Kinetic Concepts v. Blue Sky Medical Group, Richard S. Weston, and Medela (CAFC 2007-1340, -1341, -1342)

Judge Prost wrote the opinion, joined by Judge Bryson. Judge DYK dissented.

The parties have devoted significant attention to the construction of "treating a wound" and "facilitating the healing of wounds."

Defendants argue that the district court erred by vacating its construction of "wound" when the term's meaning was critical to the obviousness inquiry. According to Defendants, this error allowed KCI to improperly avoid the prior art by arguing claim construction to the jury.

Defendants ask us to adopt their proposed "plain and ordinary meaning" construction, taken from Stedman's Medical Dictionary: "(1) trauma to any of the tissues of the body, especially that caused by physical means and with interruption of continuity [or] (2) a surgical incision." They argue that the specification's use of broad language when describing the wounds that can be treated shows that the ordinary meaning, as defined in the dictionary, was intended.

Here's a great legal argument on appeal - a claim term didn't need to be construed because the jury agreed with us.

KCI responds that any error resulting from the district court's failure to construe the "wound" phrases is harmless because Defendants' proposed construction is incorrect as a matter of law and the jury's verdict demonstrates that it adopted the correct construction.

But the CAFC agreed with KCI, because too broad a definition would include abscesses and pus pockets, which are just too nasty to contemplate.

As this court held in Phillips v. AWH Corp., "the specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). All of the examples described in the specification involve skin wounds. See id. at 1321 ("Properly viewed, the 'ordinary meaning' of a claim term is its meaning to the ordinary artisan after reading the entire patent."). To construe "wound" to include fistulae and "pus pockets" would thus expand the scope of the claims far beyond anything described in the specification. See Nystrom v. TREX Co., 424 F.3d 1136, 1145 (Fed. Cir. 2005) ("[I]n the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public--i.e., those of ordinary skill in the art--that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source.").

We further conclude that the district court's failure to instruct the jury on the construction of "wound" in this case was harmless. See B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1423 (Fed. Cir. 1997) (holding that the district court's pre-Markman failure to instruct the jury on the construction of a means-plus-function limitation was harmless because the jury adopted the correct construction). Because the jury's verdict is supported under the proper construction, and because we perceive no danger under the circumstances of this case that the jury may have used an incorrect construction of "wound" that might have prejudiced Defendants, there is no need to remand for a new trial.

The panel majority accepted the jury's finding of nonobviousness, despite lack of claim construction instruction.

Defendants' obviousness argument at trial relied heavily on the prior art references, the scope and content of which are factual questions to be determined by the jury. See Graham, 383 U.S. at 17. As discussed above, KCI presented substantial evidence to support its interpretation of the references. Thus, we must assume that the jury found that the prior art does not disclose "treating a wound with negative pressure" within the meaning of the patents. See Arsement v. Spinnaker Exploration Co., 400 F.3d 238, 249 (5th Cir. 2005) (on appeal of a motion for JMOL, "the evidence, as well as all reasonable inferences from it, are viewed in the light most favorable to the verdict" (quotations omitted)). In light of this, we conclude that Defendants failed to establish that the asserted claims were obvious as a matter of law.

Plus, the majority affirmed the jury finding of validity over the prior art despite having instruction of obviousness being ""teaching, suggestion, or incentive to combine the prior art," the pre-KSR standard.

Based on our conclusion that there was substantial evidence that none of the prior art references "treat wounds with negative pressure," we are not persuaded that the instruction on obviousness was "probably responsible for an incorrect verdict."

Indefiniteness arguments were fatally wounded because the appeal panel was not persuaded the claim terms were "insolubly ambiguous." There appears no requirement for clarity in claim language.

The majority deferred to the jury's finding of non-infringement, despite a lame defense.

KCI may be correct that "practicing the prior art" is not a defense to patent infringement. See Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1377 (Fed. Cir. 2002). However, it does not follow that a defendant's belief that it can freely practice inventions found in the public domain cannot support a jury's finding that the intent required for induced infringement was lacking. The jury heard Blue Sky's founders explain why they did not believe they were infringing and had the opportunity to assess their credibility.

Affirmed.

Judge DYK dissented on construing "wound" so narrowly.

In my view, the majority improperly holds that the claim term "wound" can be limited to the disclosed embodiments in the specification, and, having done so, then misreads the specification as showing only embodiments treating harm to the surface of the body or skin wounds.

The district court's failure to construe the term "wound" was a clear error. We have held that "[w]hen the parties raise an actual dispute regarding the proper scope of [the patent] claims, the court, not the jury, must resolve that dispute." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed Cir. 2008). It is improper to argue claim construction to the jury because the "risk of confusing the jury is high when experts opine on claim construction." CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172-73 (Fed. Cir. 2005); see Sundance, Inc. v. Demonte Fabricating Ltd., No. 2008-1068, slip op. at 11-12 n.6 (Fed. Cir. Dec. 24, 2008). In this case, the definition of the term "wound" was central to the case and a primary focal point of the Markman hearing; as a result, the court should have construed the term "wound."

Under a broader construction, the dictionary definition, DYK found the patents obvious.