inc., Plaintiffs-Appellants, v. THE STRAUMANN COMPANY and Institut Straumann AG, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
Frank P. Porcelli, Fish & Richardson P.C., of Boston, Massachusetts, argued for plaintiffs-appellants. With him on the brief were Charles Hieken and Thomas A. Brown. Of counsel were Colter Paulson, Fish & Richardson P.C., of Boston, Massachusetts; and Berj A. Terzian, of Newbury, Massachusetts.
Milton Sherman, Kaye Scholer LLP, of New York, New York, argued for defendants-appellees. Of counsel was Stephen J. Elliott.
Before MICHEL, Chief Judge, BRYSON, and GAJARSA, Circuit Judges.
This case turns on the construction of a patent that claims an apparatus used with dental implants. The patent, U.S. Pat. No. 5,749,731 ("the '731 patent"), describes a plastic cuff that is designed to preserve a space around a dental implant so that when a dental crown is placed on top of the implant, the base of the crown can fit beneath the patient's gum line.
Diro, Inc., owns the '731 patent. Joined by its licensee (Bicon, Inc.), Diro sued The Straumann Company and Institut Straumann AG (collectively, "Straumann") for patent infringement based on Straumann's sale of two devices that are used in the preparation of crowns for dental implants. The United States District Court for the District of Massachusetts granted Straumann's motion for summary judgment of noninfringement and dismissed Bicon as a party plaintiff for lack of standing. Bicon, Inc. v. The Straumann Co., Civil Action No. 01-10269 (D.Mass. Nov. 16, 2004). We affirm.
A dental implant prosthesis of the type described by the patent has two separate parts — the root member or implant, which is implanted in the patient's jaw bone and secures the device in place (number 10 in the figure below, which is Fig. 1 of the '731 patent); and the head member or abutment, which attaches to the root member and sticks up above the patient's gum line to provide the structure for attaching a crown (number 14 in the figure below). See '731 patent, col. 1, ll. 18-23. The '731 patent explains that after the patient's jaw and mouth heal from the surgery to implant the root member, the permanent abutment member is mounted on the root member. Because gum tissue "tends to heal taut to the head of the abutment member so that when the permanent crown is placed on the abutment member the margin of the crown is not concealed," id., col. 2, ll. 6-9, the patent describes using the claimed emergence cuff (number 30 in the figure below) to keep the gum from closing around the abutment while the patient's jaw and mouth continue to heal. When the healing process is complete, the dentist can remove the cuff and can take advantage of the space left by the cuff to affix the permanent crown to the abutment at a point beneath the patient's gum line. Securing the permanent crown below the gum line has the cosmetic advantage of preserving the natural look of the patient's gum line with the crown installed. Id., col. 2, ll. 5-63; col. 3, ll. 61-64. In addition, use of the cuff enables the dentist to bond a temporary crown to the cuff at the time it is placed on the abutment, while the permanent crown is being prepared. Id., col. 2, ll. 65-67.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
In the complaint, Diro and Bicon (collectively, "Diro") alleged that Straumann had infringed at least claim 5 of the '731 patent by manufacturing, using, selling, and offering to sell products that incorporated the subject matter of the claims. In the course of the litigation, Diro identified two Straumann products that are used with dental implants as the allegedly infringing devices.
The first device, called an "impression cap," is a plastic device that attaches to the shoulder portion of the root member in Straumann's system while the dentist is taking a mold that is used to prepare the crown that is to be fitted on the abutment. The impression cap is the superstructure that fits over the abutment and the shoulder of the root member while the mold for the crown is being taken. The impression cap is removed as soon as the mold is completed, a process that takes only a few minutes. The first figure below depicts the Straumann impression cap fitted over the Straumann abutment and attached to the shoulder of the Straumann root member. The second figure depicts the Straumann root member with the shoulder and neck portions designated.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The second device, called a "burnout coping," is a cone-shaped plastic structure that is used in fabricating the permanent crown. The burnout coping is never placed in the patient's mouth, but instead is used in the laboratory in the process of constructing the crown. It fits over a device known as the analog, which has the same shape as the abutment and shoulder portion of the root member in the patient's mouth. The figure below depicts the Straumann burnout coping.
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Claim 5 of the '731 patent provides as follows (in reproducing the claim, we have subdivided it so as to facilitate reference to different portions of the claim):
[i] the diameter of the cuff member increasing in the direction going from the first end to the second end, and
[j] a radially inwardly extending flexible lip formed at the first end of the cuff member.
After construing the claim, the district court granted summary judgment of noninfringement to Straumann on several grounds. First, the court concluded that the lengthy preamble of claim 5 (the portion from the beginning of the claim through part [b]) is an integral part of the claim and limits the claim. The court then held that one of the limitations in the preamble — an abutment having a frusto-spherical basal surface portion — is not satisfied by either of the accused devices.
Second, the court held that the Straumann impression cap and burnout coping do not have the structure recited in part [e] of the claim. With respect to the impression cap, the court held that the taper of the portion of the cap at issue matches the shoulder portion of the root member in the Straumann system, not the conical surface of the abutment. With respect to the burnout coping, the court noted that while the taper of the upper portion of the internal bore in the Straumann burnout coping generally matches the taper of the conical outer surface of the Straumann abutment, Diro's infringement argument rested on the contention that it was the lower portion of the burnout coping that constituted the claimed annular member. The taper of the bore in that portion of the burnout coping, the court explained, matches the taper of the shoulder of the root member, not the taper of the abutment.
Third, the court held that part [h] of the claim does not read on the accused devices because the distance between the first and second ends of the annular member in the impression cap and burnout coping is not less than the height of the conical surface of the abutment. Finally, the court ruled that part [i] of the claim does not read on the burnout coping, because the burnout coping does not contain any structure consisting of an annular member with a diameter that is greater at the second end than at the first.
The court further held that the complaint had to be dismissed as to plaintiff Bicon, Inc., for lack of standing. Although Bicon claimed to be a licensee of Diro's patent, the court held that the evidence proffered in the course of the summary judgment proceedings did not justify a finding that Bicon had an exclusive license to the patent. As a mere nonexclusive licensee, the court held, Bicon was not entitled to sue for infringement of the patent, even as a co-plaintiff with the patent owner, Diro.
Claim 5 of the '731 patent is a difficult claim to make sense of. Despite the claim's detailed description of and references to an abutment, in Diro's view the claim is in no way limited by the abutment. Diro's argument in support of that construction boils down to two fundamental contentions. First, Diro points out that the claim recites "[a]n emergence cuff member," not a combination consisting of an emergence cuff member and other features, such as an abutment having certain specific characteristics. Second, Diro assigns critical significance to the fact that the abutment's description is in the preamble of the claim — the preamble consisting of everything in the claim preceding the word "comprising," including what we have labeled as parts [a] and [b]. The preamble Diro argues, in no way limits the claim because it merely sets forth the purpose or use of the emergence cuff. Accordingly, Diro characterizes claim 5 as encompassing any device having the structure of the annular member recited in the body of the claim that is capable of cooperating with any abutment.
The problem with Diro's argument is that, because claim 5...
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