Howes v. Medical Components, Inc.

• Citation: 814 F.2d 638,2 USPQ2d 1271
• Decision Date: 19 March 1987
• Docket Number: No. 86-1157,86-1157
• Parties: Randolph M. HOWES, Janice Kinchen Howes, and Arrow International, Inc., Appellants, v. MEDICAL COMPONENTS, INC., and American Hospital Supply Corp., Appellees. Appeal
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 638

814 F.2d 638

2 U.S.P.Q.2d 1271

Randolph M. HOWES, Janice Kinchen Howes, and Arrow International, Inc., Appellants, v. MEDICAL COMPONENTS, INC., and American Hospital Supply Corp., Appellees.

Appeal No. 86-1157.

United States Court of Appeals Federal Circuit.

March 19, 1987.

Albert E. Fey, Fish & Neave, New York City, argued for appellants. With him on the brief were Robert C. Morgan, Denise L. Loring and Irene J. Frangos. Also on the brief were Thomas A. Masterson and Richard F. McMenamin, Morgan, Lewis & Bockius, of Philadelphia, Pa.

Jerome F. Fallon, Tilton, Fallon, Lungmus & Chestnut, Chicago, Ill., argued for appellee American Hosp. With him on the brief was John W. Chestnut.

William H. Elberg, of Jenkintown, Pa., argued for appellee Medical Components.

Before FRIEDMAN and RICH, Circuit Judges, and BALDWIN, ^* Senior Circuit Judge.

RICH, Circuit Judge.

This appeal is from a final judgment of the United States District Court for the Eastern District of Pennsylvania granting summary judgment of non-infringement of claim 7 (the only claim in suit) of U.S. Patent No. 4,072,146 (the Howes patent, now reissue No. Re. 31,873) for a "Venous Catheter Device" to Medical Components, Inc. (MedComp) and American Hospital Supply Corp. (AHS), 623 F.Supp. 164. We vacate and remand.

Background

The Howes patent discloses and claims a triple lumen infusion catheter for insertion into a vein. A catheter is basically a tube which is inserted into the body for one or more purposes, such as draining fluids, injecting drugs or nutrients, or measuring blood pressure within a vein or artery. A triple lumen catheter has three lumens or passageways, each of which is capable of carrying a different fluid or performing a different diagnostic function.

The patentee, Dr. Randolph Howes, first applied for his patent on September 8, 1976. The application disclosed a "venipuncture" device which included a hollow needle to insert a catheter into a vein and a triple lumen venous catheter. Original claims 1-4 and 9 were directed to the venipuncture device combination including the needle. Claims 5-8 were directed to the catheter itself.

The patent specification illustrates two ways to make the catheter--by placing separate tubes within the catheter tube as in Fig. 3 of the patent, and by forming elongated openings in the catheter body material as in Fig. 5. These figures, reproduced below, together with Fig. 1 showing how the catheter is used, each show the distal end portion of the catheter (i.e., the portion placed within the body or blood vessel). As shown in both of the figures, one of the lumens extends to the distal end of the catheter tube. The other lumens exit through side openings in the catheter tube at points spaced both radially from one another and longitudinally along the tube.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The only amendments to the claims as originally filed were to specify a catheter with a distal end portion generally circular in cross-section and having a uniform outer diameter for insertion into a vein and that at least one of the lumens be used for infusing fluids into the blood stream. Amended claim 7 reads as follows (with the added claim language emphasized):

7. A venous catheter device including an elongated, flexible catheter tube provided with a distal end portion generally circular in cross-section and having a uniform outer diameter constructed for insertion into and capable of being fed longitudinally of a vein, a plurality of independent lumens extending freely through said catheter tube, each of said lumens having a distal terminus adjacent the distal terminus of the catheter and spaced from each other, one of said lumens having its distal end substantially coextensive with the distal end of said tube, the other of said lumens exiting at lateral openings in said tube and being joined thereto, at least one of said lumens providing means for infusing fluids into the blood stream, the proximate ends of the lumens extending beyond the proximate end of said catheter tube and being fitted with a lumen adapter for connection to independent fluid devices.

The patent issued on February 7, 1978.

Dr. Howes filed a reissue application on January 19, 1983, after being apprised of additional prior art which had not been considered by the Patent and Trademark Office (PTO) during the original prosecution. AHS participated in the reissue as a protestor in accordance with PTO rules.

The examiner initially rejected all of the original claims. After an interview between Dr. Howes' patent attorney and the examiner, Howes cancelled all the claims except claim 7 and added a new set of claims based on claim 7. The patent was reissued as Patent No. Re. 31,873 on April 30, 1985, with claim 7 of the original patent unchanged and including the new claims 11-14 based on claim 7.

The Proceeding Below

Appellants, Dr. Howes, Janice Howes, a part owner of the patent, and Arrow International, Inc. (Arrow), sued AHS and MedComp for infringement of claim 7 of the original Howes patent. Arrow holds an exclusive license under the patent and manufactures and sells triple lumen catheters made like the one illustrated in Fig. 5. MedComp and AHS also make and sell catheters similar to the one in Fig. 5. None of the parties has ever made commercially a catheter with the "tubes-within-a-tube" structure of Fig. 3. Also unlike the catheter shown in the patent drawings, MedComp's and AHS's devices, as well as Arrow's, have a tapered distal tip for easier insertion into the vein.

Since the reissue patent issued after the suit was filed, appellants moved to amend their complaint to charge infringement of the reissue claims. The district court, however, entered summary judgment of non-infringement on claim 7 of the original patent. Both AHS and MedComp discussed the reissue in their motions for summary judgment, and the court referred to it in its July 22 order, but the complaint was never amended.

In granting MedComp's motion for summary judgment, the district court first determined that catheters with tapered ends like those of MedComp and AHS were within the scope of claim 7. The court found that Howes added the phrase "uniform outer diameter" during prosecution of the original patent to distinguish over prior art catheters which had protuberances along their lengths and not to exclude catheters with tapered tips.

The district court then held that claim 7 was limited to catheters made according to Fig. 3 and did not cover the embodiment of Fig. 5. To reach this conclusion, the court focused on the words "joined" and "freely" as used in claim 7. These words do not appear in any other of the original claims.

The court interpreted "joined" to mean "fastened," as in Fig. 3, in which the inner lumens are physically fastened to the outer tube. The court noted that, in connection with Fig. 3, the specification explains that the lumens may be joined to the catheter tube using an adhesive or by fusing. In contrast, the lumens in Fig. 5 are already attached to the outer casing. Thus, the court concluded that "the more reasonable interpretation of 'joined' appears to be the fastening required in figure 3 of the patent claim."

As to the word "freely" in claim 7, the court found that it means the lumens are "independent" of each other as they extend down the tube as in Fig. 3. In Fig. 5, however, the lumens are not independent but are part of the same piece of material.

Based solely on these interpretations, the district court held that the MedComp catheter did not infringe claim 7. The district court subsequently granted AHS's motion for summary judgment, stating that it did so on the same grounds relied on in granting MedComp's motion.

ISSUE

The sole issue is whether the district court erred in holding that there were no genuine issues of material fact and that MedComp and AHS were entitled to judgment as a matter of law that their accused triple lumen catheters did not infringe claim 7 of the Howes patent.

This issue turns on the subsidiary issue of whether the district court erred in holding, as a matter of law, that claim 7 must be limited to a catheter made according to Fig. 3 of the patent and cannot be infringed by catheters made according to Fig. 5.

OPINION

A. Summary Judgment

Summary judgment under Rule 56, Fed.R.Civ.P., is appropriate in patent cases as in any other case where there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. Moeller v. Ioenetics, Inc., 794 F.2d 653, 656, 229 USPQ 992, 994 (Fed.Cir.1986). In deciding such motions, all doubt respecting the presence or absence of factual issues must be resolved in favor of the party opposing summary judgment. Petersen Mfg. Co. v. Central Purchasing, 740 F.2d 1541, 1546, 222 USPQ 562, 565-66 (Fed.Cir.1984). Even if the district court properly finds that no genuine issue of material fact was raised, reversal or vacating is still required if the court engaged in faulty legal analysis in applying the law to the facts. See Palumbo v. Don-Joy Co., 762 F.2d 969, 226 USPQ 5, 7 (Fed.Cir.1985). Here, the district court both "engaged in faulty legal analysis" and failed to recognize the existence of genuine issues of material fact.

B. Claim Construction

Claim construction is a question of law and the mere existence of a dispute as to that legal issue does not preclude summary judgment. Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 654, 223 USPQ 706, 707 (Fed.Cir.1984). When a claim is in dispute, however, it is always necessary to look at certain extrinsic evidence, namely, the specification, the prosecution history, and the other claims. See, e.g., Moeller, supra, 794 F.2d at 656, 229 USPQ at 994; Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867, 228 USPQ 89, 93 (Fed.Cir.1985). Although claim construction (what its scope...