Unclaimed Structure Still Relevant To § 112 ¶ 6 Infringement Analysis

Posted on | June 20, 2008 | No Comments

2008-1416 Applied Medical v. US Surgical
CD/CA 03-cv-01267
Judge Cormac Carney

Applied appeals from the jury verdict and JMOL order of Judge Cormac Carney finding US Surgical did not infringe Applied’s 5,385,553 titled "Trocar With Floating Septum Seal."  As the patent explains, a trocar
provides a channel through the abdominal cavity through which
instruments can be inserted during laparoscopic surgery.

A five week jury trial followed the Federal Circuit’s remand in Applied Medical v. US Surgical, 448 F.3d 1324 (Fed. Cir. 2006), an appeal which reversed the district court’s grant of summary judgment of non-infringement.  The JMOL argument focused on whether US Surgical improperly relied upon and argued theories contrary to the CAFC’s decision.  The court found no impropriety and, concluding that the evidence supported the jury’s verdict, denied the JMOL.  In a separate opinion from the bench, Judge Carney did grant a JMOL to Applied, reversing the jury’s finding that the ’553 was invalid.

Claim 18 states:

18. An access device adapted to form an access channel across a body
wall, and configured to receive a surgical instrument in the access
channel, the access device comprising:

a cannula having an axis extending between a proximal end and a distal end of the device;

a seal housing disposed at the distal end of the cannula and forming with the cannula the access channel of the device;

a
flexible valve disposed relative to the housing and across the access
channel, the valve having elastomeric properties for forming a seal
with the instrument when the instrument is disposed in the access
channel;

portions of the valve
defining an orifice which is sized and configured to receive the
instrument and to form the seal with an outer surface of the
instrument; and

means disposed
circumferentially outwardly of the valve portions for supporting the
valve portions within the seal housing, the supporting means being
movable relative to the housing to permit the valve portions to float
relative to the axis of the cannula.

The last element is at issue: a means-plus-function clause with a ring-levels-teeth (RLT) structure (disclosed in specification) and two functions: supporting and floating.  Applied argued that US Surgical improperly told that jury that the claim required "deformation of the outer portions of the septum valve"–apparently a feature of the RLT structure but not of US Surgical’s device.

The court denied the JMOL because, it reasoned, discussion, testimony
and argument about the outer portion was still relevant to infringement and whether the accused device performs the identical function using structure insubstantially different from claimed under § 112 ¶ 6: the "jury’s infringement determination hinged on whether the gimbal in U.S. Surgical’s accused VERSAPORT™ PLUS permits its valve portions to float in substantially the same way as the RLT disclosed in the ’553 patent (the "insubstantial difference" test).

The court’s view was bolstered by Applied’s own expert–although at trial he testified that the outer portion was "completely irrelevant," at his deposition he testified to the contrary.  Despite the unexplained inconsistency, the court found the expert’s deposition testimony credible on this issue.

As for the prior Federal Circuit decision, the court noted that the CAFC merely found that it was error to require the existence of outer portions, but nothing in the opinion forbade the consideration of outer portions is determining infringement.  The district court further cited Kemco and Ishida as examples of the CAFC approving the use of "descriptive language not contained in the claim itself in order to properly analyze the way a claim function is performed."

More reading:

Order

Counsel:

Applied Medical: Knobbe Martens Olson & Bear (Brian C Horne, Joseph F Jennings, Joseph R Re, Karen V Weil, Valerie L Bracken), Howrey Simon Arnold & White(David L Bilsker) and Applied Medical (Karen A Gibbs)

US Surgical:  Bartlit Beck Herman Palenchar & Scott LLP (Bryan W Leach, Fred H Bartlit, Jr, Glen E Summers, Jill Rochelle Trumbull-Harris, Sean Christopher Grimsley, Sundeep K Addy), Dewey Ballantine (David F Owens, Harvey Kurzweil, Lisa B Deutsch), and Paul Hastings Janofsky & Walker LLP (Donald L Morrow, Jay C Gandhi, Vijay Gandhi).

Comments