Freeman, In re
| Citation | 30 F.3d 1459,31 USPQ2d 1444 |
| Decision Date | 12 July 1994 |
| Docket Number | No. 93-1449,93-1449 |
| Parties | In re Jerre M. FREEMAN. |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Bradford E. Kile, Baker & McKenzie, Washington, DC, argued, for appellant. With him on the brief were Ruffin B. Cordell and Stuart M. Weitz.
Murriel E. Crawford, Associate Sol., Com'r of Patents and Trademarks, Arlington, VA, argued, for appellee. With her on the brief were Fred E. McKelvey, Sol. and Lee E. Barrett, Associate Sol.
Before RICH, PLAGER, and SCHALL, Circuit Judges.
Dr. Jerre M. Freeman appeals from the March 22, 1993 decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO) sustaining the Examiner's rejection of claims 10-21 of Reexamination No. 90/001,235 (the '235 application) 1 under 35 U.S.C. Sec. 305 as impermissibly broadening the scope of the claims in a reexamination proceeding. 2 We affirm.
Claims 10-21 of the '235 application are directed to an intraocular lens device (IOL) implanted into a human eye after the eye's natural lens affected with cataract has been surgically removed. The implanted device consists of an artificial lens and attached posts or threads, called haptics, used to attach the lens to the eye and hold the lens in place. Of the claims at issue, claims 10, 14, 15, 19, 20, and 21 are independent. Claim 10 is representative and recites:
10. An intraocular lens device for implantation into a human eye, said lens device comprising:
an optical lens suitable for replacing a human crystalline lens, said optical lens having a mean density greater than the density of the aqueous humor of the human eye; and
support means comprising a loop member attached to said lens at at least one end thereof and extending away from said optical lens posterior to the iris of a human eye for providing a plurality of support
points at least within the posterior chamber of the human eye to radially position the optical lens generally upon a central optical axis of an eye and to hold said optical lens in place when implanted into the human eye, said support means having a density less then the density of the aqueous humor of the eye for providing at least a degree of buoyant uplift force to said optical lens when said intraocular lens device is implanted into the human eye even though the overall intraocular lens device is neither neutrally buoyant or positively buoyant in the aqueous humor of a human eye. (underlining represents claim amendments in the '235 application).
Dr. Freeman's original Patent No. 4,077,071 (the '071 patent) issued with claims 1-9. His Reissue patent No. 31,640 (the reissue patent) issued with original claims 1-9 and new claims 10-22. On October 5, 1984, Dr. Freeman sued the Minnesota Mining and Manufacturing Company (3M) alleging infringement of certain claims of the reissue patent, including claims 10, 11 and 21 at issue here. On May 8, 1987, 3M filed a request for reexamination of the reissue patent which was granted by the PTO. However, the PTO sua sponte suspended the reexamination proceeding upon commencement of the infringement trial. 3
The trial court held that the asserted claims of the reissue patent were invalid and not infringed by 3M's IOLs. Freeman v. Minnesota Mining and Mfg. Co., 693 F.Supp. 134, 9 USPQ2d 1111 (D.Del.1988). In its discussion of infringement, the district court addressed the phrase "at least a degree of buoyant uplift" in claims 10, 11, and 21 of the reissue patent stating that "[m]ost of the trial involved interpreting this phrase and attempting to distinguish it from [other language] of Claim 1." Freeman, 693 F.Supp. at 142, 9 USPQ2d at 1119. The district court also noted the different interpretations of this phrase advanced by the parties:
Freeman argues that the phrase means the result of adding any amount of buoyant support materials, thus reducing the density and weight of the device by any amount, even if the reduction is not to a state of neutral buoyancy. 3M, on the other hand, argues that an object with buoyant uplift must possess neutral or positive buoyancy. It further contends that the phrase "at least a degree of" means a small amount of buoyant uplift, rather than something that changes the definition of "buoyant uplift."
After discussing the specification, the prosecution history, and the testimony of the experts, the trial court concluded that Id. The district court stated that such an interpretation was supported by the specification and by the Examiner's belief that merely reducing the density of the IOL device did not necessarily produce the claimed buoyant uplift, as argued by Dr. Freeman. The court also opined that such an interpretation gave "meaning to the claims." Freeman, 693 F.Supp. at 144, 9 USPQ2d at 1121.
Based on this claim interpretation, the district court held that 3M did not infringe claims 10, 11, 21, or 22. Specifically, the district court stated:
None of the IOLs infringe any of the reissue claims, however, because none of them have support or buoyancy means that provide at least a degree of buoyant uplift to the lens.... If the Court were to construe these claims broadly, as Freeman desires, to cover any reduction in weight due to the addition of buoyancy means, then all of the IOLs would infringe Claims 21 and 22, and all but Style 70 would infringe Claims 10 and 11.... However, because the Court has found this construction to be improper, none of the IOLs infringe claims 10, 11, 21, or 22.
Freeman, 693 F.Supp. at 145, 9 USPQ2d at 1121-22.
Dr. Freeman appealed the judgment of the district court to this court and argued that the district court's above finding of noninfringement This court, on appeal, affirmed the district court's finding of noninfringement and held that the district court's interpretation of the claims was not erroneous and that the court's finding of no infringement was not clearly erroneous. The holding of invalidity was vacated. Freeman v. Minnesota Mining & Mfg. Co., 13 USPQ2d 1250, 1252, 1989 WL 86448 (Fed.Cir.1989) (non-precedential), reh'g denied, 1989 WL 86448, 1989 U.S.App. LEXIS 14,958 (Fed.Cir. Sept. 30, 1989), cert. denied, 494 U.S. 1070-71, 110 S.Ct. 1794, 108 L.Ed.2d 794 (1990).
was based on a misinterpretation of claims, 10, 11, 21, and 22. Dr. Freeman argued as he did in the district court that the phrase "at least a degree of buoyant uplift" is satisfied if the support means itself (as distinguished from the entire IOL device) is buoyant in the aqueous humor, thereby imparting a "degree of buoyant uplift" to the lens and making the implant lighter than the lens by even the smallest degree.
The reexamination, which as stated above was stayed upon commencement of trial in the district court, was resumed after conclusion of the appeal and the Examiner finally rejected claims 10-21 of the '235 application under 35 U.S.C. Sec. 305 as impermissibly seeking to enlarge the scope of the claims as interpreted by the district court.
The Examiner's Answer stated that
[t]he reissue claims [10-21] are considered to be limited to IOLS [sic] ("intraocular lenses") that possess either neutral buoyancy or positive buoyancy and would float in the aqueous humor whereas the amended claims [10-21] would also encompass IOLS [sic] which possess negative buoyancy and would sink in the aqueous humor thereby enlarging the scope of the claims. [Emphasis in original.]
In response to Dr. Freeman's argument that the reexamination claims were not broadened in scope and that any broadening of the patent claims occurred during reissue, as permitted by the reissue statute, the Examiner contended that
the reissue record indicates that the Examiner believed one does not produce "buoyant uplift" solely by reducing the density of an object, but would possess a "buoyant uplift" or "at least a degree of buoyant uplift" if the object had a density less than or equal to the density of a fluid and would tend to be weightless rather than seek a position at the lowermost level in the fluid. Therefore, it obviously follows that the interpretation given by the Examiner is that the terms "buoyant uplift" or "at least a degree of buoyant uplift" covered lenses that possess either neutral or positive buoyancy and would float in the aqueous humor. In addition appellant did not contest this interpretation at the time of allowance and the District Court also agreed with this interpretation ... Thus, the added limitations related to the buoyant uplift force to the optical lens including an IOL device which is neither neutrally buoyant or positively buoyant affectively [sic] covers lenses which also sink in the aqueous humor and would be broader than the original reissue claims which were interpreted by the Examiner and the District Court to cover only lenses which were weightless and would float in the aqueous humor. [Emphasis in original.]
Dr. Freeman appealed the Examiner's rejection to the Board. 35 U.S.C. Secs. 306, 134.
The Board affirmed the Examiner's rejection of claims 10-21 under 35 U.S.C. Sec. 305 as impermissibly broadening the reexamination claims. However, the Board did not agree with the interpretation of reissue claims, 10, 11, 21, and 22 by the district court and affirmed by this court. Specifically, the Board stated:
The claims (10-22) added during the reissue proceeding do not, ... in our view, either explicitly or implicitly include or require the intraocular lens device (i.e., the optical lens and the support loops) to possess a neutral or positive buoyancy ... The scope of the claims sought in the reissue always indicated the lens device was to have a degree of buoyancy which For this reason, the Board explained, "the phrase 'even though...
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