Cross v. Group

• Decision Date: 04 October 2010
• Docket Number: Nos. 2009-1053, 2009-1111.,s. 2009-1053, 2009-1111.
• Citation: 616 F.3d 1249
• Parties: BECTON, DICKINSON AND COMPANY, Plaintiff-Cross Appellant, v. TYCO HEALTHCARE GROUP, LP, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

616 F.3d 1249

BECTON, DICKINSON AND COMPANY, Plaintiff-Cross Appellant,

v.TYCO HEALTHCARE GROUP, LP, Defendant-Appellant.

Nos. 2009-1053, 2009-1111.

United States Court of Appeals,Federal Circuit.

July 29, 2010.

Rehearing and Rehearing En Banc Denied Oct. 4, 2010.

William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA, argued for plaintiff-cross appellant. With him on the brief were William G. McElwain, Amy K. Wigmore, Todd C. Zubler and Arthur W. Coviello, of Washington, DC.

Frank P. Porcelli, Fish & Richardson P.C., of Boston, MA, argued for defendant-appellant. With him on the brief were John M. Skenyon, and Juanita R. Brooks, of San Diego, CA.

Before GAJARSA, LINN, and MAYER, Circuit Judges.

Opinion for the court filed by Circuit Judge MAYER. Dissenting opinion filed by Circuit Judge GAJARSA.

MAYER, Circuit Judge.

Tyco Healthcare Group, LP (“Tyco”) appeals a judgment of the United States District Court for the District of Delaware entered after a jury determined that Tyco's Monoject Magellan? safety needles and blood collection devices literally infringed claims 1-4, 6, 12, 13, 15, 24 and 27 of U.S. Patent No. 5,348,544 (the “'544 patent”). Because we conclude that the district court incorrectly construed the “spring means” limitation of the asserted claims and erred in denying Tyco's motion for judgment as a matter of law (“JMOL”), we reverse.

Background

Becton, Dickinson and Company (“Becton”) is the assignee of the '544 patent, which is directed toward a safety needle designed to prevent accidental needle stick injuries. The safety shield, or needle guard, of the patented invention is initially positioned at the base of the needle, next to the needle hub. This is called the “first position” and is shown in figure 2 of the ' 544 patent.

Image 1 (5.03" X 1.79") Available for Offline Print

The guard is mounted on or close to the needle cannula and is attached to the needle hub by a hinged arm. When the guard is in the first position, the hinged arm is folded. When the needle has been removed from a patient, the health care worker pushes the hinged arm forward, causing the hinged arm to unfold and the guard to move along the needle cannula toward the tip of the needle. When the guard covers the needle tip, it is said to be in its “second position” as shown in figure 4.

Image 2 (4.71" X 1.59") Available for Offline Print

To facilitate the movement of the guard toward the needle tip, the '544 patent discloses a “spring means” for “urging [the] guard along [the] needle cannula.” The specification describes two embodiments in which a spring moves the guard down the needle cannula. The specification does not attribute any movement of the guard to the hinged arm of the safety needle.

On December 23, 2002, Becton filed suit against Tyco, alleging infringement of the '544 patent by Tyco's Monoject Magellan? safety needles and blood collection devices. Becton subsequently answered Tyco's first set of interrogatories, including interrogatory 3, which called for an infringement claim chart “fully explain[ing] how each claim element is met either literally or under the doctrine of equivalents in each Tyco product accused of infringement.” In response, Becton identified the living hinges in Tyco's accused devices as satisfying the “spring means” limitation of asserted claims 1 and 24 and stated that “[o]nce released, the spring means urges the guard along the needle cannula toward” the tip of the needle. Later, in updated infringement charts served on Tyco just prior to the close of fact discovery, Becton reiterated its assertion that “[o]nce released, the spring means urges the guard along the needle cannula” toward the needle tip.

After the close of fact discovery, Becton issued its only expert report on infringement. Becton's expert, Charles A. Garris, Jr., explained his theory as to how the hinges in the hinged arm of Tyco's accused devices functioned as springs:

The hinged arm [in Tyco's accused products] is ... folded and assembled with the other components of the safety assembly. I expect to explain that folding of the hinged arm imparts stress to the hinge that results in a certain amount of stored energy. In the accused Tyco Monoject Magellan? devices, the force of this stored energy is initially restrained by a latching mechanism. Once unlatched, the stored energy is released, causing the safety guard to be urged ( i.e., moved) along the needle cannula toward the tip of the needle.

On May 3, 2004, Tyco moved for summary judgment of non-infringement, arguing that the spring means limitation of the asserted claims required a spring separate from the hinged arm structure. The district court denied this motion, however, rejecting Tyco's argument that a proper construction of the spring means limitation requires “a separate spring [which] must move the guard along the cannula toward the second position.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-1694 GMS, 2004 WL 2075413 at *4, 2004 U.S. Dist. LEXIS 18637 at *12 (D.Del. Sept. 16, 2004) (“ Summary Judgment Decision ”).

On October 26, 2004, a jury returned a verdict finding literal infringement by both of Tyco's accused products. ¹ The jury found that the infringement was willful as to the Magellan safety needle, but not as to the Magellan blood collector; it also found that the patent was not invalid for lack of an adequate written description. Tyco subsequently moved for a new trial, arguing that Becton had improperly changed its theory of infringement during trial. The district court agreed, noting that the only infringement theory disclosed by Becton prior to trial was that “once unlatched” the hinges in the hinged arm caused the safety guard to move down the needle cannula:

From the outset, [this] case was postured on the assertion that Tyco's Monoject Magellan devices infringed the “spring means” limitation of the ['544] patent because, after the devices are unlatched, the hinged arms move the guard toward the cannula of the needle. Dr. Garris' expert statement, [Becton's] summary judgment motion, and [Becton's] pretrial memorandum in support of its claim of infringement and for damages, all make clear that the “after unlatching” theory was the only basis for Tyco's alleged infringement.

Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-1694 GMS, 2006 WL 890995 at *10, 2006 U.S. Dist. LEXIS 14999 at *34-35 (D.Del. Mar. 31, 2006) (“ New Trial Decision ”).

During trial, however, Becton reversed course, arguing that the living hinges in the hinged arm moved the guard before the hinged arm was unlatched. Id. at *12, 2006 U.S. Dist. LEXIS 14999 at *38-40. Because Becton had “advanced a new theory of infringement at trial” and its actions were “inconsistent with substantial justice ... and resulted in actual prejudice,” the district court granted Tyco's motion for a new trial. Id. at *12, 2006 U.S. Dist. LEXIS 14999 at *40.

In January 2007, prior to the start of the second trial, Tyco filed a petition in the United States Patent and Trademark Office (“PTO”) requesting reexamination of the '544 patent based on Netherlands Patent Publication No. 9000909. The examiner in charge of the reexamination issued an office action in which she found that the “spring means” limitation in claims 1 and 24 of the '544 patent was a “means-plus-function” limitation and required that the spring means be a separate structural element from the hinged arm. See 35 U.S.C. § 112, ¶ 6. Tyco then filed a motion asking the district court to adopt the PTO's construction of the disputed claims, but the court denied this motion on November 21, 2007. ²

At the second trial, the district court instructed the jury that the spring means limitation required that “once the hinged arm is unlatched for the first time, the ‘spring means' must move the guard along the needle toward the needle tip.” The trial court also instructed the jury that “[t]he spring is not required to move the guard all the way to the tip of the needle but must, by itself, move the guard for some distance.”

On November 30, 2007, a jury returned a verdict of infringement as to both of Tyco's accused products. Tyco thereafter filed motions seeking JMOL and a new trial. The district court denied these motions, however, explaining that although it was a “close issue,” Becton had “adduced enough circumstantial evidence from which the jury could reasonably conclude that the living hinges of Tyco's products are springs that, by themselves, move the guard toward the needle tip once unlatched.” See Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, No. 02-1694 GMS, 2008 WL 4610220 at *4, 2008 U.S. Dist. LEXIS 82915 at *10 (D.Del. Oct. 14, 2008) (footnote omitted) (“ JMOL Decision ”).

Tyco then appealed to this court, challenging the district court's interpretation of the asserted claims and the denial of its motions for JMOL and a new trial. Becton filed a conditional cross-appeal, arguing that if the district court's judgment is reversed, it should be granted a new trial on the issue of whether Tyco infringed the '544 patent by manufacturing-rather than selling-the Magellan needles and blood collectors. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Discussion

Precedent requires that this court conduct a de novo review of claim construction. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc). We review the denial of a JMOL motion “under the law of the regional circuit where the appeal from the district court would normally lie.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1323 (Fed.Cir.2008). In the Third Circuit, when determining whether to grant a JMOL motion “[t]he question is not whether there is literally no evidence supporting the party against whom the motion is directed but whether there is evidence upon which the jury could properly find a verdict for that party.” Lightning Lube, Inc. v. Witco Corp., 4...