Medegen v. ICU Medical (CAFC 2008-1114) non-precedential

The district court construed "plug" as "an elastomeric part that either pivots about a reduced diameter portion or buckles, to establish a fluid flow path." J.A. at 19. In doing so, the district court relied heavily on the finding that "the preferred embodiment[s] of the invention, as discussed throughout the specification and claims, all consistently discuss a plug" with the elastomeric feature, and that the specification "nowhere describes a non-elastomeric or rigid plug." Id. at 14.

Medegen argues that the district court improperly limited the scope of the claims to the preferred embodiments, and that, instead, "plug" should be given its ordinary meaning: either the district court did not need to construe it at all or should construe it to mean "a moveable member between an open and closed position." Id. at 13.

The CAFC panel agreed with Medegen, that "plug" had not been given any special meaning.

It is, of course, "a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Here, the term "plug" is claimed broadly. The term "plug" is not expressly limited by the language of the claims--that is, the elastomeric limitation is not found within the claim itself. Also, there is no contention that the ordinary meaning of the term "plug" does not include a rigid plug or that it has a special meaning in the medical field that requires elastomericity, or that there was any clear disclaimer of non-elastomeric plugs in the specification.

Nonetheless, ICU contends that the specification is "the single best guide to the meaning of a disputed term," Phillips, 415 F.3d at 1315, and that one of ordinary skill in the art would read the specification as limited to elastomeric plugs, and that the district court correctly construed "plug" based on that limited disclosure. We disagree. The patent here makes clear that the elastomeric feature of the plug is merely an example of how to create a fluid flow connection between the inlet valve and the internal fluid chamber. The use of an elastomeric plug to establish that fluid flow connection is not central to the invention itself, which is directed to reducing retrograde flow. Indeed, the summary of the invention describes the plug entirely in general terms...

ICU instead relies on the Detailed Description, noting that "the '418 patent refers to the 'elastomeric' or 'rubber' quality of this plug twenty-one times in the detailed description." Appellee's Br. at 14 (citing examples). These examples, however, are each directed to preferred embodiments.

Under these circumstances, it is clear that the construction of "plug" need not be limited to the preferred embodiments. "Plug" should instead be given its ordinary meaning: "a member moveable between an open and closed position."

There was a means-plus-function claim limitation dispute, centered on the plug. The CAFC panel punted on construction.

It is unclear whether this broader interpretation makes any difference for present purposes... [T]he question remains whether, for purposes of the means-plus-function claims, the corresponding structure is limited to the elastomeric plug described in the preferred embodiments, or whether the structure also encompasses plugs generally, including rigid plugs (which we have found are included within the scope of the "plug" claims), as described in broad terms in the summary of the invention.

In view of the limited and somewhat confusing briefing on this issue, we think that the best course is to leave this issue open on the remand so that the district court can arrive at a proper construction of the corresponding structure in claims 28 and 42, in light of our determination that the term "plug" in claim 27 (and its dependent claims) is not limited to elastomeric plugs.

Vacated and remanded.