M.D. v. Med. Device Technologies Inc.
| Decision Date | 05 October 2010 |
| Docket Number | No. 2010-1058.,2010-1058. |
| Citation | 616 F.3d 1309 |
| Parties | Gregory W. BARAN, M.D., Plaintiff-Appellant, v. MEDICAL DEVICE TECHNOLOGIES, INC., Defendant-Appellee, and AMT Sverige, AB (Formerly Known As Amedic) and Ascendia AB, Defendants, and Gedon AB and Anders H. Weilandt, Defendants. |
| Court | U.S. Court of Appeals — Federal Circuit |
OPINION TEXT STARTS HERE
COPYRIGHT MATERIAL OMITTED.
Steven M. Auvil, Benesch, Friedlander, Coplan & Aronoff, LLP, of Cleveland, OH, argued for plaintiff-appellant. With him on the brief was Bryan J. Jaketic.
Monica L. Thompson, DLA Piper LLP (US), of Chicago, IL, argued for defendant-appellee. With her on the brief was Steven J. Reynolds.
Before BRYSON, GAJARSA, and PROST, Circuit Judges.
Dr. Gregory W. Baran filed suit against the defendants (collectively, “MDTech”), alleging infringement of U.S. Patent Nos. 5,025,797 and 5,400,798. The '798 patent is a continuation-in-part of the '797 patent, and both patents are directed to automated biopsy instruments. For the reasons stated below, we affirm the district court's entry of judgment in favor of MDTech as to both patents.
In the automated biopsy instruments that are the subject of this appeal, the biopsy needle is composed of a stationary stylet and a retractable cannula that slides over the stylet. After the cannula is pulled back against a coil spring and cocked in the “charged” position, the stylet is inserted into the patient's body. When the cannula is released from the charged position, the spring drives the cannula forward over the inserted stylet to cut out a biopsy sample. The entire needle is then removed from the patient and the biopsy sample is extracted from the cannula.
The claimed devices are charged by pulling back an external guide (to which the cannula is attached) along the shaft until the guide locks in place. The locking function is performed by a lever (22 in Figure 4, below) that slides into a slot. Pressing the other end of the lever releases the lock and allows the spring to send the cannula forward over the stylet.
'797 patent, fig. 4; '798 patent, fig. 4.
In MDTech's accused device, the BioPince Full Core Biopsy Instrument (“BioPince”), the instrument is charged by means of a slider-crank mechanism. The user lifts the crank arm away from the device, which pushes a connected slider unit to the front of the device where it latches onto the cannula guide. The user then presses the crank arm down toward the device, which pushes both the slider and the cannula guide to the rear of the device. A locking tab inserts through a slot in the crank arm and locks the device in the charged position. Pressing a trigger button at the back of the device detaches the cannula guide from the slider, allowing the spring to send the cannula and its guide forward. The following figure is taken from MDTech's patent and is an accurate representation of MDTech's commercial device:
Image 2 (4.26" X 2.25") Available for Offline Print
U.S. Patent No. 6,322,523 B2, fig. 11.
Claim 2, the only asserted claim of the '798 patent, reads as follows (emphases added):
The district court construed the term “detachable” in claim 2 to mean that “the stylet is capable of being separated or withdrawn from the cannula without loss or damage.” The court found it significant that the specification disclosed both a reusable embodiment and a single-use embodiment, and that only the stylet of the reusable embodiment was described as being “detachably engaged” while the stylet of the single-use embodiment was described as being “adhesively bonded.” The court rejected the argument that an adhesively bonded stylet could also be detachably engaged. Moreover, although the court acknowledged that the construction of “without loss or damage” might exclude the single-use embodiment from claim 2, the court noted that it was not necessary for each claim to cover every embodiment of the patent.
The district court construed the term “releasably” in a similar manner, as requiring “separation without loss or damage.” The court noted that claim 2 recited the second connector means as being “releasably engag[ed],” and that the specification described the same structure as being “detachably affixed.” Accordingly, the court reasoned that the patentee had used the terms “releasably” and “detachably” with a similar meaning in mind. Based on that cross-usage, the court applied essentially the same construction to both terms.
Following the issuance of the claim construction order, Dr. Baran entered a stipulation acknowledging that he could not prove infringement of the '798 patent under the “without loss or damage” construction as applied to the terms “first connector” and “second connector.” Dr. Baran reserved his right to appeal the claim construction order.
As for the '797 patent, the district court granted summary judgment of noninfringement on the ground that the accused BioPince device failed to satisfy two limitations relating to the charging mechanism. Claim 7, the only asserted claim of the '797 patent, reads in pertinent part (emphases added): “A biopsy instrument comprising ... a manually operable charging member for moving the guide to the charged position against the urging of the coil spring, and a release means for retaining the guide in the charged position.”
The district court first considered whether the term “member” should be limited to a single component or whether it could encompass a multi-component structure. The court ultimately adopted a construction that allowed for the use of multiple components, but only if those components operated in unison and not in a serial chain of events. The court determined that the various components of the slider-crank mechanism in the BioPince device did not act in unison to move the cannula into the charged position, and it therefore concluded that the device did not satisfy the “charging member” limitation of the '797 patent.
In addition, the court concluded that the BioPince device did not satisfy the limitation reciting a “release means for retaining the guide in the charged position.” The court construed that limitation to be in means-plus-function format and to have two functions-retaining the guide in the charged position and releasing the guide from the charged position. The court then addressed whether the BioPince device had corresponding structure that performed the retention/release function. Dr. Baran contended that the relevant corresponding structure in the accused device was the combination of the crank arm and the locking tab that holds the crank arm in the charged position. Inserting the locking tab through the appropriate slot in the crank arm would retain the guide in the charged position; pulling the crank arm up and snapping it out of the locked position would release the cannula guide from the charged position. Therefore, Dr. Baran argued, the crank arm and the locking tab constituted a structure in the accused device that performed both the retention function and the release function. The court accepted that argument over MDTech's objection that the only proper method of release was the trigger mechanism, which did not perform the retention function. The court ruled that the crank arm qualified as a means for performing the release function in the BioPince device because discharging the device in that manner did not require physical alteration of the device. Nevertheless, the court found no infringement because it concluded that the crank arm and locking tab structure was substantially different from the corresponding lever structure disclosed in the specification of the '797 patent.
In his challenge to the district court's construction of the '798 patent, Dr. Baran advocates a definition for the terms “detachable” and “releasably” that does not include the “without loss or damage” condition. Dr. Baran objects to that condition because it excludes the single-use embodiment from the asserted patent claim and therefore precludes his infringement claim against the BioPince, which is a single-use device.
As an initial matter, we accept Dr. Baran's assertion that the '798 patent “never discloses a stylet that is joined to a cannula.” The specification indicates that the stylet 60 is attached to a support rod 14, and that the cannula 66 is attached to a spring guide 18. The full needle is then assembled by placing a coil spring “coaxially” onto the stylet and placing the cannula “telescopically” over the stylet and coil spring. The cannula remains an independent component that slides freely over the stylet.
The fact that the stylet is not attached to the cannula, however, is not favorable to Dr. Baran. If anything, it lends further credence to the district court's construction of “detachable” as meaning “separation without loss or damage,” because the stylet and cannula as described in the specification are readily separable without loss or damage.
Of greater significance is the different language used by the patentee to distinguish the single-use...
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