Dr. Gregory W. Baran v. Medical Device Technologies, AMT Svergie AB and Gedon AB (CAFC 2010-1058) precedential

It appears that Dr. Baran's counsel hadn't thought through claim construction and its implications on claim construction.

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 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.

Dr. Baran disclosed two embodiments: single use, and reusable. The difference between them made claim construction clear to the courts, but apparently not to Dr. Baran's lawyers.

The patentee used the term "detachably" in the specification to draw a direct contrast between the removable components of the reusable embodiment and the adhesively bonded components of the singleuse embodiment. That usage effectively concedes that adhesively bonded components--including the single-use embodiment--are not "detachable" components within the meaning of the patent. We agree with the district court that "[t]his distinction suggests that the patentee intended 'detachable' to mean capable of removal or separation without breaking or causing damage through the necessary use of undue force." Baran v. Med. Device Techs., Inc., 519 F. Supp. 2d 698, 724 (N.D. Ohio 2007); see also K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999) ("Screws, unlike rivets and [adhesive] laminates, are meant to be unscrewed, that is, to be removed. A rivet or a laminate, to the contrary, is meant to remain permanent, unremovable unless one is bent on breaking the permanent structure apart."). Incorporating the "without loss or damage" condition into the claim construction has the additional advantage of comporting with the plain meaning of "detachable," as expressed by the several dictionary definitions cited by the district court.

Another discovery by Dr. Baran and his attorneys was that using two terms interchangeably renders them interchangeable.

We also agree with the district court that the terms "releasably" and "detachable" have the same meaning in the '798 patent. Dr. Baran argues that the use of different terms implies that they have different meanings, see CAE Screenplates Inc. v. Heinrich GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000), but that implication is overcome where, as here, the evidence indicates that the patentee used the two terms interchangeably. See Tehrani v. Hamilton Med., Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003).

In a final death throe, Dr. Baran argued improper exclusion of an embodiment.

In a final attempt to bring the single-use embodiment within the scope of the asserted claim, Dr. Baran argues that the district court's claim construction improperly excluded a preferred embodiment and ignored the Summary of the Invention. There is no force to either of those arguments. It is not necessary that each claim read on every embodiment. In this instance, while claim 2 reads on only the reusable embodiment, a different claim of the '798 patent (claim 18) reads on both the single-use and the reusable embodiments,. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008) ("It is often the case that different claims are directed to and cover different disclosed embodiments."); Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1336-37 (Fed. Cir. 2007) ("[A] claim need not cover all embodiments."). As for the excerpt from the Summary of the Invention, it simply repeats verbatim the claim language that the "stylet means is . . . detachable from the cannula" and that the "second connector . . . releasably and fixedly engages the first connector." '798 patent, col. 3, ll. 50-60. The fact that those claim terms were used in the Summary does not mean that they must be read to encompass all the embodiments of the invention.

Because we do not disturb the district court's construction of "releasably," or the related constructions of "first connector means" and "second connector means," Dr. Baran's stipulation of noninfringement of the '798 patent remains effective.

'797 went down similarly. Dr. Baran argued that the claimed "release" function was not a function, but a "characteristic."

Dr. Baran also appeals the two grounds on which summary judgment was entered as to the '797 patent. We conclude that no reasonable juror could find that MDTech's BioPince device satisfies the means-plus-function limitation of "release means for retaining the guide in the charged position." That determination is sufficient to affirm the district court's judgment of noninfringement; accordingly, we do not address Dr. Baran's additional arguments regarding the "charging member" limitation.

In construing a means-plus-function claim, the district court must first determine the claimed function and then identify the corresponding structure in the written description of the patent that performs that function. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006). In order to prove literal infringement of a means-plus-function claim, the plaintiff must show that the accused device performs the recited function through structure that is the same as or equivalent to the corresponding structure set forth in the specification. 35 U.S.C. § 112, ¶ 6.

He urges that "release" should be construed to mean "releasable," which he explains is a characteristic and not a function. Presumably, Dr. Baran believes that distinction to be significant because a characteristic would describe something the structure is merely capable of performing, not something the structure must perform.

We agree with the district court that the claim language recites both a release function and a retention function. Dr. Baran's argument regarding the placement of the term "release" is unavailing. The relevant inquiry is whether the term at issue is purely functional. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999) (construing "ink delivery means" to be equivalent to "means for ink delivery" because "ink delivery" was purely functional language); Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999) ("[W]hen it is apparent that the element invokes purely functional terms . . . the claim element may be a means-plus-function element despite the lack of express means-plus-function language."). In the context of the '797 patent, the term "release" is not an idle description but a vital function to be performed by the means-plus-function element. The patent does not recite a biopsy instrument that retains indefinitely without release; rather, the contemplated function is to retain for the express purpose of producing a spring-loaded release on demand. The claim language ties both functions to the same means-plus-function element, so it is appropriate that the element be construed accordingly.

Not a close call at all.

Again, we find that the district court did not err in concluding that the accused structure was not equivalent to the structure described in the specification. The two structures rely on opposing principles: the lever facilitates the release by clearing the retention means from the path of the guide, while the locking tab mechanism achieves release only by overcoming the full resistance of the retention means. Because of that structural difference, the lever must be rigid to release the guide, while the locking tab must be flexible to do the same. The references to "flexibility" that Dr. Baran cites from the patent refer to the fact that the lever remains free to pivot flexibly along the fulcrum, not that the lever itself is made of flexible material. Indeed, it would be impossible to operate a lever if it were made of highly elastic material, just as it would be impossible to bypass a locking tab if it were made of stiff, unyielding material. Accordingly, we concur with the district court that the accused structure is substantially different from the disclosed structure and therefore does not infringe pursuant to section 112, paragraph 6.

Dr. Baran filed a declaration that read like an expert report. The district court ignored it for being late. Dr. Baran tried to revive it without success.

The court found that the "vast majority of [Dr.] Baran's declaration is opinion testimony based on 'scientific, technical, or other specialized knowledge within the scope of Rule 702,'" and that it was, "as a practical matter, an expert report in which he provides his infringement opinion." Baran v. Med. Device Techs., Inc., 666 F. Supp. 2d 776, 779 n.2 (N.D. Ohio 2009). The court further found that Dr. Baran had not identified himself as an expert, as required by Federal Rule of Civil Procedure 26(a)(2), and that his "expert report" was submitted well after the deadline for exchanging expert reports established by the court's case management plan. As a result, the court held that it would not consider Dr. Baran's declaration "to the extent it provides expert testimony." Id.

Affirmed.